Expert opinion on the meaning of claim terms rejected as rearguing claim construction, MediaTek Inc. v. Freescale Semiconductor, Inc., Case No. 11-cv-5341 YGR (Judge Gonzalez Rogers)
Frequently, a patent contains tens or dozens of technical terms that are understood vaguely if at all by members of a lay jury. But, under the Northern District's Patent Local Rules, a court will ordinarily construe no more than ten claim terms, leaving the rest to "their ordinary and customary meaning to a person of ordinary skill in the art at the time of the invention."
Explaining the "ordinary meanings" of unconstrued technical terms thereafter falls to each side's experts, which is allowable "so long as the evidence does not amount to 'argu[ing] claim construction to the jury.'" But how far can an expert go before his or her opinion crosses the line from explaining the "ordinary meaning" to arguing claim construction?
Well, if your expert's opinion of the meaning of a term is grounded solely in the patent's specification or prosecution history, odds are you've gone a bit too far.
On Wednesday, Judge Gonzalez Rogers found that Freescale's expert, Dr. Vahid, crossed that line with respect to the meaning of three claim terms he opined on in his rebuttal report. The Court found these opinions were not based upon the ordinary meanings of the terms to one skilled in the art, but instead based upon inferences derived from the patent's specification and prosecution history. First, Dr. Vahid opined that "at least one address bus ... cannot mean more than one address bus because a system so defined would read on the 'prior art in front of the patent examiner during prosecution of the patent-in-suit." Second, based upon the prosecution history and the specification, he stated that "coupled" requires a "direct" connection between the coupled components, without intervening modules. Third, relying on the patent's provisional application and specification, he opined that a "controller" is limited to hardware and cannot include, e.g., software running on a CPU.
While the Court allowed that an expert might refer to the prosecution history to "confirm" the meaning of a term, "[t]he 'purpose of consulting the prosecution history in construing a claim is to exclude any interpretation that was disclaimed during the process,'" and that, "except in a rare case," is the exclusive province of the court, not the jury. "Thus, testimony grounded in the prosecution history to discern the meaning of a claim is properly excluded from presentation to the jury especially where, as here, a fair reading of the expert report reveals an intention to argue claim construction."
To be fair, there were other factors at work against Freescale. To rebut an argument raised by the opposing expert, Dr. Vahid had flipped the meaning of one of the terms in question between his initial and rebuttal reports (and, in so doing was certainly not the first to argue that "at least one [widget] means "only one [widget]"). And, Freescale had never identified these three terms during the parties Rule 4-1 exchanges. Nevertheless, the lesson is clear: if at all possible retain your experts and develop your infringement or non-infringement theories as thoroughly as possible before claim construction, so you know which terms are important and what how you want them construed. And, if that doesn't work, find something to hang your hat on besides the intrinsic record.
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