Summary
This memorandum opinion and order addresses a defendant's motion to disqualify the plaintiff's technical expert, Dr. Matthew Shoemake, based on his prior consulting engagements with Samsung. Applying the Fifth Circuit's two-step test for expert disqualification, the court evaluates whether a confidential relationship existed and whether relevant confidential or privileged information was disclosed. The court concludes that while a confidential relationship existed, Samsung failed to provide specific evidence that Dr. Shoemake received litigation strategy or other confidential information relevant to the pending patent infringement claims. Accordingly, the court denies the motion to disqualify the expert.
Topics
Practice areas
Questions Presented
- Whether the expert Dr. Matthew Shoemake should be disqualified under the two‑step Koch test.
Holdings
- The motion to disqualify Dr. Shoemake was denied because Samsung failed to satisfy both prongs of the Koch test; the alleged confidential technical information, deposition transcripts, claim chart, and litigation‑strategy discussions were not sufficient to constitute disqualifying confidential information.
Key quotations
“Accordingly, the confidential technical information cited by Samsung cannot disqualify Dr. Shoemake.” (at 85 F.3d at 1182)
“The “general overlap” in subject matter between the ’313 and ’436 Patents happened too long ago and is too attenuated to disqualify Dr. Shoemake.” (at 2024 WL 4609702 at *1)
Factual background
Plaintiff hired Dr. Matthew Shoemake as its technical expert. Samsung had previously retained Dr. Shoemake in 2020 to evaluate alleged infringement of three Samsung patents and again in 2021 for an ITC investigation, during which he reviewed confidential technical information and deposition transcripts.
Procedural history
Plaintiff filed suit on April 26, 2024 alleging infringement of four patents. Defendants moved to disqualify Plaintiff's expert, Dr. Matthew Shoemake, asserting a confidential relationship and disclosure of confidential information from prior engagements. The court considered the motion and denied it.