Parties often offer expert declarations during the claim construction process.
These declarations can be of varying utility. Sometimes, parties offer a detailed and helpful explanation of how the technology works. Other times, parties offer a useless, conclusory expert declaration that says little more than "a person of ordinary skill in the art would understand the term to mean [whatever construction the attorneys who hired me proposed]."
But, while declarations are common, in my experience live testimony from experts during a Markman hearing is pretty rare in D. Del. That's why I thought it was worth noting that, this week, Judge Burke granted an opposed request to permit live expert testimony at Markman in Scale Biosciences, Inc. v. Parse Biosciences, Inc., C.A. No. 22-1597-CJB, D.I. 105 (D. Del. Nov. 27, 2023).
There, the defendant asked for leave to present live expert testimony at Markman, without limitation as to the content. Plaintiff opposed, arguing that the expert would offer improper opinions, including about how the Court should read intrinsic evidence.
In the alternative, the plaintiff requested leave to present its own expert in rebuttal to the extent the Court permits Defendants to present theirs, and asked that the Court limit the opposing expert to "testimony in his deposition regarding background science and the ordinary meanings of terms of art." Id., D.I. 103 at 2.
The Court ultimately permitted expert testimony, but included some limitations on its scope:
ORAL ORDER: The Court, having reviewed the parties' joint letter regarding the Markman hearing, (D.I. 103), hereby ORDERS as follows: (1) The Court will permit each side, if they wish to, to put on some expert testimony at the hearing, so long as the experts' testimony is focused on subjects that will properly add value (like helping the Court understand what the technical aspects of the patent mean to a POSITA, or providing background on the technology at issue, etc.) and not on subjects that will not (like opining on how to assess the internal coherence of, or context of the language used in, the asserted patents).;
As far as timing, the parties agreed to a 3-hour claim construction hearing, regardless of whether experts are presented.
That's surprising. A typical claim construction hearing would be 2-3 hours without expert testimony, and parties are often hard pressed to fit all of their terms in. Adding (presumably) direct and cross examination of two experts, plus the time lost to shuffling around the courtroom, could eat up quite a bit of that time.
The Court seemed sensitive to that issue as well, and sua sponte added half an hour to the parties' time allocation, but only to the extent they ultimately call live experts:
(2) The Court is a bit worried though that if the parties do this, the time for argument on the six terms will be reduced to such an extent that the Court will not get much out of the argument part of the hearing, and/or that the parties won't be able to address all of the terms.; (3) As a result, if neither side presents expert testimony at the hearing, the total time allocated for the hearing will be three hours (split evenly per side). But if either side (or both) presents expert testimony, the total time allocated for the hearing will be three and a half hours (split evenly per side)
I'm curious as to how this all will pan out. Three and a half hours may still be a bit short for a direct and cross of two experts plus argument on six terms. It looks like the hearing is set for December 15, 2023 at 11:00 AM in Courtroom 2A. If anyone wants to attend and report back, I'd be happy to update this post with more info.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
