ASUS v. AT&T — Court disqualified two defense experts who had received plaintiffs’ confidential patent analysis

Reported / Citable

Background

ASUS Technology Licensing Inc. and Celerity IP, LLC moved to disqualify Johanna Dwyer and Paul Carpenter from serving as experts for the defendants. Before the lawsuit, the plaintiffs had retained the experts and their company, QipWorks, to analyze potential infringement of the plaintiffs’ patent portfolio.

During that engagement, Dwyer and Carpenter reviewed confidential materials, including infringement claim charts prepared by the plaintiffs. The experts ended their engagement approximately seven weeks before the lawsuit was filed and, several months after the complaint was filed, began working for the defendants. They had previously told the plaintiffs that they would not be adverse to Ericsson, an intervenor, and limited their earlier analysis to user-equipment claims rather than base-station claims.

The Court’s Holding

The court granted the plaintiffs’ motion and disqualified Dwyer and Carpenter from further participation as experts. Applying the Fifth Circuit’s two-part test, the court found both that the plaintiffs reasonably believed they had a confidential relationship with the experts and that the plaintiffs disclosed confidential or privileged information to them.

The court regarded the matter as a clear case for disqualification. It explained that pre-suit patent-infringement and licensing investigations commonly involve confidential litigation strategy and that infringement charts generally convey a patent owner’s anticipated litigation position. The experts’ statement that they would not be adverse to Ericsson did not reasonably notify the plaintiffs that they might later work for Ericsson against the plaintiffs, and limiting their prior work to claims involving customer equipment did not mitigate the conflict because their defense work concerned closely related subject matter.

Key Takeaways

• An expert may be disqualified when the retaining party reasonably understood the relationship to be confidential and shared confidential or privileged information with the expert.
• Pre-suit infringement analyses and attorney-directed claim charts can contain confidential litigation strategy sufficient to support disqualification.
• A limited statement that an expert will not be adverse to a particular third party does not reserve the right to work for that party against the expert’s original client.

Why It Matters

The order underscores the importance of conflict screening and clearly documented engagement terms when technical consultants examine patent claims before litigation. Experts who receive a prospective plaintiff’s confidential infringement theories may be barred from later assisting an opposing party on closely related issues, even if their original assignment covered only some claims or accused technologies.