Expert Declaration
(Claim Construction)

Summary

This Expert Declaration (Claim Construction) template is for use in preparing an expert declaration in support of a party's proposed claim construction in a district court patent litigation. This template contains practical guidance and drafting notes. Adapt this template to the claim construction issues and circumstances of your case. For a discussion of claim construction strategy from the accused infringer's perspective, including whether to introduce expert testimony, see Claim Construction Considerations and Strategy (Accused Infringer). For a discussion from the viewpoint of the patent owner, see Claim Construction Considerations and Strategy (Patent Owner). For a discussion of expert testimony considerations, see Experts in Patent Litigation: Use of Experts During Litigation and Expert Discovery. Claim construction is a question of law that a court may resolve based entirely on the intrinsic evidence (i.e., the patent and its prosecution history). However, extrinsic evidence, including expert testimony, is often used to explain the relevant technology, how the invention works, how a person of ordinary skill in the art would understand particular claim terms, or that a claim term has a particular meaning in the art. Be aware that a court may refuse to admit expert testimony if it finds that it contradicts the intrinsic evidence, the expert's assertions are conclusory or unsupported, the expert is unqualified, or that expert testimony is unnecessary in view of the intrinsic evidence. See Phillips v. AWH, Inc., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc); Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015). Claim construction is often briefed early in a case, before the time for service of expert reports under Fed. R. Civ. P. 26. Therefore, if you decide to rely on expert testimony in the form of a declaration to support your proposed claim construction before the time for service of the expert's report under Fed. R. Civ. P. 26 (a)(2)(D), or the time otherwise set by the court, ensure that the declaration includes all the information required in an expert report under Fed. R. Civ. P. 26 (a)(2)(B). The declaration also should include opinions and factual assertions sufficient to show that the expert possesses all of the attributes of a person of ordinary skill in the art (POSITA) for each patent in issue. See Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm'n, 22 F.4th 1369, 1376-78 (Fed. Cir. 2022) (holding that, where a purported expert did not possess ordinary skill in the art, the ITC ALJ abused his discretion by admitting the testimony of that expert on any issue that is analyzed from the perspective of a POSITA). Collectively, this information should be sufficient to qualify the witness to testify as an expert under Fed. R. Evid. 702. This template assumes that you have not yet served the expert's report and, therefore, includes the information required under Fed. R. Civ. P. 26 (a)(2)(B). If you have already served the expert's report under Rule 26, you do not necessarily need to repeat all the information you included in the report. Instead, you may reference the report and include it as an exhibit. However, ensure that are no inconsistencies between the expert's declaration and expert's report that could be exploited by opposing counsel to undermine the expert's credibility. Also keep in mind that while there may legitimate reasons (e.g., new facts uncovered during discovery) for experts to change their opinion, a change in the expert's analysis may expose your client to an award of attorney's fees in some circumstances. See, e.g., Intellectual Ventures I LLC v. Trend Micro Inc., 2018 U.S. Dist. LEXIS 162795 (D. Del. 2018). Make sure that you comply with any local rules and local patent rules requiring prior exchange of proposed claim constructions and prior disclosure of expert opinions on claim construction. Local patent rules may require prior disclosure of the expert's proposed testimony on claim construction in summary form or in the form of a full-blown expert report under Rule 26 (a)(2)(B). Counsel usually prepares the first draft of an expert declaration based on discussions with the expert or based on the expert's prior report (if there is one), particularly since the expert may not be familiar with the proper format and required background information. However, some experienced experts may prepare their own first draft. Be sure that you understand the expert's analysis before you draft the declaration, and that the expert carefully reviews the final draft before signing. For a discussion of the extent to which your communications with the expert are protected by privilege or work product, see Experts in Patent Litigation: Privilege and Work Product Considerations.