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Days Corp. v. Lippert Components, Inc.

United States District Court, N.D. Indiana, South Bend Division

March 6, 2018

DAYS CORPORATION, Plaintiff,
v.
LIPPERT COMPONENTS, INC., et al., Defendants.

          OPINION AND ORDER

          Michael G. Gotsch, Sr. United States Magistrate Judge

         On 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.

         I. Introduction

         On 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.

         On 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].

         After 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.

         Defendants, 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.

         II. Applicable Law

         While 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. Id.

         At 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 statement

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.

(emphasis added).

         Second, 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. 26(a)(2)(B), ...


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