In a November 30, 2022 precedential opinion in Treehouse Avatar LLC v. Valve Corporation (available here), the Federal Circuit upheld a district court’s decision striking expert testimony that did not rely upon the parties’ own agreed upon claim construction and that the court adopted, and granting summary judgment of non-infringement.

 

By way of background, Treehouse sued Valve in May 2015 in the District of Delaware, with the litigation later being transferred to the Western District of Washington.  There, the parties submitted a joint claim construction brief in which, inter alia, they adopted the interpretation of a claim limitation (“character-enabled (CE) network sites”) that the Patent Trial and Appeal Board (“PTAB”) had reached in a previous inter partes review proceeding.  In that proceeding, Treehouse asserted a particular interpretation, and neither party argued to the PTAB that the plain and ordinary meaning of the CE limitation should apply.  However, the PTAB adopted its own construction, namely “a network location, other than a user device, operating under control of a site program to present character, object or scene to a user interface.”  This was the construction adopted by the district court.

 

In the district court litigation, Treehouse’s infringement expert submitted an expert report that applied the plain and ordinary meaning for the CE limitation rather than the agreed-upon construction.  Shortly thereafter, the expert submitted a one page “Supplement to Expert Report” intended to “clarify” his initial report in which he said that the construction that he used (namely, that adopted by the court) “is the ordinary meaning, and thus my opinions applied this meaning and are unchanged.”  In response, Valve filed a motion to strike the portions of the testimony that relief on the plain and ordinary meaning of the term for, inter alia, failing to apply the construction agreed-upon by the parties that was used by the court.  Thereafter, Valve filed a motion for summary judgment of non-infringement arguing that, for the accused video games to meet the CE limitation, the user device cannot be the CE network that presents a character, object, or scene to the user interface, and that Valve’s servers are not “character-enabled network sites.”  In response, Treehouse appeared to concede that Valve was entitled to summary judgment to the extent Valve’s motion to strike was granted.  The district court granted both motions and found that Treehouse failed to offer admissible evidence showing that Valve’s video games operated the CE limitation.

 

With regard to the motion strike, the Federal Circuit affirmed the order granting the motion because the district court did not abuse its discretion. “We affirm that the grant of a motion to strike expert testimony is not improper when such testimony is based on a claim construction that is materially different from the construction adopted by the parties and the court. When the court has adopted a construction that the parties requested and agreed upon, any expert theory that does not rely upon that agreed-upon construction is suspect. Here, [Treetop’s expert’s] report undisputedly applied the ‘plain and ordinary meaning’ of the CE limitation, not the parties’ agreed-upon construction. Under these circumstances, Treehouse has failed to demonstrate that the district court abused its discretion by striking portions of [Treehouse’s expert’s] report that did not rely on the claim construction agreed to by the parties.”

 

Further, the Federal Circuit affirmed the order granting summary judgment of noninfringement because the district court did not abuse its discretion. “As a result of the district court properly striking portions of [Treehouse’s expert’s] testimony, Treehouse did not provide admissible evidence to support that the accused video games satisfy the CE limitation. On the other hand, Valve provided significant evidence that Valve’s servers do not satisfy the CE limitation . . . We agree that, in the absence of [Treehouse’s expert’s] testimony, Treehouse has not presented evidence that creates a genuine issue of material fact regarding infringement. We affirm the district court’s judgment.”

 

Following Treehouse v. Valve, parties should be very mindful of using the Court’s claim constructions, not any variations thereof.  That a claim construction might be legally incorrect should be dealt with on appeal, not during the pendency of the underlying litigation.  The consequences of using a claim construction different from that ordered by the Court can be significant, as was the case in Treehouse.