Lodsys, LLC v. Brother International Corporation et al
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 3/12/2013. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
CORPORATION, et al.,
CASE NO. 2:11-cv-90-JRG
MEMORANDUM OPINION AND ORDER
Before the Court is Defendants Samsung Electronics Co., LTD, Samsung Electronics
America, Inc., and Samsung Telecommunications America, LLC’s (“Samsung”) Motion for
Clarification Regarding Submission of Expert Declarations (Dkt. No. 531.) Samsung seeks
clarification of Rule 4-3 of the Rules of Practice for Patent Cases before the Eastern District of
Texas (“Patent Rules”) regarding its disclosure obligations under Patent Rule 4-3(b). Samsung’s
request for clarification arises from a dispute regarding the parties’ submission of the Joint Claim
Construction Chart, in which Samsung reserves the right to “to submit an expert declaration in
support of their claim construction positions.” (Dkt. No. 531, at 1.)
Lodsys contends that such a reservation is improper, because a “generic statement merely
reserving [the] right to possibly rely on an expert without identifying the term(s) or a description
of the testimony” to be proffered does not satisfy the requirements of Patent Rule 4-3(b). (Dkt.
Patent Rule 4-3(b) requires that the parties complete and file a Joint Claim
Construction Chart and Prehearing Statement containing:
Each party’s proposed construction of each disputed claim term,
phrase, or clause, together with an identification of all references
from the specification or prosecution history that support that
construction, and an identification of any extrinsic evidence known
to the party on which it intends to rely either to support its
proposed construction of the claim or to oppose any other party’s
proposed construction of the claim, including, but not limited to, as
permitted by law, dictionary definitions, citations to learned
treatises and prior art, and testimony of percipient and expert
See Patent Rule 4-3(b). Accordingly, the question before the Court is whether the Patent Rules
require the disclosure of an expert declaration, identified by a party in the Joint Claim
Construction Chart, before using the declaration in a Patent Rule 4-5 claim construction brief.
Samsung contends that this Court expressly rejected Lodsys’ position in an earlier case
involving nearly identical circumstances. See Tyco Healthcare Group LP v. E-Z-EM, Inc., No.
2:-7-cv-262 (E.D. Tex. Jan. 11, 2010) (J. Ward). In Tyco, one party objected to the other party’s
“plan to submit an expert declaration with their … Markman brief after the close of claim
The objecting party “argue[d] that P.R. 4-3(b)-(d) requires
disclosure of an expert declaration with the joint claim construction and prehearing statement
prior to the close of claim construction discovery.” Id. Judge Ward concluded that this reading
of P.R. 4-3 was incorrect and that the parties “are required to disclose a detailed summary of
their expert witnesses’ testimony [in their Rule 4-3 statement] only if they intend to offer his
testimony during the Markman hearing.” Id.
This Court is persuaded that Judge Ward’s prior order in Tyco is distinguishable from the
present case. The Court finds that a party may not rely upon an expert declaration that is
produced for the first time along with the party’s claim construction brief. Even before the
parties prepare their joint claim construction and prehearing statement, Patent Rule 4-2(b)
requires broad disclosure and production of “extrinsic evidence, including without limitation,
dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and
expert witnesses . . . .” Both the letter and the spirit of the Patent Rules require early and
complete disclosure of extrinsic evidence relevant to claim construction. The sole exception to
such production requirement involves the testimony of live witnesses, which is an exception
borne out of necessity. Since a witness’ testimony does not exist until called at a hearing or a
deposition, a party that intends to rely on a witness’ testimony may satisfy Patent Rule 4-2(b) by
providing “a brief description of the substance of that witness’ proposed testimony.” In the
context of the Patent Rules, this Court finds that a sworn declaration differs both substantively
and procedurally from live or deposition testimony offered at a claim construction hearing.
Sworn declarations of expert witnesses should be disclosed in the same manner as
“dictionary definitions, citations to learned treatises [or] prior art.” The purposes of Patent Rule
4-3(b) is to ensure that each party makes a substantive and informative disclosure of any
intended sworn declaration which they may seek to rely upon in their claim construction
briefing. Samsung has not done this. Samsung may not merely drop a hint that it may use such a
declaration to support its briefing. It must rather clearly indicate in the Joint Claim Construction
Chart and Prehearing Statement that it intends to rely on a sworn declaration; identify the
declarant; and identify the precise disputed claim terms which will be addressed thereby. To do
anything less makes Patent Rule 4-3(b) essentially meaningless. Accordingly, it is ORDERED
that Samsung may not include or otherwise rely upon any sword declarations in its claim
construction briefing in this case.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 12th day of March, 2013.
UNITED STATES DISTRICT JUDGE
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