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District Court Strikes Expert Opinion Testimony on Patent Subject Matter Eligibility Under Section 101

Defendants Metaswitch Networks Ltd and Metaswitch Networks Corp. (“Metaswitch”) filed a motion to strike plaintiff’s expert opinions of Mr. Lanning, including his opinions that the patents in suit claim patent-eligible subject matter under 35 U.S.C. § 101.

In analyzing the motion to strike, the district court noted that “[t]he ultimate question of patent eligibility under § 101 is an issue of law.” BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig. v. Ambry Genetics Corp., 774 F.3d 755, 759 (Fed. Cir. 2014). Therefore, the district court stated that “the issue of subject matter eligibility under § 101 will not be tried to the jury in this case. No expert will be permitted to testify to the jury about whether the asserted patents claim eligible subject matter under § 101.”

The district court further explained that the court “is responsible for deciding disputed questions of law, and the Federal Circuit has consistently disfavored reliance on expert testimony as the basis for legal conclusions. Cf. Markman v. Westview Instruments, Inc., 52 F.3d 967, 991 n.4 (Fed. Cir. 1995) (‘[a] patent law expert’s opinion on the ultimate legal conclusion is neither required nor indeed ‘evidence’ at all’) (citations omitted); Avia Group Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988) (‘an expert’s opinion on the legal conclusion of obviousness is neither necessary nor controlling’).

As a result, the district court determined that “Mr. Lanning’s analysis of the law and his ultimate legal conclusions are not helpful expert testimony and are therefore inadmissible. To the extent expert testimony is helpful when deciding a question of law such as subject matter eligibility, its utility is limited to supplying background facts about the nature of the art and the patents (similar to expert testimony in the context of claim construction, another question of law). The Court has already considered the issue of subject matter eligibility for two patents, the ‘210 Patent and the ‘561 patent. The Court did not accord any significant weight to expert testimony when making this determination because the Court had already acquired sufficient familiarity with the subject matter of these patents during the claim construction process. To the extent subject matter eligibility issues remain to be decided in this case, the Court expects to rely on Mr. Lanning’s opinions very little, if at all.”

Accordingly, the district court granted the motion to strike the testimony on subject matter patent eligibility.

Genband US LLC v. Metaswitch Networks Corp., Case No. 2:14-cv-33-JRG-RSP (E.D. Tex. Jan. 2016)

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