CSIRO v. Buffalo Technology, Inc., 2009 WL 260953 (E.D.Tex. Feb 03, 2009) (6:06-CV-324)
Judge: Leonard Davis
Holding: Motion to Identify an Additional Expert DENIED
Guest Post by Michael Farah
Recall this infringement case filed in February of 2005 between plaintiff CSIRO, a research arm of the Australian government and defendant, Buffalo? This case was on appeal to the Federal Circuit but remanded on October 27, 2008 to address obviousness in light of the new KSR standard which replaced the TSM test Judge Davis relied upon in his November 2006 holding. This week, Judge Davis denied Buffalo's motion to identify (actually substitute) a new expert witness to replace Mr. Bagby, Buffalo's previous non-infringement expert. Buffalo was unable to convince Judge Davis that Mr. Bagby was incapable of continuing in the case due to an unsupported medical condition. Interestingly, this was actually an echo back to before the pre-trial hearing when Buffalo made another unsuccessful attempt to substitute Mr. Bagby with a different expert due to Bagby's "health".
The four factors the court used to evaluate the substitution request were (1) the explanation (or lack thereof) for the failure to identify the witness; (2) the importance of the testimony; (3) potential prejudice in allowing the testimony; and (4) the availability of a continuance to cure such prejudice to determine if Buffalo could substitute an expert. The court found that all but one factor weighed in favor of opposing the motion. (The one element being the importance of the testimony, which the court found was neutral due to Bagby's previous capability to testify on obviousness.)
CSIRO is not objecting to Bagby's testimony under KSR because as both Judge Davis and CSIRO suggest that the real motivation of Buffalo in seeking to replace Mr. Bagby was due to the fact that Bagby made previous unfavorable statements and failed to follow the Markman order in his report; both of which CSIRO intends to rely on to impeach his expected testimony. Accordingly, Judge Davis denied Buffalo's motion and noted the possibility that this attempt was a mere litigation tactic to avoid Bagby's negative statements.
--Michael Farah is a third year law student at Franklin Pierce Law Center in Concord, NH. He will be graduating in May with his JD and LLM degrees in intellectual property. As a native Texan and graduate of the University of Texas, he will be returning to the DFW area after graduation to pursue a career in litigation. Mr. Farah is currently working in New York City for the in-house legal department of an international apparel conglomerate. He can be reached at Mfarah@piercelaw.edu
