In a recent order in VIA Techs., Inc. v. ASUS Computer Int’l, Magistrate Judge Grewal Court found VIA’s expert disclosures insufficient under the “straightforward” claim construction process of the Northern District’s Patent Local Rules. Despite VIA’s failure to strictly comply with the rules, the Court rejected the “last resort” penalty of striking the expert’s testimony altogether, and instead granted ASUS additional deposition time to inquire into his opinions. In so ruling, the Court considered the “relative banality” of the undisclosed opinions and the weeks remaining before the claim construction hearing.
Under the Patent Local Rules, when parties exchange preliminary claim constructions, they must also provide “a description of the substance of [the expert’s] proposed testimony that includes a listing of any opinions to be rendered in connection with claim construction.” Pat. L.R. 4-2(b) (emphasis added). With its preliminary constructions, however, VIA only included high-level descriptions of the anticipated testimony of its expert, Miguel Gomez. VIA did not disclose that Gomez would testify on the background of the technology.
And, in its Pat. L.R. 4-3(b) Joint Claim Construction and Prehearing Statement, VIA provided a largely duplicative disclosure. VIA additionally stated that it expected its expert to provide an overview of the technology disclosed in the asserted patents, including the background and context of the technology, but provided no details.
After claim construction discovery (including Mr. Gomez’s deposition) concluded, VIA attached a declaration from Mr. Gomez to its claim construction brief, which included previously undisclosed opinions. Among other things, Mr. Gomez opined on what would be the understanding of a Person Having Ordinary Skill in the Art (PHOSITA) of the claim term “parallel-to-serial unit,” and how such a unit would be implemented in practice. The Court agreed that ASUS, lacking this information before, “had no guidance on how to conduct a useful deposition.” Magistrate Judge Grewal thus concluded that VIA’s actions violated the spirit of the Patent Local Rules, which require expert opinions to be disclosed at a time that enables “useful discovery about those opinions.”
In formulating its opinion, the Court acknowledged that the Patent Local Rules have been amended and no longer expressly require opinion summaries “in sufficient detail to permit a meaningful deposition of that expert.” Magistrate Judge Grewal nonetheless found that, under the amended rule, “th[e] description cannot merely be a list of topics without ‘a listing of [the] opinions themselves.’” He therefore ordered VIA to make its expert available for three more hours of deposition testimony to address his previously undisclosed positions. Although VIA did not suffer the harsh penalty of stricken expert testimony, the Court’s ruling and remedy addressing the surprise created by VIA’s failure to provide sufficient notice as to the expert’s opinions provides a useful guidepost on the type of disclosures required under the Patent Local Rules.