Federal Circuit: District Court Properly Struck Expert Testimony that Failed to Apply Agreed-Upon Claim Construction

“When the court has adopted a construction that the parties requested and agreed upon, any expert theory that does not rely upon that agreed-upon construction is suspect.”

expert testimonyThe U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion affirming a district court order that struck parts of an infringement expert report and also granted summary judgment of non-infringement to Valve Corporation. The CAFC held that it is proper to strike expert testimony that did not rely on the agreed upon claim construction adopted by the district court.

Treehouse Avatar, LLC owns U.S. Patent 8,180,858, which relates to a method of presenting data based on choices made by users with respect to characters in a network site, such as choosing clothing and hairstyles for the characters. The case turned on the meaning of “character-enabled (CE) network sites” (“CE limitation”) in the claims, which the Patent Trial and Appeal Board (PTAB) had construed in an earlier inter partes review (IPR) proceeding to mean “a network location, other than a user device, operating under control of a site program to present a character, object, or scene to a user interface.” This differed from both of the parties’ preferred interpretations, but both parties requested that the district court adopt the PTAB’s construction.

However, Treehouse’s expert, Mr. Friedman, submitted a report in December 2020 that applied the “plain and ordinary meaning” of the CE limitation rather than the Board’s construction. Although he subsequently filed a supplement to that report to clarify that the agreed-upon construction reflects the ordinary meaning and thus does not conflict with his testimony, Valve moved to strike portions of the expert’s testimony as “overbroad and inapplicable,” and for failure to “address or apply the construction agreed-upon by the parties that was used by the court.” Valve then filed a motion for summary judgment of non-infringement and the district court ultimately granted both the motion to strike portions of the testimony and the summary judgment motion, finding that “Treehouse failed to offer admissible evidence showing that Valve’s video games operated the CE limitation.”

On appeal, Treehouse argued that the district court erred in striking the testimony because “an expert report that does not recite an agreed claim construction remains admissible so long as the opinions expressed in the report are not inconsistent with that construction.” But in its motion to strike, Valve had argued that the testimony was overbroad and “materially different” from the agreed upon construction and the CAFC agreed. The opinion explained:

“When the court has adopted a construction that the parties requested and agreed upon, any expert theory that does not rely upon that agreed-upon construction is suspect. Here, Mr. Friedman’s report undisputedly applied the ‘plain and ordinary meaning’ of the CE limitation, not the parties’ agreed-upon construction.”

As to Treehouse’s argument that summary judgment was still improper, the CAFC noted that such a finding required Treehouse to “establish a genuine issue of material fact that Valve’s servers qualify as ‘character-enabled network sites’ and, thus, perform every step of the asserted claims, particularly the CE limitation.” Since the district court struck key portions of the expert testimony relating to such evidence, Treehouse had not met this requirement, said the court, while Valve had submitted significant evidence that Valve’s servers do not meet the CE limitation.


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