United States District Court, N.D. California
ORDER GRANTING MOTION TO STRIKE RE: ECF NO.
TIGAR United States District Judge.
the Court is Plaintiff GoPro, Inc.'s
(“GoPro”) Motion to Strike the Declaration of
Alan C. Bovik in Support of Defendants' Claim
Construction Brief. ECF No. 54. The Court will grant the
patent case, GoPro alleges infringement of U.S. Patent Nos.
9, 025, 896 (the “'896 patent”) and 9, 282,
226 (the “'226 patent”). ECF No. 1. The
parties began making their respective claim construction
disclosures in January of this year. See ECF No. 33.
On February 21, 2017, Defendants C&A Marketing, Inc.,
C&A Licensing LLC, and PLR IP Holdings, LLC (collectively
“C&A”) served on GoPro their disclosures
pursuant to Patent Local Rule 4-2, providing proposed
constructions and supporting evidence for the four disputed
claim terms of the '896 patent. ECF No. 54-2. In the cover
pleading for these disclosures, C&A stated that it
“may rely on expert testimony or [an expert]
declaration . . . .” Id. at 2. In the
accompanying table, C&A included for each term an
identical statement that it “may rely upon the
testimony of an expert to explain how one of skill in the art
would understand [the claim term] at the time of the
invention.” Id. at 4, 7, 10, 12. It did not
identify any potential expert by name.
the parties conferred as required by Patent Local Rule 4-2(c)
in advance of filing the Patent Local Rule 4-3 Joint Claim
Construction and Prehearing Statement. GoPro claims, and
C&A does not deny, that C&A did not identify a claim
construction expert during that conference. ECF No. 54-1 at
2, ¶ 5.
March 17, 2017, the parties filed their Joint Claim
Construction and Prehearing Statement pursuant to Patent
Local Rule 4-3. ECF No. 38. In that disclosure, the parties
stated that they would not be calling any witnesses at the
claim construction hearing. Id. at 4. In the
accompanying exhibit providing both parties' proposed
constructions and proffered support, C&A again provided
the same statement it included in its Patent Local Rule 4-2
disclosures - namely, that it “may” rely on
expert testimony regarding how one of ordinary skill in the
art would understand the claim term. Id. at 3, 8,
14, 15. Once again, it did not identify an expert by name.
The claim construction discovery period closed on April 7,
2017. ECF No. 33 at 1.
April 21, 2017, C&A Marketing filed a petition for
inter partes review of the '896 patent, and
included with its petition an expert declaration from Alan C.
Bovik, Ph.D dated April 18, 2017. ECF No. 54-1 at 2,
¶¶ 4, 6, ECF No. 54-3. On April 28, 2017, GoPro
filed its Opening Claim Construction Brief. ECF No. 42.
GoPro's brief did not rely on expert testimony. On May
10, 2017, the parties conferred again regarding the upcoming
tutorial and claim construction hearing. ECF No. 54-1 at 2,
¶ 7. During that conference, C&A did not identify
Dr. Bovik as a claim construction expert and again confirmed
that it would not be calling any witnesses at the claim
construction hearing. Id. On May 12, 2017, C&A
filed its Responsive Claim Construction Brief. ECF No. 48.
C&A attached to that brief a declaration by Dr. Bovik,
ECF No. 48-2. In it, Dr. Bovik offered an opinion as to the
appropriate level of skill in the art for the '896 patent
(¶¶ 19-21), described and summarized the '896
patent and the disclosed embodiments (¶¶ 22-28),
and opined that the four disputed terms had no ordinary
meaning to one of ordinary skill in the art and that
C&A's proposed constructions were correct
(¶¶ 29-31). On May 19, 2017, GoPro filed its Reply
Claim Construction brief. ECF No. 53. In that brief, GoPro
did not directly address Dr. Bovik's declaration. The
same day, GoPro filed a motion to strike Dr. Bovik's
declaration, which the Court now considers.
Rule of Civil Procedure 37(c)(1) provides: “If a party
fails to provide information or identify a witness as
required by Rule 26(a) or (e), the party is not allowed to
use that information or witness to supply evidence on a
motion, at a hearing, or at a trial, unless the failure was
substantially justified or is harmless.” That rule
“gives teeth” to Rule 26's disclosure and
supplementation requirements, including the requirement that
parties disclose expert reports “at the times and in
the sequence that the court orders.” Yeti by Molly,
Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th
Cir. 2001); Fed.R.Civ.P. 26(a)(2)(D).
Advisory Committee Notes to the 1993 amendments to Rule 37
describe subsection (c)(1) as a “self-executing,
” “automatic” sanction to “provide
a strong inducement for disclosure of material” that
must be disclosed pursuant to Rule 26. Rule 37(c)(1)
sanctions based on failure to disclose evidence in a timely
manner may be appropriate “even when a litigant's
entire cause of action or defense” will be precluded.
Yeti, 259 F.3d at 1106.
of late-filed evidence is not appropriate if the party's
failure to provide information was “substantially
justified” or “is harmless.” Fed.R.Civ.P.
37(c)(1). “Disruption to the schedule of the court and
other parties . . . is not harmless.” Wong v.
Regents of Univ. of California, 410 F.3d 1052, 1062 (9th
Local Rule 4-2 requires the parties to exchange their
preliminary proposed constructions for disputed claim terms,
as well as the support - both within the patent (intrinsic
evidence) and outside of the patent (extrinsic evidence) -
for those proposed constructions. Patent L.R. 4-2(b). The
rule requires parties who may rely on expert testimony to
“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.” Patent L.R. 4-2(b).
Local Rule 4-3, which sets out the requirements for the Joint
Claim Construction and Prehearing Statement, likewise
requires identification of “any extrinsic evidence
known to the party on which it intends to rely either to
support its construction or to oppose any other party's
proposed construction, ” ...