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Salazar v. HTC Corp.

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

April 27, 2018

JOE ANDREW SALAZAR, Plaintiff,
v.
HTC CORPORATION, Defendants.

          MEMORANDUM OPINION AND ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE.

         Defendant HTC Corporation moves to exclude certain testimony of Oded Gottesman, Plaintiff's invalidity expert, based on his purportedly incorrect application of law. HTC's Motion to Exclude [Dkt. # 157]. Specifically, HTC contends Gottesman's opinions concerning three claim terms should be excluded based on his improper analysis. The Court will GRANT the motion IN PART.

         1. Telephone Device/Normal Portable Telephone

         Gottesman repeatedly opines, in reference to the preambles[1] of the asserted claims, that “Goldstein does not disclose a ‘communications' system in the form of a telephonic device as disclosed and claimed [by] the '467 Patent or any form of ‘normal portable telephone' as opined by Wolfe.” See, e.g., Gottesman Rebuttal Rep. [Dkt. # 157-2] ¶¶ 16, 53, 71. HTC contends this improperly imports limitations into the claims. Def.'s Motion [Dkt. # 157] at 2-3. Salazar responds that HTC's expert, Dr. Andrew Wolfe, characterizes Goldstein as teaching a “normal portable phone” and Gottesman simply rebuts that characterization. Pl.'s Opp'n [Dkt. # 175] at 3-4.

         The question is whether Gottesman's report (1) concerns his opinion based on his expertise about the meaning of “communications system, ” which is permissible, or (2) construes the term to have a different meaning based on the '467 Patent's intrinsic record, which is not permissible (since it would be claim construction reserved for the Court). Here, Gottesman did the latter by, for example, opining on the meaning of the term based on the specification:

I believe the telephonic device is a term that is explained in the specifications. So when I read the claim and try to understand what -- what it means and I read a prior art and try to understand whether that is disclosing the claim, I have to understand what the person of ordinary skill in the art would understand the claim to mean and to look at the specification, understand that.
And based on the specification that referred to telephonic device, my understanding is that the communications, command and control in the sensing device in Claim 1 refers to a type of telephonic device, and my understanding was that a normal portable telephone does not have that capability.

Gottesman Dep. (Feb. 19, 2018) [Dkt. # 175-3] at 19:8-21 (emphasis added).

It is my understanding [that “communications system” requires this claim to have a telephonic device]. It's not merely reading it. It is my understanding based on reading the claim and reading the specifications that the preamble referred to a telephonic device or a form of telephonic device. The term “telephony” or “telephonic device” appears in the specification when it describe embodiments that are consistent with that claim.

Id. at 20:5-12 (emphasis added). In other words, Gottesman has interpreted “communications system”-based on his review of the specification, and not on its plain meaning within the art-to require a telephonic device. Such an interpretation is impermissible claim construction, and the Court will therefore grant this part of Defendant's motion.

         2. Sensing System

         With reference to Claim 1's preamble, Gottesman opines “[t]he touchscreen, keypad, microphone, and/or opto-detector disclosed in Goldstein is not a disclosure or teaching of a sensor coupled to a microprocessor for detecting and measuring physical phenomena, physical indications, physical phenomena corresponding to a user, or a physical phenomena measure in response to a user's skin contact as claimed in claims 23, 29-32.” See, e.g., Gottesman Rebuttal Rep. [Dkt. # 157-2] ¶¶ 36, 53, 71. He makes similar contentions regarding two other references, Thompson and Simon. Id. ¶¶ 158-59, 176-77, 198-99, 221-22, 241-42. HTC argues this imports these limitations from dependent claims into Claim 1. Def.'s Motion [Dkt. # 157] at 3. Salazar contends Gottesman simply rebuts Wolfe's characterization of the “sensing system.” Pl.'s Opp'n [Dkt. # 175] at 5-7.

         The Court will grant this part of the motion because Gottesman construes the claim language, which is evident from his deposition. For example, when questioned about why he thought Claim 1 required a microprocessor, Gottesman testified:

I looked at the claim. I looked at other claims, and I looked at the specification to understand, and I ...

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