Summary Judgment and Daubert briefs are often sprawling, slothful beasts. They shift from issue to issue lodging complaints both specific and general over the course of many pages and exhibits.
Accordingly, it can be hard parse which arguments are actually being pressed and require a response.
Today's case is a sobering reminder of the consequences of missing one.
The plaintiff's opening Daubert brief in Magnolia Med. Techs., Inc. v. Kurin, Inc., C.A. No. 24-1124-CFC, consisted of 18 pages complaining about how the defendant's invalidity report was "devoid of any analysis or detail and fails at baseline to even map the prior art to the claim elements or explain what combination or modification of the prior art he is relying on to reach his ultimate opinion of invalidity." D.I. 262 at 2.
Fair enough.
The brief also contained a single reference to a claim construction dispute, nestled in the statement of facts:
Making matters even worse, for element [1e], which was the subject of a claim construction dispute over the phrase a “housing that defines,” Dr. Meinhart’s report fails to account for the competing claim constructions or identify which one his report purports to address
Id. at 9.
Perhaps because this line was included in the statement of facts, rather than the argument section, the defendant did not address the claim construction issue at all in its 19-page opposition brief.
Plaintiff, in reply, devoted 2 sentences to the issue:
Additionally, “housing that defines” was a disputed term for construction, which Dr. Meinhart does not address in his claim mapping. Kurin thus does not know if Dr. Meinhart was intending to address the “housing” under Kurin’s proposed construction or Magnolia’s proposed construction
D.I. 337 at 3.
Yesterday, however, Judge Connolly issued a brief opinion granting the motion based entirely on the claim construction issue:
Kurin advances a host of arguments why Dr. Meinhart's opinions are unreliable and unhelpful to the trier of fact and should thus be excluded under Rule 702. I need only address one of those arguments because it identifies a fatal deficiency common to Dr. Meinhart's anticipation and obviousness opinions . . . Specifically, Kurin argues—and Magnolia does not dispute—that Dr. Meinhart "fails to account for the competing claim constructions [of 'a housing that defines'] or identify which [of the competing constructions] his report purports to address."
Magnolia Med. Techs., Inc. v. Kurin, Inc., C.A. No. 24-1124-CFC, D.I. 370 at 2 (D. Del. Nov. 3, 2025) (internal citations omitted).
Interestingly, the opinion cited numerous cases on this point that were not mentioned by either party (none of the sentences above were followed by any legal cites):
This "failure to disclose a clear construction of each disputed claim element makes his report less than helpful to the trier of fact, in contravention of Federal Rule of Evidence 702." Oxford Gene Tech. Ltd. v. Mergen Ltd., 345 F. Supp. 2d 431, 436 (D. Del. 2004); see also OneSubsealP UK Ltd. v. FMC Techs., Inc., 2020 WL 7263266, at *5 (S.D. Tex. Dec. 10, 2020) (excluding testimony under Rule 702 as irrelevant and unhelpful to the trier of fact in part because it "did not indicate that [the expert] was aware of the parties' agreed construction of the claim term"); DataQuill Ltd. v. Handspring, Inc., 2003 WL 737785, at *4 (N.D. 111. Feb. 28, 2003) (excluding testimony under Rule 702 because "it [was] not clear what or whose interpretation of the claims [the expert] applied in his analysis").
Id. at 3.
One of my first jobs as an associate was going through the opposing summary judgment motion and just making a list of all the arguments they included so we could address them. Anyone who's tried the same will quickly realize that the line between argument, a rhetorical flourish, and a fact is support is not crystal clear. Let this case serve as a reminder to err on the side of addressing the very smallest of issues.
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