Published on:

District Court Excludes Plaintiff’s Infringement Expert for Conflict of Interest

Mobile Telecommunications Technologies, LLC (“Mobile”) filed a patent infringement action against LG Electronics Mobilecomm U.S.A. (“LG”). As trial approached, LG filed a motion to disqualify Mobile’s infringement expert, Dr. Bims, on the grounds of conflict of interest arising from his retention by LG to serve as its expert in connection with two ITC proceedings in 2011-2012.

LG asserted that the ITC proceedings related to the same products accused by Mobile in this case. Mobile responded by arguing that Dr. Bims’ contract with LG expired in February 2015, before his retention by Mobile in March 2015 and that the subject of his work during the ITC proceedings did not relate to his current work for Mobile in this case.

The district court began its analysis by explaining that “[a]s set out by the Fifth Circuit in Koch Refining Co. v. Boudreaux, 85 F.3d 1178, 1181 (5th Cir. 1996), in order to disqualify an expert witness, the moving party must show that it had an objectively reasonable basis for a confidential relationship with the expert, and that confidential information relevant to the instant case was disclosed to the expert during that prior relationship.”

The district court explained that “[b]oth sides agree that Defendant had a confidential relationship with Bims. Both sides also agree that Bims obtained confidential information during that retention. Indeed, the evidence shows that Bims met repeatedly with Defendant’s counsel and discussed strategy, and that he examined the lawyers’ notes about the cases. Bims was paid more than $30,000 for his work, showing that it was not a simple consultation.”

The dispute therefore was focused on whether the prior work was relevant to the current case. The district court also noted that “the parties agree that the same devices accused in this case were accused in the earlier matter. Furthermore, the time frames are nearly overlapping. Plaintiff has not been able to show that the issues do not also overlap. Furthermore, Defendant objected within days of learning of Bims’ involvement in this case and was diligent in seeking disqualification. Finally, Plaintiff has not presented any statement from Bims explaining why his prior work is not relevant to the current case.”

These facts “heavily influenced” the district court and the district court granted the motion to disqualify.

Mobile Telecommunications Technologies, LLC v. LG Electronics Mobilecomm U.S.A., Case No. 2:13-CV-947-RG-RSP (E.D. Tex. July 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or