United States District Court, E.D. Texas, Marshall Division
PAYNE, UNITED STATES MAGISTRATE JUDGE.
the Court is Ericsson's Motion to Disqualify Two Sol
Technical Experts (Dkt. No. 241), which came on for hearing
before the undersigned on December 4, 2019. The motion seeks
to disqualify two experts retained by Plaintiff (Dr. Robert
Akl and Mr. Robert Tidwell) based on confidential information
they both allegedly obtained while working for Ericsson on a
case against Ericsson in the District of Minnesota and on
inter partes review proceedings before the PTAB.
out by the Fifth Circuit in Koch Refining Co. v.
Boudreaux, 85 F.3d 1178, 1181 (5th Cir. 1996), in order
to disqualify an expert witness, the moving party must show
that it had an objectively reasonable basis for a
confidential relationship with the expert, and that
confidential information relevant to the instant case was
disclosed to the expert during that prior relationship. It is
not disputed that Ericsson had such a relationship with Dr.
Akl. Ericsson represents, and Plaintiff has not rebutted,
that “Dr. Akl has billed Ericsson $150, 000 for work in
2016 and 2017 related to non-infringement, invalidity, and
non-infringing alternatives for the same Ericsson products
accused of infringement in this case, and for patents
allegedly covering the same or closely related technical
standards Sol points to here.” (Dkt. No.241 at 1).
Ericsson also represents that Dr. Akl worked directly with
its engineers and lawyers on numerous confidential matters.
The Court has observed that Dr. Akl's curriculum vitae
lists 4 extensive projects undertaken by him for Ericsson in
the wireless communications field (Dkt. No. 241-4), and
Ericsson represents that it has been billed more than $900,
000 for his work. (Dkt. No. 241-1).
does not argue that the work performed by Dr. Akl previously
for Ericsson, and the confidential materials reviewed
therewith, are not relevant to this case. Instead, it argues
that those matters are not relevant to the work that
Plaintiff has assigned to Dr. Akl in this case: reviewing
prior art references in connection with the invalidity
defenses asserted by Defendants. Ericsson disputes this
claim, arguing that Dr. Akl's knowledge of its systems
and strategies will inevitably impact Plaintiff's
positions on validity. While the Court tends to credit
Ericsson's position on this issue, it is not the central
issue. Dr. Akl's extensive work for Ericsson, on the same
accused products as this case, on patents rooted in very
closely related technology, and so close in time that some of
it is still ongoing, makes him off limits to Plaintiff.
points to the ruling of this Court in Lake Cherokee Hard
Drive Technologies, LLC v. Bass Computers, Inc., C.A.
2:10-cv-216 (E.D.Tex. March 5, 2012), where the Court
disqualified an expert retained by the plaintiff who had
extensive confidential knowledge from his long employment
with the defendant. The Court nonetheless allowed plaintiff
to consult with the expert “on issues relating to claim
construction and validity.” But that was because the
expert was the named inventor on both of the patents-in-suit,
and therefore had unique first hand knowledge. Plaintiff can
make no such showing here. It concedes that it has numerous
experts working even on the prior art issue. At the hearing,
Plaintiff advised the Court that it was not seeking any
schedule relief in the event of Dr. Akl's
disqualification. Dr. Akl was only retained earlier this
year, and Plaintiff was informed of Ericsson's objections
as soon as it sought consent to give him access to
confidential discovery materials under the protective order.
the Court need not reach the issue, there are also serious
questions concerning whether Dr. Akl's contract with
Ericsson's counsel regarding his role as an expert in the
IPR proceedings, which are ongoing, prevents him from being a
witness against Ericsson in this case. (Dkt. No. 265-2
foregoing reasons, the motion to disqualify Dr. Akl from any
further work as an expert on behalf of Plaintiff in this
matter is granted.
issues regarding Mr. Tidwell are very different. Ericsson
consulted with Mr. Tidwell, who had been a graduate assistant
of Dr. Akl, to get a proposal regarding computer simulations
of certain possible non-infringing alternatives being
considered in the Minnesota case against Ericsson.
Ericsson's counsel exchanged some emails with Tidwell
(which the Court has reviewed in camera) and had one
or more telephone conferences regarding the scope of the
work, but the Minnesota case was stayed pending the IPR
proceedings before any engagements were signed or any work
was done. Ericsson never paid Tidwell for any work on that
matter. There has been no credible showing that Tidwell was
provided with any confidential material relevant to this
litigation. Accordingly, the motion to disqualify Mr. Robert
Tidwell is denied.
conclusion, Ericsson's Motion to Disqualify Two Sol
Technical Experts (Dkt. No. 241) is GRANTED as to Dr. Robert