Network-1 Techs., Inc. v. Alcatel-Lucent United States, Inc.

• Decision Date: 13 September 2017
• Docket Number: CIVIL ACTION NO. 6:11-cv-492-RWS-KNM
• Parties: NETWORK-1 TECHNOLOGIES, INC. v. ALCATEL-LUCENT USA, INC., ET AL.
• Court: U.S. District Court — Eastern District of Texas

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

CIVIL ACTION NO. 6:11-cv-492-RWS-KNM

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION

September 13, 2017

ORDER

Before the Court is Defendants' Motion to Exclude Certain Opinions and Testimony of Dr. James Knox. Doc. No. 821. The Court held a hearing on this Motion on June 1, 2017. The Motion is DENIED.

BACKGROUND

Plaintiff Network-1 Technologies, Inc. ("Network-1") accuses Defendants¹ of infringing U.S. Patent No. 6,218,930 ("the '930 Patent"). The '930 Patent relates to an apparatus and method for remotely powering access equipment over a 10/100 switched Ethernet network. See '930 Patent.

On June 2, 2016, the Court held a claim construction hearing on the disputed terms of the '930 Patent. The Court subsequently construed "low level current" to mean "a non-data-signal current that is sufficient to begin start up of the access device but that is not sufficient to sustain the start up." Doc. No. 693 at 12.

Dr. Knox, Plaintiff's infringement expert, presents certain opinions regarding whether the Defendants' accused products infringe the asserted claims of the '930 Patent. Doc. No. 855, Ex. 3, Oct. 13, 2016 Expert Report of Dr. James M. Knox ("Knox's Report"). Defendants challenge these opinions under Daubert. Doc. No. 821.

APPLICABLE LAW

Daubert

Under Federal Rule of Evidence 702, a witness who is qualified as an expert by knowledge, skill, experience, training or education may testify in the form of an opinion or otherwise if: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.

The trial judge has a gate-keeping role to ensure that expert testimony is relevant and reliable. Daubert v. Merrill Dow Pharm., Inc., 509 U.S. 579 (1993). Indeed, "[t]he proponent [of the expert testimony] need not prove to the judge that the expert's testimony is correct, but she must prove by a preponderance of the evidence that the testimony is reliable." Moore v. Ashland Chemical, Inc., 151 F.3d 269, 276 (5th. Cir. 1998). "The reliability prong [of Daubert] mandates that expert opinion 'be grounded in the methods and procedures of science and . . . be more than unsupported speculation or subjective belief.'" Johnson v. Arkema, Inc., 685 F.3d 452, 459 (5th Cir. 2012) (quoting Curtis v. M & S Petroleum, Inc., 174 F.3d 661, 668 (5th Cir. 1999)).

Factors to consider in determining whether a proposed expert's methodology is scientifically valid or reliable are:

(1) whether the expert's theory can be or has been tested;

(2) whether the theory has been subject to peer review and publication;(3) the known or potential rate of error of the technique or theory when applied;

(4) the existence and maintenance of standards and controls; and

(5) the degree to which the technique or theory has been generally accepted in the scientific community.

See Daubert, 509 U.S. at 593-95. A court must decide whether the Daubert factors are appropriate, use them as a starting point, and then ascertain if other factors should be considered. Hathaway v. Bazany, 507 F.3d 312, 318 (5th Cir. 2007).

In Kumho Tire Company, Limited v. Carmichael, the Supreme Court applied the Daubert principles to technical or specialized expert testimony. 526 U.S. 137 (1999). The Court explained that the overarching goal of Daubert's gate-keeping requirement is to "ensure the reliability and relevancy of expert testimony. It is to make certain that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field." Id. at 152. A trial court has the discretion to exclude expert testimony if there is "simply too great an analytical gap" between the expert's reasoning and the conclusion. Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997).

"At base, 'the question of whether the expert is credible or the opinion is correct is generally a question for the fact finder, not the court.'" Eidos Display, LLC v. Chi Mei Innolux Corp., No. 6:11-cv-201-JRG, 2017 WL 1079441, at *2 (E.D. Tex. Mar. 22, 2017) (quoting Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1296 (Fed. Cir. 2015)). "Under Rule 702, the question is whether the expert relied on facts sufficiently related to the disputed issue." i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 856 (Fed. Cir. 2010), aff'd, 564 U.S. 91 (2011). "To properly carry this burden, the patentee must 'sufficiently [tie the expert testimony on damages] to the facts of the case.'" Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1315-16 (Fed. Cir. 2011) (citation omitted). "Questions about what facts are most relevant or reliable to calculatinga reasonable royalty are for the jury." i4i Ltd. P'ship, 598 F.3d at 856. "The jury [is] entitled to hear the expert testimony and decide for itself what to accept or reject." Id.

"Daubert and Rule 702 are safeguards against unreliable or irrelevant opinions, not guarantees of correctness." Id. at 854. Also, the "existence of other facts . . . does not mean that the facts used failed to meet the minimum standards of relevance or reliability." Id. at 855-56. For example, "any reasonable royalty analysis necessarily involves an element of approximation and uncertainty." Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009) (citation and internal quotation omitted).

Expert Opinion and Claim Construction

Under the infringement analysis, "the court first determines the meaning of disputed claim terms and then compares the accused device to the claims as construed." Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009) (citation omitted). "The infringement inquiry compares properly construed claims with the accused product or process." Atl. Thermoplastics Co., Inc. v. Faytex Corp., 974 F.2d 1299, 1300 (Fed. Cir. 1992) (citations omitted). An expert's infringement opinion must use "the claim construction adopted by the court." Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1183 (Fed. Cir. 2009) (citation omitted).

"Expert testimony regarding whether an accused device falls within the scope of a court's claim construction is appropriate and raises a factual issue for a jury to resolve." EMC Corp. v. Pure Storage, Inc., 154 F. Supp. 3d 81, 109 (D. Del. 2016) (citation omitted). Courts allow experts to testify regarding preferred embodiments to educate the jury about teachings of the patent itself. See EMC Corp. v. Pure Storage, Inc., No. 13-1985-RGA, 2016 WL 775742, at *4 (D. Del. Feb. 25, 2016) (ruling that the defendant's experts "are not precluded from making any referencewhatsoever to patent specifications and commercial embodiments"); see also SSL Servs., LLC v. Citrix Sys., Inc., 940 F. Supp. 2d 480, 492 (E.D. Tex. 2013) (denying motion for judgment as a matter of law and ruling that the defendant's "expert's testimony regarding the preferred embodiments amounted to nothing more than an effort to educate the jury about the teachings of the . . . patent"), aff'd, 769 F.3d 1073 (Fed. Cir. 2014).

However, "[e]xpert testimony based on an impermissible claim construction is properly excluded as irrelevant and on the basis that the evidence could confuse the jury. EMC Corp., 154 F. Supp. 3d at 109 (citing Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006)). See also Personalized User Model, L.L.P. v. Google Inc., No. 09-525-LPS, 2014 WL 807736, at *1-*2 (D. Del. Feb. 27, 2014) ("expert testimony inconsistent with the Court's claim construction is unreliable and unhelpful to the finder of fact" and should be excluded under the Daubert standard); Chicago Mercantile Exch., Inc. v. Tech. Research Group, LLC, 782 F. Supp. 2d 667, 673-74 (N.D. Ill. 2011); Am. Med. Sys., Inc. v. Laser Peripherals, LLC, 712 F. Supp. 2d 885, 900 (D. Minn. 2010); Callpod, Inc. v. GN Netcom, Inc., 703 F. Supp. 2d 815, 821-22 (N.D. Ill. 2010); Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009); CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed. Cir. 2005).

"No party may contradict the court's [claim] construction to a jury." Exergen, 575 F.3d at 1321. See also LP Mathews LLC v. Bath & Body Works, Inc., 458 F. Supp. 2d 198, 210 (D. Del. 2006).

Apportionment for Standard Essential Patents

Title 35, section 284 of the United States Code provides that "[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer. .. ." Under § 284, damages awarded for patent infringement "must reflect the value attributable to the infringing features of the product, and no more." Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014).

That "the patent holder should only be compensated for the approximate incremental benefit derived from his invention" is "particularly true for SEPs [(standard essential patents)]." Id. at 1232). As Ericsson explains:

When dealing with SEPs, there are two special apportionment issues that arise. First, the patented feature must be apportioned from all of the unpatented features reflected in the standard. Second, the patentee's royalty must be premised on the value of the patented feature, not any value added by the standard's adoption of the patented technology. These steps are necessary to ensure that the royalty award is based on the incremental value that the patented invention adds to the product, not any value added by the standardization of that technology.

Id.

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