Expert Testimony Concerning Mental Thought Processes of Examiner Excluded

The court granted defendants' motion to exclude the testimony of plaintiff's patent law expert regarding what a patent examiner would have done under different facts because it was unreliable speculation. "Defendants . . . seek to exclude portions of [the expert's] Report that discuss whether an examiner would have considered certain evidence, if presented, what an examiner would have done under an alternative set of facts, all as unreliable speculation. . . . In Barry v. Medtronic, the court excluded similar testimony under Rule 702: . . . '[the expert’s] resume fails to establish his education, training, or experience in the field of retroactive mind reading of the thoughts of patent examiners.' . . . Plaintiff’s argument that such opinions are supported by substantial evidence and reasoned analysis does not change the fact that they are intrinsically impermissible. [The expert] may not opine about the mental thought processes of a PTO examiner."

Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al, 6-11-cv-00492 (TXED September 21, 2017, Order) (Mitchell, MJ)