VIA Technologies, Inc. (a California corporation) et al v. ASUS Computer International et al

Filing 158

ORDER GRANTING-IN-PART MOTION TO STRIKE DECLARATION OF MIGUEL GOMEZ by Magistrate Judge Paul Singh Grewal granting-in-part 124 (psglc2, COURT STAFF) (Filed on 5/13/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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VIA TECHNOLOGIES, INC. (A
CALIFORNIA CORPORATION), et al.,

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Plaintiffs,
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v.
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(Re: Docket No. 124)

United States District Court
Northern District of California

Defendants.

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ORDER GRANTING-IN-PART
MOTION TO STRIKE DECLARATION
OF MIGUEL GOMEZ

ASUS COMPUTER INTERNATIONAL, et
al.,

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Case No. 14-cv-03586-BLF

Plaintiffs VIA Technologies, Inc. and several related and similarly named companies
allege that Defendants ASUS Computer International and its corporate siblings infringe several
VIA patents.1 The presiding judge has scheduled a claim construction tutorial for May 26 and a
claim construction hearing for June 10.2 Along with its opening claim construction brief, VIA
submitted a declaration by VIA’s technical expert, Miguel Gomez, containing his opinions on the
background of the technology and how the claims should be construed.3 Defendants now move to
strike large portions of that declaration on the grounds that VIA failed to disclose the opinions in
those paragraphs as required by the Patent Local Rules of this district.4 The motion is
GRANTED-IN-PART.

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See Docket No. 70 at ¶¶ 7-18, 54-75.

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See Docket No. 128.

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See Docket No. 116-16.

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See Docket No. 124.

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Case No. 14-cv-03586-BLF
ORDER GRANTING-IN-PART MOTION TO STRIKE DECLARATION OF MIGUEL GOMEZ

I.

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A party intending to support its claim construction positions with testimony from an expert
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first must “provide a description of the substance of that witness’ proposed testimony that includes
a listing of any opinions to be rendered in connection with claim construction.”5 The party should
hand over this description when the parties exchange their preliminary claim constructions.6
Another rule directs each party to “identif[y] any extrinsic evidence known to the party on which it
intends to rely either to support its proposed construction or to oppose any other party’s proposed
construction, including . . . testimony of percipient and expert witnesses.”7 That identification
must be contained within a joint claim construction and prehearing statement.8 Claim construction
discovery, “including any depositions with respect to claim construction of any witnesses,

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including experts,” must be completed no more than 30 days after the parties file their joint claim

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Northern District of California

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construction and prehearing statement.9

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In this case, VIA included with its preliminary claim constructions high-level
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“[d]escription[s] of the substance of anticipated testimony of Miguel Gomez.”10 For example, for

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the first disputed claim term, VIA provided this description of Gomez’ proposed testimony:
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The term recites sufficiently definite structure to a person of
ordinary skill. A person of ordinary skill would understand that the
term has a generally understood plain and ordinary structural
meaning, or, in general, means a module that converts parallel data
into serial data and delayed serial data. A person of ordinary skill
would find that the intrinsic record confirms that understanding. A
person of ordinary skill would not view the term as a purely
functional term. And a person of ordinary skill would understand,
based on the claim language and intrinsic record, the scope of the
term with reasonable certainty. A person of ordinary skill would

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Pat. L.R. 4-2(b).

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See id.

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Pat. L.R. 4-3(b).

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See Pat. L.R. 4-3.

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Pat. L.R. 4-4.

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Docket No. 124-2, Ex. A at 2-16.

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Case No. 14-cv-03586-BLF
ORDER GRANTING-IN-PART MOTION TO STRIKE DECLARATION OF MIGUEL GOMEZ

conclude that the extrinsic record confirms this understanding of the
term.11

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VIA did not indicate that Gomez intended to testify to the background of the technology. The

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joint claim construction statement included the following summary of his expected testimony:
Mr. Gomez may provide opinions regarding the disputed claim
terms, the definition and qualifications of one of ordinary skill in the
art, the state of relevant technology at the time the patents were
filed, and rebuttal opinions to constructions offered by the
Defendants or any expert on which the Defendants may rely.12

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A more detailed listing of his opinions followed, using largely the same language from VIA’s
preliminary contentions.13 This time, VIA did say that Gomez “[wa]s expected to testify regarding
. . . [a]n overview of the technology disclosed the [sic] asserted patents (including the background
and context of the technology).”14
Defendants then deposed Gomez during claim construction discovery. Gomez testified

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Northern District of California

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that he did not “have a final declaration of any sort” yet, but that he had “been told that [he] may
be working on one.”15 After claim construction discovery closed, Gomez delivered that
declaration, which VIA attached to its opening claim construction briefing.16 The declaration
contained 36 paragraphs of Gomez’ opinions on the technical background as well as his opinions
on certain disputed claim terms.17 Defendants filed this motion a month later.18

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Id. at 2.

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Docket No. 109 at 7.

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See id. at 7-12.

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Id. at 7.

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Docket No. 124-5 at 139:9-18. In the same vein, he also told Defendants that he had not yet
“been asked to render an opinion on any of the subject matter at this point.” Id. at 20:22-21:5, see
also id. at 11:25-12:8, 78:24-79:4, 86:21-87:6, 89:4-13, 96:2-6, 187:15-21.
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See Docket No. 116-16.

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See id. at ¶¶ 44-78, 82, 85, 99, 103, 104.1, 104.2.

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See Docket No. 124.

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Case No. 14-cv-03586-BLF
ORDER GRANTING-IN-PART MOTION TO STRIKE DECLARATION OF MIGUEL GOMEZ

II.

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The Patent Local Rules set up a straightforward process for parties to disclose expert
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opinions they intend to rely on during claim construction. At the outset, a party planning to call an
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expert must “provide a description of the substance of [the expert’s] proposed testimony.”19 In
particular, that description must “include[] a listing of any opinions to be rendered in connection
with claim construction.”20 And, in the joint claim construction and prehearing statement, the

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party must identify that the expert’s testimony is among the extrinsic evidence on which the party
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will rely.21 If the party additionally proposes to call the expert witness to testify live at the
hearing, it must include in the joint claim construction and prehearing statement “a summary of
[the expert’s] testimony including . . . each opinion to be offered related to claim construction.”22
Claim construction discovery commences thereafter.23

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United States District Court
Northern District of California

For this sequence of events to make any sense, the expert opinions disclosed must enable
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useful discovery about those opinions. To be sure, the Patent Local Rules have been amended to
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remove a requirement that the “summary of each opinion to be offered” be disclosed “in sufficient
detail to permit a meaningful deposition of that expert.”24 But that amendment preserved the

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Pat. L.R. 4-2(b).

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Id.

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See Pat. L.R. 4-3(b). If the party “proposes to call one or more [expert] witnesses at the Claim
Construction Hearing,” the party must include in the joint claim construction and prehearing
statement “a summary of [the expert’s] testimony including . . . each opinion to be offered related
to claim construction.” Pat. L.R. 4-3(e). Taking the Rule’s plain language at face value, it only
applies to witnesses who will testify live at the claim construction hearing. But see HTC Corp. v.
Tech. Props. Ltd., Case No. 08-cv-00882, 2010 WL 4973628, at *1 (N.D. Cal. Dec. 1, 2010);
Friskit, Inc. v. RealNetworks, Inc., Case No. 03-cv-05085, 2005 WL 6249309, at *1 (N.D. Cal.
Mar. 22, 2005). Because VIA does not intend to call Gomez to testify at the hearing, this
subsection does not apply.

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Pat. L.R. 4-3(e).

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See Pat. L.R. 4-4.

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Friskit, 2005 WL 6249309, at *1; see Reflex Packaging, Inc. v. Lenovo (U.S.), Inc., Case No.
10-cv-01002, 2011 WL 7295479, at *2 (N.D. Cal. Apr. 7, 2011).
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Case No. 14-cv-03586-BLF
ORDER GRANTING-IN-PART MOTION TO STRIKE DECLARATION OF MIGUEL GOMEZ

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disclosure requirement. Even if “a less detailed description is permissible” under the amended

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Rule,25 that description cannot merely be a list of topics without “a listing of [the] opinions”

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themselves.26
Against this standard, VIA’s disclosure was insufficient. For example, with respect to the

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first disputed claim term, VIA simply told Defendants that Gomez would testify that “a person of

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ordinary skill in the art would understand . . . the scope of the term with reasonable certainty” and

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interpret “parallel-to-serial unit” to mean “a module that converts parallel data into serial data and

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delayed serial data.”27 In his declaration, however, Gomez explained for the first time how the

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unit might be implemented and why the term “unit” would not confuse a POSITA.28 Without this

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explanation, Defendants had no guidance on how to conduct a useful deposition; by the time they

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United States District Court
Northern District of California

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received it, the window for discovery had long since closed. And, of course, VIA’s initial

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disclosure made no mention of the fact that Gomez intended to offer pages of opinions on the

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background of the technology.29
All that said, striking testimony altogether is the court’s last resort.30 Instead, given the

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relative banality of the opinions at issue and the weeks remaining until the claim construction

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hearing, a more appropriate remedy would be a further opportunity for Defendants to explore the

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opinions that Gomez did not disclose in advance. Accordingly, VIA shall make Gomez available

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for three hours of additional deposition by May 27, 2016. To the extent this deposition

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necessitates additional claim construction briefing, the parties should seek the presiding judge’s

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leave to file any supplemental briefs.

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Reflex Packaging, 2011 WL 7295479, at *2.

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Pat. L.R. 4-2(b).

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Docket No. 124-2, Ex. A at 2.

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Docket No. 116-16 at ¶¶ 82, 85.

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See Docket No. 124-2, Ex. A; Docket No. 116-16 at ¶¶ 44-78.

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See Reflex Packaging, 2011 WL 7295479, at *1 (citations omitted).

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Case No. 14-cv-03586-BLF
ORDER GRANTING-IN-PART MOTION TO STRIKE DECLARATION OF MIGUEL GOMEZ

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SO ORDERED.

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Dated: May 13, 2016

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_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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United States District Court
Northern District of California

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Case No. 14-cv-03586-BLF
ORDER GRANTING-IN-PART MOTION TO STRIKE DECLARATION OF MIGUEL GOMEZ