Network-1 Technologies, Inc v. Alcatel-Lucent USA Inc. et al

Filing 959

ORDER granting in part and denying in part 817 Motion to Exclude an Opinion and the Testimony of Juniper's Technical Expert Dr. Cameron H. G. Wright. Plaintiff's Motion to Exclude is accordingly granted as to the above-italicized portions of the opinions on page 24 of Dr. Wrights November 30, 2016 Declaration. Signed by Magistrate Judge K. Nicole Mitchell on 9/12/2017. (rlf)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
NETWORK-1 TECHNOLOGIES, INC.

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

v.

ALCATEL-LUCENT USA, INC., ET AL.

ORDER
Before the Court is Network-1 Technologies, Inc.’s Motion to Exclude an Opinion and the
Testimony of Juniper’s Technical Expert Dr. Cameron H. G. Wright. Doc. No. 817. The Court
held a hearing on this Motion on June 19, 2017. The Motion is GRANTED-IN-PART.
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 is titled “Apparatus and Method
for Remotely Powering Access Equipment Over a 10/100 Switched Ethernet Network.” See ‘930
Patent.
The ‘930 Patent discloses, for example:
delivering a low level current from the main power source to the access
device over the data signaling pair, sensing a voltage level on the data
signaling pair in response to the low level current, and controlling power
supplied by the secondary power source to the access device in response to
a preselected condition of the voltage level.
Id. at 2:8–14.

The remaining Defendants in this case are Hewlett Packard Enterprise Company, Hewlett-Packard Company (“HP
Defendants” or “HPE Defendants”) and Juniper Networks, Inc. (“Juniper”). The only relevant Defendant to this
Motion is Juniper.
1

1

A disclosed embodiment describes using a fixed voltage drop associated with a “resistive
termination” to identify equipment that cannot receive remote power. Id. at 3:2–11 (“If a fixed
voltage level is detected then the remote equipment contains a dc resistive termination . . . , and
this equipment is identified as unable to support remote power feed.”).
Dr. Cameron H. G. Wright (“Dr. Wright”), Juniper’s technical expert, generally opines that
Juniper does not infringe the ‘930 Patent.
APPLICABLE LAW
Daubert Motion
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)).

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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).

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“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
calculating a 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) (citing Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996)).

“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).
“A court may not, for instance, compare the accused product with a preferred embodiment
described in the patent or with a commercial embodiment of the patented invention.” Id. (citing
Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861, 867 (Fed. Cir. 1985); SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985)).

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“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) (citing In re Maxim Integrated
Products, Inc., No. 12-945, 2015 WL 5311264, at *4 (W.D. Pa. Sept. 11, 2015)). To this end,
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 reference whatsoever 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); 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).

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DISCUSSION
The disputed portion of Dr. Wright’s Report is as follows:
I further note that determining whether a connected device can accept power
over Ethernet by delivering a current to a connected device and observing
(and making the determination entirely upon) the resulting voltage is
fundamentally different from determining whether a connected device can
accept power over Ethernet by calculating the termination resistance at the
remote end of the Ethernet cable by calculating the ratio of observed voltage
and current pairs. Under Ohm’s law, resistance equals voltage divided by
current, and the calculation of the termination resistance in this way is the
only method the 802.3af and 802.3at Standards specify specifies [sic] that
equipment should use to determine whether a connected device can accept
power over Ethernet. This differs in a most fundamental way from making
the determination based only on an observed voltage, as described in the
‘930 patent. Indeed, the ‘930 patent clearly states that any equipment
presenting a resistive termination would be classified as unable to accept
power. However, all modern Ethernet equipment that can accept power
over Ethernet is designed to present a resistive termination. Therefore,
following the method described in the ‘930 Patent would result in never
being able to properly detect if a device can accept power over Ethernet.
Doc. No. 817, Ex. 1, Nov. 30, 2016 Wright Decl. at 24 (emphasis added) (footnote omitted).2
Plaintiff argues that Dr. Wright improperly compares the accused products to the preferred
embodiments disclosed in the specification of the ‘930 Patent. Doc. No. 817 at 4. In particular,
Plaintiff argues that the claims do not require that a fixed voltage drop must indicate an inability
to accept remote power. Id. Plaintiff emphasizes that the claim construction in the present case
cites a Daubert ruling in Cisco3 that rejected limiting the “preselected condition” to being a fixed
voltage drop, no voltage drop, or a varying voltage drop. Id.

2

As support for the entire disputed paragraph, Dr. Wright relies on a description of the preferred embodiment. Doc.
No. 817, Ex. 1, Nov. 30, 2016 Wright Decl. at 24 n.122. This description of the preferred embodiment states: “If a
fixed voltage level is detected then the remote equipment contains a dc resistive termination (a ‘bob smith’ is typical
for Ethernet terminations), and this equipment is identified as unable to support remote power feed.” ‘930 Patent at
3:7–11.
3
Network-1 Sec. Solutions, Inc. v. Cisco Sys., Inc., No. 6:08-CV-30, Doc. No. 475 at 4–6, 8 (E.D. Tex. June 30,
2010).

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Juniper responds that Dr. Wright merely confirms that the description of the preferred
embodiment in the ‘930 Patent is consistent with his non-infringement arguments. Doc. No. 840
at 1–2. Moreover, Juniper contends that Dr. Wright does not provide this confirmation to the
exclusion of opining on the claims, nor does Dr. Wright assert that the patent is limited to this
embodiment. Id.
For support, Juniper relies on, for example, SSL Services, LLC v. Citrix Systems, Inc. Id.
at 2 n.4. However, in SSL Services, the defendant’s expert relied upon claim language rather than
the preferred embodiment:
On cross-examination, Citrix’s expert testified that Figure 3 is “a preferred
embodiment of the invention, yes.” . . . Citrix’s expert also testified that it
would be improper to predicate an infringement opinion based on a
comparison of Figure 3 and the accused products. . . . Citrix’s expert even
explained ‘that’s why I continually tie it back to the claim language, and
that’s why we had the claim on the board.” . . .
940 F. Supp. 2d at 492 (citations omitted), aff’d, 769 F.3d 1073 (Fed. Cir. 2014). The court noted
that the “expert’s testimony regarding the preferred embodiments amounted to nothing more than
an effort to educate the jury about the teachings of the . . . Patent” and that “the jury was presented
with substantial evidence and testimony to show that Figure 3 was only a preferred embodiment
and that infringement was determined by analyzing the claims and not the preferred
embodiments.” Id.
By contrast, the above-italicized portions of the disputed opinion go beyond merely
educating the jury about the teachings of the ‘930 Patent. Instead, Dr. Wright directly compares
the accused instrumentalities with an embodiment disclosed in the ‘930 Patent, which is
impermissible. Doc. No. 817, Ex. 1 at 24 (“This differs in a most fundamental way from making
the determination based only on an observed voltage, as described in the ‘930 Patent. Indeed, the
‘930 Patent clearly states that any equipment presenting a resistive termination would be classified
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as unable to accept power.”) (emphasis added) (relying on the ‘930 Patent at 3:7–11, a description
of the preferred embodiment). See, e.g., EMC Corp., 2016 WL 775742, at *4 (“Testimony that
embodiments in a patent specification support an expert’s opinions regarding the plain and
ordinary meaning of claim terms would amount to claim construction and suggest that literal
infringement can be established by a comparison between accused products and specification
embodiments.”); SRI Int’l, 775 F.2d at 1121 (“If everything in the specification were required to
be read into the claims, or if structural claims were to be limited to devices operated precisely as a
specification-described embodiment is operated, there would be no need for claims. . . . It is the
claims that measure the invention.”).
Regarding the above non-italicized portions of Dr. Wright’s opinion, the Court does not
exclude them as impermissibly comparing the accused products to the preferred embodiment. In
the non-italicized portions, Dr. Wright opines that using a resulting voltage level is fundamentally
different from determining a termination resistance. This has not been shown to be impermissible
because claim 6 of the ‘930 Patent, for example, expressly recites “sensing a voltage level” and
acting “in response to a preselected condition of said voltage level.” ‘930 Patent at Cl. 6. The
problem arises where Dr. Wright relies upon the disclosed embodiment. That is, in the aboveitalicized portions, Dr. Wright improperly implies that the claimed invention is limited not just by
the claim language, but also by the disclosed embodiment.
CONCLUSION
The above-italicized portions of Dr. Wright’s opinions that impermissibly compare the
accused instrumentalities to an embodiment disclosed in the ‘930 Patent, rather than to the claims,
are therefore excluded under Rule 702. Plaintiff’s Motion to Exclude is accordingly granted as to

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the above-italicized portions of the opinions on page 24 of Dr. Wright’s November 30, 2016
Declaration.
For the foregoing reasons, Plaintiff’s Motion to Exclude an Opinion and the Testimony of
Juniper’s Technical Expert Dr. Cameron H. G. Wright (Doc. No. 817) is GRANTED-IN-PART,
as set forth above.

So ORDERED and SIGNED this 12th day of September, 2017.

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