Background
Smart RF Inc. sued AT&T Mobility LLC, Cellco Partnership d/b/a Verizon Wireless, and T-Mobile USA in the Eastern District of Texas, alleging infringement of four cellular networking technology patents: U.S. Patent Nos. 8,078,561; 8,767,857; 9,641,204; and 10,958,296. The patents relate to smart radio frequency management in cellular networks. With trial approaching, both sides filed motions to exclude the opposing party’s expert witnesses under Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).
Magistrate Judge Roy S. Payne, handling pre-trial matters under the Local Patent Rules of E.D. Texas, issued three memorandum orders between June 30 and July 3, 2026 addressing Smart RF’s challenges to the defendants’ three expert witnesses.
The Court’s Holding
Order 1 (June 30, 2026 — Doc. 314): Damages Expert Lauren Kindler — DENIED
Smart RF moved to exclude Lauren Kindler, the defendants’ damages expert, arguing that her comparable-license analysis was methodologically unsound. Specifically, Smart RF challenged her reliance on the Dali–Ericsson settlement agreement and the Xilinx–Nokia transaction as comparable licenses for calculating a reasonable royalty.
Judge Payne denied the motion. The court held that assigning portfolio-wide settlement values to technically comparable patents is a recognized methodology under Federal Circuit precedent, and that an expert may use patent settlements as a starting point for a reasonable royalty analysis when the expert adequately accounts for the differences between the license being valued and the comparable transactions. Kindler’s methodology for isolating the value attributable to the asserted patents survived Daubert scrutiny, leaving the weight of her opinions to the jury.
Order 2 (July 2, 2026 — Doc. 321): Non-Infringing Alternatives Expert Dr. David Ricketts — DENIED IN PART
Smart RF sought to exclude Dr. David Ricketts, who opined on available non-infringing alternatives (NIAs) to the patented technology. Smart RF raised three grounds: (1) improper reliance on hearsay; (2) unsound commercial-embodiments analysis; and (3) untimely disclosure of certain NIA opinions in his rebuttal report.
Judge Payne largely denied the motion. The court found that an expert’s reliance on hearsay is permissible under FRE 703 when experts in the field reasonably rely on similar information, and that Ricketts’ commercial-embodiments analysis was legally sound. However, the court agreed with Smart RF on one narrow point: NIA opinions that appeared for the first time in Ricketts’ rebuttal report — without prior disclosure in his opening report — were excluded as untimely under the Local Patent Rules’ expert disclosure schedule. The bulk of Ricketts’ NIA testimony will be available at trial.
Order 3 (July 3, 2026 — Doc. 322): Invalidity Expert James Proctor — GRANTED IN PART / DENIED IN PART
Smart RF moved to exclude portions of James Proctor’s invalidity expert report. The court granted the motion in two respects: (1) Proctor’s written-description and enablement opinions in specific paragraphs (¶¶ 981–982, 991, 1188–1189, 1196–1198) were stricken as untimely — they were not disclosed in his opening report and appeared only in his rebuttal; and (2) certain anticipation theories disclosed for the first time in paragraphs 29–32 of the rebuttal report were similarly excluded for non-compliance with Local Patent Rule 3-3’s invalidity contentions disclosure requirements. The remainder of Proctor’s invalidity opinions survived and will be heard at trial.
Key Takeaways
- Comparable licenses from different negotiations can support reasonable royalties. The court’s endorsement of the Dali–Ericsson settlement and Xilinx–Nokia transaction as comparable licenses confirms that E.D. Texas courts will permit expert apportionment from portfolio-level settlements when the expert demonstrates technical comparability and adjusts appropriately for differences.
- Rebuttal-report ambush gets policed. Two out of three expert challenges partially succeeded on the same ground: opinions disclosed for the first time in a rebuttal report, without prior notice in opening disclosures, will be excluded. This pattern — appearing in both the NIA (Doc. 321) and invalidity (Doc. 322) orders — reflects strict E.D. Texas enforcement of Local Patent Rule expert disclosure obligations.
- Hearsay reliance is permissible under FRE 703. The court reiterated that an expert may rely on out-of-court information (including technical documents or industry data not independently admissible) as long as experts in the field reasonably rely on similar materials, even in a patent trial context.
- Timing matters more than correctness. The partially excluded opinions were not rejected for being substantively wrong — the court excluded them solely because they were disclosed too late. Defendants’ experts should front-load all anticipated invalidity theories and NIA opinions in their opening reports, not save arguments for the rebuttal round.
Why It Matters
The Eastern District of Texas remains one of the most active patent litigation venues in the country, and Magistrate Judge Payne’s three-order cluster offers a snapshot of how the court applies the Daubert framework to the most common categories of expert testimony in patent trials: damages (reasonable royalty), invalidity (anticipation and written description), and technology alternatives. The paired exclusions for rebuttal-only disclosures in two of the three orders send a clear signal to litigants: E.D. Texas Local Patent Rules mean what they say, and late-breaking expert opinions — even if substantively sound — will be cut.
For companies on either side of a patent dispute in this jurisdiction, the lesson is consistent: disclose early, disclose completely, and assume the opponent will move to strike anything that surfaces only in reply. Practitioners advising clients on patent litigation strategy in E.D. Texas should build comprehensive expert reports at the opening stage, treating the rebuttal phase as a place to respond to the other side’s theories — not introduce new ones.