United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE.
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.
Telephone Device/Normal Portable Telephone
repeatedly opines, in reference to the
preambles 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.
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
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.
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.
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 ...