Alacritech Inc. v. CenturyLink, Inc.

Filing 882

MEMORANDUM ORDER - granting in part 626 . Signed by Magistrate Judge Roy S. Payne on 10/10/2023. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ALACRITECH INC.,

§
§
§
§
§
§
§
§
§

Plaintiff,
v.
CENTURYLINK, INC. et al,
Defendants.

CIVIL ACTION NO. 2:16-CV-00693-RWS-RSP
(LEAD CASE)

MEMORANDUM ORDER
Before the Court is Alacritech Inc.’s Motion to Exclude the Expert Opinions and
Testimony of Dr. Stephen B. Wicker. Dkt. No. 626. Defendant Dell and Intervenor Intel opposed
the motion in the form of a response, Dkt. No. 696, and a sur-reply, Dkt. No. 755. Plaintiff filed a
reply in support of the Motion, Dkt. No. 713. After consideration of the briefing and the record,
the Motion is GRANTED IN PART.
I.

BACKGROUND

On June 30, 2016, Plaintiff Alacritech Inc. filed suit against Defendants CenturyLink, Inc.,
Tier 3, Inc., Savvis Communications Corp., CenturyLink Communications LLC, Cyxtera
Communications, LLC, Winston Corporation, Wiwynn Corporation, SMS InfoComm
Corporation, and Dell Inc. alleging certain server products and methods infringe eight of
Alacritech’s patents. 1 Intel Corporation intervened in this case on November 21, 2016, and
Cavium, Inc. intervened on February 14, 2017, both asserting that their products were implicated
in the infringement allegations. Dkt. No. 84 (Intel); Dkt. No. 127 (Cavium).

Defendants Winston Corporation, Wiwynn Corporation, and SMS InfoComm Corporation were consolidated for
pretrial from Case No. 2:16-CV-692-RWS-RSP, and Defendant Dell Inc. was consolidated for pretrial from Case
No. 2:16-CV-695-RWS-RSP.
1

1

This case proceeded through discovery and was stayed pending disposition of inter partes
review (IPR) proceedings that had been instituted by the Patent Trial and Appeal Board. Dkt.
No. 451. The PTAB invalidated multiple claims challenged in IPRs, Alacritech appealed that
decision, and the Court continued the stay pending resolution of the Federal Circuit appeal. Dkt.
No. 482. In 2022, following the appeal proceedings, Alacritech moved to lift the stay and proceed
with its case on the surviving patents and claims.
The Court lifted the stay and entered Docket Control Orders for the respective cases. See
Dkt. No. 786 (setting February 20, 2024 trial date for certain defendants in the 2:16-CV-693 and
2:16-CV-692 cases); 2:16-CV-00695-RWS-RSP, Dkt. No. 19 (setting October 16, 2023 trial date
for Dell). Now, Alacritech asserts claim 1 of U.S. Patent No. 7,124,205 (the “’205 Patent”), claims
17 and 22 of U.S. Patent No. 8,805,948 (the “’948 Patent”), and claim 41 of U.S. Patent No.
8,131,880 (the “’880 Patent”) (collectively, “Asserted Patents”) against Defendant Dell Inc. and
Intervenor Intel Corporation of the ’695 Member Case, and Defendants Winstron Corporation,
Wiwynn Corporation, SMS InfoComm Corporation of the ’692 Member Case. 2 See Dkt. No. 522
at 1.
Relevant to this Motion is the expert report filed by Dr. Stephen B. Wicker in support of
Defendant and Intervenor’s invalidity case. Dkt. No. 626-2. Within this report, Dr. Wicker
provides opinions on the invalidity of U.S. Patent Nos. 7,124,205, 7,237,036, 7,337,241,
7,673,072, 8,131,880, and 8,805,948. Id.
II.

LEGAL STANDARD

In a suit for patent infringement, a successful plaintiff is entitled to “damages adequate to
compensate for the infringement, but in no event less than a reasonable royalty for the use made

2

The other defendants and intervenor Cavium are no longer in the case or will soon be dismissed.

2

of the invention by the infringer, together with interest and costs as fixed by the court.” 35
U.S.C. § 284. An assessment of the reasonable royalty generally involves opinions by expert
witnesses.
An expert witness may provide opinion testimony 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.” FED. R. EVID. 702.
Rule 702 requires that judges act as gatekeepers to ensure “that an expert’s testimony both
rests on a reliable foundation and is relevant to the task at hand.” Daubert v. Merrell Dow
Pharmaceuticals, Inc., 509 U.S. 579 (1993). However, “[t]he inquiry envisioned by Rule 702 is ...
a flexible one.” Id. at 594; see also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 150
(1999) (“Daubert makes clear that the factors it mentions do not constitute a ‘definitive checklist
or test.’”). While the party offering the expert bears the burden of showing that the testimony is
reliable, it “need not prove to the judge that the expert’s testimony is correct....” Johnson v.
Arkema, Inc., 685 F.3d 452, 459 (5th Cir. 1999) (citing Moore v. Ashland Chem. Inc., 151 F.3d
269, 276 (5th Cir. 1998)). Ultimately, “the question of whether the expert is credible or the opinion
is correct is generally a question for the fact finder, not the court.” Summit 6, LLC v. Samsung
Elecs. Co., 802 F.3d 1283, 1296 (Fed. Cir. 2015) (citation omitted). “Vigorous cross-examination,
presentation of contrary evidence, and careful instruction on the burden of proof are the traditional
and appropriate means of attacking shaky but admissible evidence.” Daubert, 509 U.S. at
596 (citation omitted).

3

III.

ANALYSIS

A. Dr. Wicker’s Obviousness-Type Double Patenting Opinion
Plaintiff contends that Dr. Wicker’s expert report opines “the law restricts the ability of
patent applicants to get multiple patents on the same invention, by restricting claims in different
patents that are obvious in view of each other.” Dkt. No. 626 at 7 (quoting Ex. 1 ¶ 143). Plaintiff
asserts that this opinion is flawed since the ’054 Patent relied upon in the opinion was filed and
issued after the asserted patents. Id. at 8-9. In response, Dell and Intel represent that “Dr. Wicker
will not rely on the ’054 Patent at trial as a reference for obviousness-type double patenting” and
assert that Plaintiff’s request should be denied as moot. Dkt. No. 696 at 6. In reply, Plaintiff asserts
that striking the opinion would be proper since “it no longer has any relevance to any claim or
defense in this case.” Dkt. No. 713 at 2 n.1.
Due to Dell’s and Intel’s representations that they will not rely on the ’054 Patent at trial,
the Court finds that this issue is moot.
B. Dr. Wicker’s Derivation Opinion
Plaintiff contends that Dr. Wicker’s opinions regarding derivation are no longer being
asserted in this case. Dkt. No. 626 at 9. 3 On this basis, Plaintiff asserts all of Section XVI of Dr.
Wicker’s report should be stricken. Id. Dell and Intel respond that live issues persist in Section
XVI. Dkt. No. 696 at 6-7. Dell and Intel assert that portions of Section XVI are relevant to rebut
willful infringement, rebut Alacritech’s attempts to argue inventorship of the RSC technology, to
help establish the state of the prior art, and for damages. Dkt. No. 696 at 7. Specifically, Dell and

Plaintiff represents that a stipulation regarding these opinions was discussed, quoting an email sent by opposing
counsel. Dkt. No. 626 at 9 n.5. Dell and Intel represent that Plaintiff’s characterization of an offered stipulation is
accurate. Dkt. No. 696 at 7. However, the record does not reflect such a stipulation, nor is there any indication an
explicit agreement was reached regarding the derivation opinions. Accordingly, the Court proceeds with analyzing
the remainder of the dispute provided by the parties.

3

4

Intel assert that Subsection A and B of Section XVI are still relevant to provide context for
technologies still asserted in this case. Dkt. No. 755 at 4. Contesting relevance, Plaintiff replies
that without the derivation defense Dell and Intel should “not be able to intimate at trial that
Alacritech learned of the accused technology from Intel (or any other party).” Dkt. No. 713 at 2.
Further, Plaintiff asserts that derivation opinions of the receive-side technology, based on patents
no longer in suit, are not relevant for willfulness, prior invention, state of the prior art, or damages
purposes. Id. at 3.
The Court finds that all of Section XVI was clearly represented as addressing a derivation
defense. Now that the defense has unequivocally been withdrawn, the entire section is moot and
Dr. Wicker will not be permitted to repackage Subsections A and B as addressing other issues in
the case. Opinions untethered from issues to be decided by the jury are neither helpful nor
permitted by Rule 26(a)(2). Accordingly, Section XVI is stricken and shall not form the basis for
testimony by Dr. Wicker.
C. Dr. Wicker’s Written Description and Enablement Opinions
Plaintiff asserts that Dr. Wicker’s written description and enablement opinions are flawed
because they are “completely untethered to the claim language of the asserted claims” and based
on rejected claim constructions. Dkt. No. 626 at 10. Plaintiff contends that Dr. Wicker’s analysis
reads in an additional “context passing” element not supported by the patent or the claim
construction. Id. at 10-11. Next, Plaintiff contends that Dr. Wicker errs in opining based on the
reliability of the methods disclosed in Plaintiff’s 1997 provisional patent. Id. at 11-12. Dell and
Intel respond that Dr. Wickers application of “context passing” and “fast-path processing” are
within the application of the plain language of the claim construction. Dkt. No. 696 at 8-9. Dell

5

and Intel argue that differing applications of the facts to the claim constructions are left to the jury
to resolve. Id. at 9, 10.
Previously, this Court construed “fast-path processing” finding that the patentee defined
the term to include that “the host may do some—little—transport and network layer processing”
and construing the term to mean “a mode of operation in which the protocol stack of the host
computer performs little or no network layer or transport layer processing.” Dkt. No. 362 15-16,
21, 23 (adopted by Dkt. No. 843). Further, the Court construed “context” to mean “information
summarizing various features of the connection.” Id. at 33.
Having reviewed the briefing and Dr. Wicker’s report, the Court finds that the report is not
in conflict with the previous constructions of “context” and “fast-path processing.” What is
disputed is the application of the claims and construed terms to the facts. While disagreement may
persist regarding whether the claims are present in the accused technology, that is a question
reserved for the jury. Further, disagreements with the results of Dr. Wicker’s application can be
addressed properly through vigorous cross-examination.
For enablement, Plaintiff asserts that Dr. Wicker’s opinion is flawed by limiting the scope
of the claims in the 1997 Provisional to “specific operating environment or use cases.” Dkt. No.
626 at 12. Further, Plaintiff asserts that Dr. Wicker is advancing a “full scope of enablement
opinion” without addressing claim language or the Wands factors. Id. at 12-13. Dell and Intel
respond that due to Plaintiff’s contentions regarding the coverage of the claims, Dr. Wicker is
permitted to rebut the assertions by explaining that the 1997 Provisional does not enable the
asserted scope. Dkt. No. 696 at 10. Defendant contends that Dr. Wicker’s report correctly describes
the requirements for enablement pursuant to 35 U.S.C. § 112 with discussion of the Wands factors.

6

Dkt. No. 696 at 11 (referencing 626-2). Dell and Intel again conclude by asserting that the proper
course for disagreement regarding the analysis is cross examination. Dkt. No. 696 at 12.
First, the Court is unconvinced that Dr. Wicker improperly applied the legal standard,
including use of the Wands factors, as Plaintiff contends. See Dkt. No. 626-3 ¶¶ 50-53, 663, 665,
671, 718-20, 692, 695, 188, 682, 689, 722, 723. Second, Plaintiff’s various positions that the
opinions should be struck for not analyzing claim language are unpersuasive and inapposite to
what is contained in the expert report. Finally, the Court finds that what is disputed is a factual
dispute as to what the 1997 Provisional teaches. Those disagreements can be properly addressed
through competing testimony and cross examination.
D. Dr. Wicker’s Opinions Regarding the “Intel Zero Copy” and “Connery
Systems”
Plaintiff asserts that the “Intel Zero Copy” and “Connery” systems were not identified in
the invalidity contentions and Dr. Wicker’s opinions should be precluded due to disclosure
violations of the local patent rules. Dkt. No. 626 at 14. Dell and Intel respond by contending that
since they have represented that the systems will not be relied upon for invalidity purposes at trial,
Plaintiff’s arguments are moot. Dkt. No. 696; see Dkt. No. 834. Dell and Intel also assert that Dr.
Wicker should be allowed to rely on the systems for non-invalidity purposes. Dkt. No. 696 at 13.
Dell and Intel further contend that any prejudice suffered through “late disclosures” and purported
violations of the local patent rules are predicated on the information’s use as invalidating prior art
systems. Dkt. No. 696 at 13-17.
First, given the joining of Dell to Intel’s responses, the portion of Dell’s response regarding
relying on the Connery system as invalidating prior art is moot. See Dkt. No. 696 at 17; Dkt. No.
834. Second, the Court finds that Plaintiff’s arguments related to the local rules regarding

7

disclosure of invalidity contentions are inapplicable here where the systems are not being asserted
.
as invalidating prior art. See P.R. 3-3 & 3-4. Third, regarding use of the systems for purposes other
than invalidity contentions, the Court heard argument at the recent pre-trial conference,
specifically in discussion of Alacritech’s Motion in limine No. 2. See Dkt. No. 859; Dkt. No. 842.
For the reasons addressed at the hearing and memorialized in the Order (Dkt. No. 876), the Court
finds that the systems can be relied on for other purposes other than invalidity.
IV.

CONCLUSION

For the reasons discussed above, Plaintiff Alacritech Inc.’s Motion to Exclude the Expert
Opinions and Testimony of Dr. Stephen B. Wicker is GRANTED IN PART as set forth above.
SIGNED this 3rd day of January, 2012.
SIGNED this 10th day of October, 2023.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

8