Atlas Global Technologies LLC v. TP-Link Technologies Co., Ltd.
2:21-cv-00430
| E.D. Tex. | Jul 28, 2023Background
- Atlas Global sued TP-Link (multiple corporate entities) for infringement of several U.S. patents covering Wi‑Fi 6 features; some originally‑pled patents were later dropped.
- Atlas’s infringement expert, Dr. Matthew Shoemake (Ph.D. in electrical engineering; 27 years’ industry experience; involvement in IEEE 802.11), opined on direct and indirect infringement by TP‑Link.
- Dr. Shoemake concluded TP‑Link directly infringes by offering Accused Products for sale in the U.S. (website control) and by importing products (invoices with U.S. ship‑to addresses).
- He also opined TP‑Link indirectly infringes, alleging knowledge of the patents and intent to induce, citing letters, service of process, infringement contentions, marketing materials, shipments, and other corporate documents.
- Defendants moved to exclude portions of Dr. Shoemake’s report (direct infringement opinions, opinions as to Defendants’ knowledge/intent for indirect infringement, and paragraphs that incorporate “all the evidence”), arguing lack of expertise, Rule 26 deficiencies, and impermissible legal/ultimate‑issue testimony.
- The court denied exclusion of the direct infringement and incorporation opinions but granted‑in‑part: Dr. Shoemake may not testify as to Defendants’ knowledge or intent (ultimate mental‑state conclusions); he may testify about underlying facts that bear on state of mind.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of direct‑infringement opinions (offers for sale, importation) | Shoemake’s technical background lets him analyze website, invoices and conclude direct infringement | Lacks legal expertise on "offer for sale" and importation; invades jury province | Admissible: methodology and factual bases satisfy Rule 702; substance is for cross‑exam and jury resolution |
| Admissibility of indirect‑infringement opinions (knowledge and intent) | May rely on documentary and circumstantial evidence to opine that defendants knew and intended to induce | Expert improperly states ultimate legal conclusions about defendants’ mental state | Granted‑in‑part: expert may present underlying facts and inferential analysis but is precluded from testifying as to defendants’ actual knowledge or intent (ultimate legal conclusion) |
| Incorporation of prior paragraphs/evidence by reference in report (Rule 26) | The report separately analyzes each limitation and identifies relied‑upon evidence; incorporation is explanatory | Indiscriminate "incorporate all evidence" practice conceals bases and violates Rule 26 | Denied: report is detailed (751 pages), cites supporting evidence, and differs from cases striking such incorporation |
| Expert testimony on ultimate issues (legal conclusions) | Expert may explain technical facts that inform legal issues | Experts cannot answer ultimate jury questions about state of mind or legal conclusions | Court excluded only opinions that state the defendants’ knowledge/intent as ultimate conclusions; otherwise allowed factual and technical testimony |
Key Cases Cited
- Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) (trial judge gatekeeper for expert admissibility under Rule 702)
- Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999) (Daubert flexibility applies to all expert testimony)
- Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632 (2015) (knowledge of patent is required for induced and contributory infringement)
- Global‑Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (willful blindness can satisfy knowledge requirement for inducement)
- Bio‑Rad Laboratories, Inc. v. Int'l Trade Comm'n, 998 F.3d 1320 (Fed. Cir. 2021) (elements of induced infringement: underlying direct infringement, knowledge, and specific intent)
- Duncan Parking Technologies, Inc. v. IPS Group, Inc., 914 F.3d 1347 (Fed. Cir. 2019) (two‑step infringement analysis: claim construction then infringement)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction is a question of law)
- Micro Chemical, Inc. v. Lextron, Inc., 317 F.3d 1387 (Fed. Cir. 2003) (conflicting expert facts are for the factfinder; Daubert is not a substitute for cross‑examination)
- Spreadsheet Automation Corp. v. Microsoft Corp., 587 F. Supp. 2d 794 (E.D. Tex. 2007) (experts should not render impermissible legal conclusions)