United States District Court, N.D. Indiana, South Bend Division
OPINION AND ORDER
Michael G. Gotsch, Sr. United States Magistrate Judge
February 8, 2018, Plaintiff, Days Corporation, moved this
Court to strike Defendants' expert witness report and bar
their expert witness, Dr. Massoud S. Tavakoli, from
testifying at the upcoming claim-construction hearing.
Plaintiff so moves the Court because it believes that a
violation of the Local Patent Rules make the designation of
the expert untimely, and that overall the expert report does
not comply with Fed.R.Civ.P. 26. For the reasons stated
below, this Court DENIES Plaintiff's
motion to bar the expert testimony and
ORDERS discovery reopened for the limited
purpose of allowing Plaintiff to depose Defendants'
expert witness. Additionally, Defendants' are
ORDERED to amend their expert report to
include Dr. Tavaloki's complete list of authored
publications and his history testifying as an expert witness
at trial during the past four years.
March 10, 2017, Plaintiff filed this patent action seeking a
declaratory judgment of non-infringement and invalidity of
two of Defendants' patents. On May 1, 2017, Defendants
sued Plaintiff for patent infringement. The two law suits
were consolidated into this single suit pursuant to Fed.
R. Civ. P. 42, on June 9, 2017. [DE 33].
Consistent with the Local Patent Rules, the parties initiated
the claim-construction process, which is designed to clearly
establish the claims at issue early in the litigation. As
required by Local Patent Rule 4-1(b), the parties exchanged
Preliminary Claim Constructions and Evidence on November 16,
2017. In its Preliminary Claim Constructions, Defendants
stated that they “may rely on the expert testimony of
Defendants' technical expert as extrinsic evidence to
support Defendants' proposed constructions.”
[DE 67-1 at 3]. Defendants did not identify any
particular expert or disclose an expert report to Plaintiff
in its Preliminary Claim Constructions.
December 11, 2017, however, Defendants' counsel, via
email, notified Plaintiff that they “may present an
expert for [support in construing] the sole term
‘analog signal.'” [DE 66-1 at 27].
Defendants further stated that if there were to present an
expert, they would “let [Plaintiff's counsel] know
in the morning and provide the necessary report.”
[DE 66-1 at 27]. The following day, which was also
the deadline for the parties' to file their Joint Claim
Construction and Prehearing Statement (“Joint
Statement”) under Local Patent Rule 4-1(c), Defendants
submitted the expert report by Dr. Massoud Tavakoli along
with the Joint Statement. In a notation at the end of the
Joint Statement, Plaintiff objected to the inclusion of Dr.
Tavakoli and his expert report. [DE 57 at 10].
objecting to Defendants' inclusion of the expert report,
Plaintiff moved this Court to strike the report and bar Dr.
Tavakoli from testifying at the April 25, 2018,
claim-construction hearing. Plaintiff contends that
Defendants' expert report is both untimely under the
Local Patent Rules and incomplete in violation of the Federal
Rules of Civil Procedure. In support, Plaintiff first argues
that L.P.R. 4-1(b) requires disclosure of expert testimony
when preliminary claim constructions are exchanged. As such,
Plaintiff contends that Defendants' expert disclosures in
this case were due on November 16, 2017, in their Preliminary
Claim Constructions-making Defendants' identification of
Dr. Tavakoli on December 12, 2017, in the Joint Statement
untimely. Second, Plaintiff argues that the expert report is
deficient under Fed.R.Civ.P. 26(a)(2)(B)(iv)-(v) because it
neither lists Dr. Tavakoli's complete publication history
nor discloses a complete list of the times he has served as a
expert at trial in the past four years.
on the other hand, argue that their disclosure was timely
because L.P.R. 4-1(b) requires only the designation of expert
testimony and not disclosure of the identity of the expert
witness along with the Preliminary Claim Constructions.
Defendants further contend that claim-construction expert
disclosures are due when the Joint Statement is filed
pursuant to L.P.R. 4-1(c). Additionally, Defendants claim
that Plaintiff's reliance on Fed. R. Civ. P. 26
is misplaced because the Local Patent Rules govern the
claim-construction process and L.P.R. 4-1(c) does not require
compliance with all of the requirements of Rule 26. In the
alternative, Defendants argue that if Rule 26 does apply,
their failure to include Dr. Tavakoli's publication and
trial history was not unjustified or harmful, thus not
warranting exclusion at the claim-construction hearing.
no court has interpreted this District's Local Patent
Rules, the Court notes that interpretation of any
district's local patent rules are governed by the law of
the Federal Circuit and not the regional circuit where the
trial court sits. O2 Micro Intern. Ltd. v. Monolithic
Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006).
By contrast, a court applies the law of its regional circuit
when interpreting or applying non-patent law
rules.Id. Additionally, local patent rules must
comply with the Federal Rules of Civil Procedure and may not
“unduly limit discovery in patent cases.”
Id. at 1365. The broad discovery allowed under
Fed. R. Civ. P. 26 should not be hindered by any
local rules, especially given how important discovery is to
the resolution of claims in complex patent cases.
issue in this case are the local rules governing the
claim-construction phase of a patent action. Parties must
comply with the District's Local Patent Rules and the
Court may not depart from these rules unless exceptional
circumstances exist. N.D. Ind. L.P.R. 1-1(a), (c). First, the
parties differ in their interpretation of which subpart of
Local Patent Rule 4-1 governs the timing of expert
disclosures for claim-construction. Local Patent Rule
4-1(b)(2) states: “When the parties exchange their
preliminary claim constructions, they must also identify all
references from the specification or prosecution history that
support its construction and designate any supporting
extrinsic evidence including . . . testimony of
percipient and expert witnesses.” (emphasis
added). Local Patent Rule 4-1(c)(4), however, states that the
parties' joint claim-construction and prehearing
must address the disputed terms and contain the following
information[, including among other things, if] witnesses are
to be called at the claim-construction hearing, the
identity of each such witness, . . . and . . . a summary
of his or her testimony including . . . a report
containing the expert's claim-construction opinions and
the reasons for them.
the parties disagree as to the extent Fed. R. Civ. P.
26(a)(2) governs the use of retained experts in the
claim-construction process. Under Fed. R. Civ. P.