United States: Watch Those Patent Local Rules: They Can Cause Your Expert Opinions To Be Stricken

ASUS Computer Int'l v. Round Rock Research, LLC, 12-cv-02099 (Magistrate Judge Nathanael Cousins)

On Tuesday, Magistrate Judge Cousins struck portions of both DJ plaintiff / patent defendant ASUS, and DJ defendant / patent plaintiff Round Rock's respective expert reports for containing infringement theories, accused products, and pieces of prior art that were not disclosed in the parties' respective invalidity and infringement contentions.  Magistrate Judge Cousins' ruling reflects the importance of accurate and up-to-date patent local rule contentions in the patent litigation in the Northern District.  Magistrate Judge Cousins also struck portions of each side's reports that relied upon documents that were not produced during fact discovery, a ruling that was again in the theme of full disclosure.  Specifically:

Doctrine of Equivalents theory: Magistrate  Judge Cousins struck RR's DOE theory because he determined that RR did not "sufficiently identify" the theory of equivalents in its infringement contentions.  Magistrate Judge Cousins concluded that RR's use of placeholder language stating "to the extent that any claim element is found not to be literally embodied in the Accused Instrumentalities, Round Rock contends that the Accused Instrumentalities embody such claim elements under the doctrine of equivalents" was inadequate disclosure of RR's DOE theory.  Rather, "a party looking to rely on equivalents still has to describe how [the function/way/result] requirements are met."  Magistrate Judge Cousins determined that a patent plaintiff must identify specific components within an Accused Product that infringe under DOE under an element-by-element basis in their infringement contentions in order to preserve the theory for the infringement expert.

Indirect Infringement theory: Likewise, a broad, boilerplate assertion that defendant "actively, knowingly, and intentionally" induced third parties to infringe by "selling or otherwise supplying" accused products was found to be too bare-bones to constitute adequate disclosure under the patent local rules.  In so finding, Magistrate Judge Cousins rejected RR's assertion that its expert report merely "clarif[ied] the indirect infringement theories." Magistrate Judge Cousins found that it may be appropriate for an expert report to provide additional detailed evidence, but that RR should have included its theory of indirect infringement in its infringement contentions.

Data elements:  Magistrate Judge Cousins also struck from the infringement expert report's references to "Bus_Width bit" and "TRAN_SPEED slice" because RR did not identify these particular data elements in the claim charts attached to its infringement contentions.  Even though RR included the term "BUS_WIDTH" in its infringement charts, this was not enough because Magistrate Judge Cousins determined that RR did not "explain this element or how it infringes a claim in the [asserted] patent."

Infringement Under Section 271(g):  Magistrate Judge Cousins also struck the RR expert's opinion that ASUS infringed under § 271(g) (importation of a product made using an infringing process).  This was because RR only contended that third parties—not ASUS—imported infringing products in violation of § 271(g) in its infringement contentions.

Newly Identified Products:  Finally, Magistrate Judge Cousins struck references to ASUS accused products that were not specifically identified in the infringement contentions.  Magistrate Judge Cousins found that RR used general class descriptions in its infringement contentions, i.e "products that include DDR3 memory," products that were "otherwise substantially similar to" specifically accused products, and products identified by a series name (rather than a specific model number).  Importantly, RR could not justify its failure to specifically identify every accused ASUS product to Magistrate Judge Cousins' satisfaction.

Magistrate Judge Cousins also struck aspects of ASUS' invalidity expert report:

Prior Art References: Magistrate Judge Cousins struck portions of ASUS' expert report that relied on prior art references not previously disclosed in the invalidity contentions.  ASUS argued that it identified the stricken references in various interrogatory responses and as extrinsic evidence in claim construction.  Magistrate Judge Cousins determined that this was not fair notice of ASUS' position that the prior art reference invalidated the patents since ASUS did not amend its invalidity contentions.

Newly-Identified Documents: Magistrate Judge Cousins struck portions of each party's expert reports that relied on documents not previously produced to the other side.  Particularly interesting is the engineering report that ASUS claimed was attorney-work product, which ASUS argued it did not need to produce until it decided to waive the privilege by relying on it in the expert report.  Magistrate Judge Cousins noted that ASUS waived that privilege when it used portions of the report at a prior deposition, so it should have produced it earlier instead of turning it over "at the time it found preferable."

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