United States District Court, E.D. Texas, Tyler Division
NETWORK-1 TECHNOLOGIES, INC.
ALCATEL-LUCENT USA, INC., ET AL.
NICOLE MITCHELL, UNITED STATES MAGISTRATE JUDGE.
the Court is Hewlett-Packard Company, Hewlett Packard
Enterprise Company, Axis Communications, Inc., and Axis
Communications AB's (“Defendants”) Motion to
Strike Certain Portions of John Doll's Expert Report and
Testimony. Doc. No. 807. The Court held hearings in this case on
June 1, 2017. The Motion is GRANTED-IN-PART
Technologies, Inc. (“Network-1” or
“Plaintiff”) filed the above-captioned suit on
September 15, 2011, alleging infringement of the U.S. Patent
No. 6, 218, 930 (“the ‘930 Patent”). In
July 2012, a request for ex parte reexamination was
filed. Control No. 90/012, 401 (the ‘401
reexamination”). Doc. No. 609 at 3. In response to the
rejections of challenged claims 6, 8, and 9, Network-1 filed
an Amendment and Reply, and added new claims 10-23 to the
‘930 Patent. Id. The ‘930 Patent was
subject to a subsequent ex parte reexamination.
Control No. 90/013, 333 (“the ‘444
reexamination”). Doc. No. 609 at 4.
respond to Plaintiff's infringement allegations by
arguing that Network-1 has engaged in inequitable conduct
before the United States Patent and Trademark Office
(“USPTO” or “PTO”). Specifically,
Defendants argue that during the pendency of the ‘444
reexamination, Network-1 failed to include Defendants'
contentions-that Network-1's addition of new claims 10-23
during the ‘401 reexamination-improperly broadened the
scope of the ‘930 Patent (Defendants' broadening
contentions). See Doc. No. 807, Ex. 3, Nov. 22, 2016
Expert Report of John Doll (“Doll Report”) at 11,
counters this defense with testimony from its patent law
expert, John Doll. In his report, Doll provides testimony on
PTO rules, practices, and procedures, and certain issues
relevant to Defendants' allegations of inequitable
conduct. See generally Doll Report. Defendants move
to strike certain portions of Doll's expert testimony.
See generally Doc. No. 807.
Qualifications include a master of science degree in Physical
Chemistry and a bachelor of science degree in Chemistry and
Physics. Doll Report at 1. He started at the USPTO as a
patent examiner in September 1974, and by 2009, was promoted
to Acting Under Secretary and Acting Director of the USPTO.
Id. at 3-4. As Acting Under Secretary, Doll advised
the President, the Secretary of Commerce, and the
Administration on all intellectual property matters.
Id. at ¶ 13.
his time at the PTO, Doll examined and supervised thousands
of patent applications, including several reexaminations.
Id. at ¶ 14. In October of 2009, after
thirty-five years at the PTO, Doll retired. Id. at
¶ 15. Doll is now self-employed as a consultant on USPTO
practice and procedure. Id. at ¶ 18.
for patents have a duty to prosecute patents in the PTO with
candor and good faith, including a duty to disclose
information known to the applicants to be material to
patentability.” Aventis Pharma S.A. v. Amphastar
Pharm., Inc., 176 F.App'x 117, 119 (Fed. Cir. 2006)
(citation and internal quotation marks omitted). See
37 C.F.R. § 1.56(a) (2015) (explaining that a party
appearing before the USPTO has “a duty to disclose . .
. all information known to that individual to be material to
patentability.”). A breach of this duty may constitute
inequitable conduct and render a patent unenforceable.
Therasense, Inc. v. Becton, Dickinson & Co., 649
F.3d 1276, 1285 (Fed. Cir. 2011) (en banc); Ferring B.V.
v. Barr Labs., Inc., 437 F.3d 1181, 1186 (Fed. Cir.
asserting inequitable conduct as a defense must prove by
“clear and convincing evidence that the alleged
nondisclosure or misrepresentation occurred, that the
nondisclosure or misrepresentation was material, and that the
patent applicant acted with the intent to deceive the United
States Patent and Trademark Office.” Honeywell
Int'l Inc. v. Universal Avionics Sys. Corp., 488
F.3d 982, 999 (Fed. Cir. 2007) (citing Glaxo, Inc. v.
Novopharm Ltd., 52 F.3d 1043, 1048 (Fed. Cir. 1995)).
Federal Circuit has recognized at least five tests (stemming
from case law and the Code of Federal Regulations) for
materiality: (1) the objective “but-for”
standard, under which the misrepresentation is so material
that the patent should not have issued; (2) the subjective
“but-for” test, under which the misrepresentation
is material because it actually caused the examiner to
approve the patent application, when he would not otherwise
have done so; (3) the “but it may have” standard,
under which the misrepresentation is material because it may
have influenced the parent [sic] examiner in the course of
prosecution; (4) the “reasonable examiner” test,
under which information is material if there is a substantial
likelihood that a reasonable examiner would consider it
important in deciding whether to allow the application to
issue as a patent; and (5) the “cumulative”
standard, under which information is material when it is not
cumulative to information already of record or being made of
record in the application. Digital Control, Inc. v.
Charles Mach. Works, 437 F.3d 1309, 1315 (Fed. Cir.
2006) (citations and internal quotation marks omitted).
Rule of Evidence 702 provides that:
[i]f scientific, technical, or other specialized knowledge
will assist the trier of fact to understand the evidence or
to determine a fact in issue, a witness qualified as an
expert by knowledge, skill, training, or education may
testify thereto in the form of an opinion or otherwise, if
(1) the testimony is based upon sufficient facts or data, (2)
the testimony is the product of reliable principles and
methods, and (3) the witness has applied the principles and
methods reliably to the facts.
Daubert v. Merrell Dow Pharmaceuticals, Inc. . . .,
and Rule 702, courts are charged with a ‘gatekeeping
role, ' the objective of which is to ensure that expert
testimony admitted into evidence is both reliable and
relevant.” Sundance, Inc. v. DeMonte Fabricating
Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008) (citation
omitted). See also Kumho Tire Co. v. Carmichael, 526
U.S. 137, 149 (1999) (holding that Rule 702 applies not only
to “scientific” testimony, but to all expert
testimony). “Patent cases, like all other cases, are
governed by Rule 702.” Sundance, 550 F.3d at
Materiality of Defendants' Broadening
first seek to exclude the portions of Doll's Report where
Doll opines on “[t]he ‘materiality' of
Defendants' broadening contentions for purposes of
assessing patentability.” Doc. No. 807 at 3. In these
disputed portions, Doll explains that Network-1 did not need
to disclose the Defendants' broadening contentions to the
PTO because they were not material to information already
considered by the PTO. Doll Report at ¶ 49.
argue that these opinions are impermissible because Doll, as
a patent law expert, and as a non-technical expert, is not
one of ordinary skill in the art of the ‘930 patent,
and is therefore not qualified to opine on the materiality of
Defendants' broadening contentions. Doc. No. 807 at 2-3.
Plaintiff responds that these opinions do not derive from
technical knowledge about Power over Ethernet (PoE)
technology or the scope of the claims, but rather, from
Doll's familiarity with patent office rules and practice.
Doc. No. 838 at 3-4.
rely on Sundance for the proposition that because
Doll is not qualified as a technical expert, his opinions on
materiality should be excluded. Doc. No. 807 at 3 (citing 550
F.3d 1356, 1364 (Fed. Cir. 2008)). Defendants' reliance
on Sundance is misplaced because the challenged
opinions in Sundance concerned technical issues such
as infringement and invalidity, not materiality. See
Sundance, 550 F.3d at 1363 (“We hold that it is an
abuse of discretion to permit a witness to testify as an