Expert Declaration in Support of Motion for Summary Judgment of Noninfringement
(Patent Case)

Summary

This is a template for an expert declaration in support of a motion for summary judgment of noninfringement of a patent. This template includes practical guidance and drafting notes. Fed. R. Evid. 702 requires the proponent of an expert witness to demonstrate to the court that the expert's opinion more likely than not reflects a reliable application of the pertinent principles and methods to the evidence. In addition, the Federal Circuit has explained that, to offer expert testimony from the perspective of a person of ordinary skill in the art (POSITA), such as for claim construction, infringement, or validity, the witness must at least have ordinary skill in the art. See Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm'n, 22 F.4th 1369, 1376-77 (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). Therefore, an expert declaration on noninfringement should include a statement of the basic legal principles of patent infringement that support the expert's analysis, with a proviso that counsel provided the statements of law and that the expert is not testifying as a legal expert. Further, the declaration should include opinions and factual assertions sufficient to show that the expert possesses all of the attributes of a POSITA for each patent in issue. See Kyocera, 22 F.4th at 1376-78. Note, however, that the expert need not have been a POSITA at the time of the invention to offer expert testimony from the vantage point of a skilled artisan. See Osseo Imaging, LLC v. Planmeca USA Inc., 116 F.4th 1335, 1341 (Fed. Cir. 2024). This template includes statements of the principles of direct literal infringement and infringement under the doctrine of equivalents, including some principles that apply when analyzing infringement of method and system claims. For additional statements of law, see Patent Statements of Law §§ 31[4], [5]. See Experts in Patent Litigation: Use of Experts During Litigation and Expert Discovery for expert testimony considerations. Evidence on infringement and noninfringement in patent cases is typically introduced by the testimony of a technical expert, such as an engineer or scientist with established expertise in the technical field of the patented invention who also possesses all other attributes of a POSITA for each patent in issue. A judge often relies on expert witnesses for a plain English description of complicated technology. The party whose technical expert explains the issues in a way that the judge finds easier to understand can have an advantage. Accordingly, you should work with your expert to hone a comprehensible description of the technology, the patented invention, and the accused device or process. An expert analysis of patent infringement compares the accused device, method, or system with the patent claims as construed by the court. Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 1052, (Fed. Cir. 2002) (en banc). To prove infringement, the patent owner must show that the accused instrumentality contains every limitation of the asserted claims, literally or under the doctrine of equivalents. Ericsson, Inc. v. D-Link Sys., 773 F.3d 1201, 1215 (Fed. Cir. 2014); Unique Concepts v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991). For infringement of a method claim, all steps of a claimed method must be performed by or attributable to a single accused infringer. Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc). Where no single entity performs all steps of a method claim, direct infringement occurs only if the acts of one entity are attributable to another, such that a single entity is responsible for the infringement. Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357, 1364, (Fed. Cir. 2017). To establish direct infringement of a system claim by a single entity, the patent owner must show that the accused infringer makes, sells, offers to sell, or uses the entire system. See, e.g., Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc., 631 F.3d 1279, 1288 (Fed. Cir. 2011); Rotec Indus., Inc. v. Mitsubishi Corp., 215 F. 3d 1246, 1252 (Fed. Cir. 2000); Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d 1358, 1369 (Fed. Cir. 2021). "[T]o 'use' a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it." Centillion, 631 F.3d at 1284, citing NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005). An accused infringer may move for summary judgment of noninfringement of a patent where undisputed facts show that one or more limitations of the asserted claims have no corresponding element in the accused product literally or under the doctrine of equivalents. An accused infringer may seek summary judgment dismissing some or all of the asserted patent claims or summary judgment as to some or all accused products. Thus, the expert declaration should include a detailed analysis of the limitations of each asserted patent claim. The declaration should also include a detailed comparison between the limitations of each claim and each accused product for which summary judgment is sought. The expert should show that one or more claim limitations do not have corresponding elements in each accused product for which summary judgment is sought. Summary judgment dismissing a method claim may be granted where the undisputed facts show that the accused infringer does not perform all steps of the claimed method itself, and any performance of the missing steps by a third party cannot be attributed to the accused infringer. Thus, the expert declaration should show that the accused infringer does not perform at least one step of an asserted method claim and that any performance of the missing step by a third party cannot be attributed to the accused infringer. For system claims, an accused infringer may move for summary judgment of noninfringement where the accused infringer does not make, sell, offer for sale, or use all the components of the accused system, and the making, selling, offering for sale, or use of the missing system components cannot be attributed to the accused infringer under a theory of vicarious liability. Thus, the expert declaration should show that at least one component of an asserted system claim is not made, sold, offered for sale, or used by the accused infringer and that the accused infringer is not vicariously liable for another's actions. This template assumes that claim construction issues have been briefed and that the court has ruled on claim construction. If claim construction issues have not been separately briefed or already resolved by the court, your expert may need to address claim construction issues relevant to noninfringement. See Expert Declaration (Claim Construction) for a starting point. By the time you file a motion for summary judgment of noninfringement, most often, you will have served your expert report on noninfringement under Fed. R. Civ. P. 26. However, if you file your summary judgment motion on noninfringement before the 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 expert declaration includes all the information required in an expert report under Fed. R. Civ. P. 26 (a)(2)(B). That 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 that you included in the report. Instead, you may reference the report and include it as an exhibit. However, ensure that there are no inconsistencies between the expert's declaration and the expert's report that could be exploited by opposing counsel to undermine the expert's credibility. Keep in mind that while there may be legitimate reasons for experts to change their opinion (e.g., new facts uncovered during discovery or a ruling by the court on claim construction), 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). Also, make sure that you comply with any local rules and local patent rules requiring prior disclosure of the noninfringement contentions on which your expert relies. It is not uncommon for counsel to prepare the first draft of an expert declaration based on discussions with the expert or 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, 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.