Expert Declaration in Support of Summary Judgment Motion
(Section 101)

Summary

This Expert Declaration in Support of Summary Judgment Motion (Section 101) template provides a template for an expert declaration in support of a motion for summary judgment seeking dismissal of a patent infringement complaint on the grounds that the asserted patent claims are directed to patent-ineligible subject matter. This template contains practical guidance and drafting notes. A subject matter eligibility challenge (whether by a motion to dismiss or a summary judgment motion) is often made early in a patent case before the time for service of expert reports under Fed. R. Civ. P. 26. Therefore, if, as the accused infringer, you decide to rely on expert testimony in the form of a declaration to support your subject matter eligibility challenge before the time for service of the expert's report under Fed. R. Civ. P. 26 (a)(2)(D), you should ensure that the declaration includes all the information required in an expert report under Fed. R. Civ. P. 26 (a)(2)(B). This information should be sufficient to qualify the witness to testify as an expert under Fed. R. Evid. 702. The declaration must set out facts that would be admissible at trial. Fed. R. Civ. P. 56(c)(4). The declaration must do more than simply state the expert's opinion. Like an expert report, the declaration must identify the facts on which the opinion is based. Under Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014), the subject-matter eligibility inquiry is two-part—first, analyze whether the patent claim is directed to a law of nature, natural phenomenon, or abstract idea, and if so, analyze whether additional elements in the claim add anything significant (i.e., an inventive concept). To add something significant that may qualify as an inventive concept in step two of Alice, the additional elements must be more than merely well-understood, routine, or conventional activity. While patent eligibility is ultimately a question of law, the Federal Circuit has recognized that the second Alice inquiry—whether something was well-understood, routine, and conventional to a person of ordinary skill in the art at the pertinent time—is a factual determination. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). In a motion for summary judgment, an accused infringer must show that there is no issue of material fact that would preclude summary judgment that the claims are patent-ineligible. Fed. R. Civ. P. 56(a). An expert for the accused infringer may help explain to the court why the additional elements recited in the claim are merely well-understood, routine, or conventional. In deciding whether there is a genuine issue of material fact that would preclude summary judgment, the court views the evidence in the light most favorable to the non-moving party and draws all justifiable inferences in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). But in its opposition to the motion, the patent owner cannot rely on mere conclusory allegations—it must offer evidence in support of its position that the additional claim elements are not merely well-understood, routine, or conventional. 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 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). In addition, make sure that you comply with any local rules and local patent rules requiring prior disclosure of your invalidity allegations and the procedural requirements for summary judgment motions under both local and federal rules. 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.