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Inc. v. Alcatel-Lucent USA, Inc.

United States District Court, E.D. Texas, Tyler Division

September 21, 2017

NETWORK-1 TECHNOLOGIES, INC.
v.
ALCATEL-LUCENT USA, INC., ET AL.

          ORDER

          K. NICOLE MITCHELL, UNITED STATES MAGISTRATE JUDGE.

         Before 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.[1] The Court held hearings in this case on June 1, 2017. The Motion is GRANTED-IN-PART and DENIED-IN-PART.

         BACKGROUND

         Network-1 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.

         Defendants 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, 13-20.

         Network-1 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.

         Doll's 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.

         During 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.

         APPLICABLE LAW

         Inequitable Conduct

         “Applicants 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. 2006).

         A party 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)).

         The 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).

         Expert Testimony

         Federal 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.

         “Under 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 1360.

         DISCUSSION

         I. Materiality of Defendants' Broadening Contentions

         Defendants 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.

         Defendants 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.

         Defendants 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 ...


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