Defendants' motion to strike the report of plaintiff's inequitable conduct expert was granted to the extent the report addressed "the duty of candor and good faith to the USPTO." "Defendants argue this testimony should not be admitted because [the expert] 'made his own materiality determinations' even though he is not qualified as a person of ordinary skill in the art. . . . [A]t trial, even if [the expert] stated he based his opinions upon the opinions of Dr. Smith (who is one skilled in this art), [the expert's] extensive testimony regarding the prior art and materiality would necessarily require some level of expertise of one skilled in the art. By admitting the testimony of [the expert] on these issues, this Court could run afoul of the Federal Circuit’s mandate in [Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008)] that 'where an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art.'"
Advanced Technology Incubator, Inc. v. Sharp Corporation et al., 5-09-cv-00135 (TXED March 22, 2010, Order) (Bryant, M.J.)