Page 1 of 8

IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

SE-KURE CONTROLS, INC., )

 )

Plaintiff, )

) No. 02 C 3767

v. )

) Judge Wayne R. Andersen

VANGUARD PRODUCTS GROUP, INC., ) Magistrate Judge Susan E. Cox

and TELEFONIX, INC., )

)

Defendants. )

MEMORANDUM OPINION AND ORDER

Susan E. Cox, Magistrate Judge

The matter before the Court is a motion to disqualify defendants’ patent expert, brought by

Plaintiff Se-Kure Controls, Inc. (“Se-Kure”). Specifically, Se-Kure moves the Court to disqualify

George Gerstman, the patent expert for both Defendants Vanguard Products Group (“Vanguard”)

and Telefonix Inc. (“Telefonix”) (collectively referred to as “Defendants”). Defendants retained Mr.

Gerstman as the patent law expert to opine on patent procedure and the question of inequitable

conduct. Se-Kure argues Mr. Gerstman’s expert report lacks specialized knowledge or training on

the fact questions at issue and should, thus, be stricken and Mr. Gerstman barred from testifying.

The motion is denied, with noted limitations by the Court on the scope of Mr. Gerstman’s testimony

[dkt 214]. 

I. The Patent-In-Suit

The ‘590 Patent is a “reissue” of U.S. Patent No. 5,552,771 (“the ‘771 Patent”), which

originally issued in 1996. The ‘590 Patent is for a retractable sensor assembly for use with an alarm
Page 2 of 8

system to prevent theft of products while, at the same time, eliminating the problem of entangled

cords. These alarm systems are typical in most retail stores to allow consumers to pick-up and view

hand-held electronic devices, such as cameras and cell phones, while preventing the theft of those

devices. The system involves an alarm box that plugs into the wall and a splitter box that plugs into

the alarm box. A retractable cable plugs into the splitter box and the opposite end has a sensor that

is attached to a product. If the sensor is removed, an alarm is activated. The retractable cable is on

a retraction mechanism, also called a “recoiler” or “retractor.” The recoiler allows the cable to be

withdrawn as the customer handles the product and retracts the cable back into the recoiler when the

customer is done. 

II. Background

In 2002 Se-Kure filed this lawsuit against multiple defendants alleging infringement of U.S.

Patent No. RE 37590 (“the ‘590 Patent”). All but two of the original defendants have settled with

Se-Kure. The remaining two Defendants, Telefonix and Vanguard, are related. Telefonix

manufactures and supplies to Vanguard the sensor-bearing “electrical retractor” component of the

product at issue. Telefonix’s President, Paul Burke, is also a co-owner of Vanguard. Telefonix and

Vanguard, thus, share the same counsel and defenses in the case. Both Defendants claim the ‘590

Patent is unenforceable because of alleged inequitable conduct before the United States Patent and

Trademark Office (“PTO”) by Se-Kure. 

In late 1996, after the ‘771 Patent issued, Se-Kure claims it learned that Defendant Telefonix

was supplying another company with power cord retractors that had been converted to retail-security

assemblies for integration into a merchandiser’s alarm system. Se-Kure also asserts Telefonix was

marking those products with its own telephone handset patent numbers. The telephone handset, or
Page 3 of 8

telephone retractor devices, are patented by Telefonix and identified as Burke, U.S. Patent No.

5,094,396 and Burke, U.S. Patent No. 4,989,805 (collectively referred to as “the Burke Patents”).

Se-Kure contends it knew of these telephone retractor devices (and the Burke Patents) back in May

1996, but had dismissed them as irrelevant because they were not related to sensors, alarm systems,

or retail security. 

With this knew knowledge of the security assemblies, however, Se-Kure took action and

discussed the Burke Patents with its patent counsel. It was at this time Se-Kure claims it realized

that Claim 11 of the ‘771 Patent, already issued, could be deemed relevant to the Burke Patents.

Accordingly, in February 1997 Se-Kure surrended the ‘771 Patent to the PTO for reissue. In the

reissue declaration, Se-Kure described the events of the prior months, noting that while they had

been aware of the Burke Patents (i.e., the prior art cord reels for telephone handsets), they had not

considered those prior art references until they saw what they deemed “several infringers” place

notice of the Burke Patents on certain alarm assemblies. 

The reissue declaration to the PTO explains that Se-Kure’s error was use of imprecise

language when describing the continuous electrical path and a failure on the part of the inventors

to recognize how the previous language might be read. The reissue declaration further provides that

Se-Kure believes the ‘771 Patent is partly inoperative or invalid by reason of claiming both more

and less than they had a right to claim. All specified errors in the reissue declaration Se-Kure claims

arose without any deceptive invention on their part. 

III. Discussion

Se-Kure argues that according to his expert report, Mr. Gerstman intends to render opinions

on patent law, the Court’s exclusive province, and fact questions that should be left to the trier of
1

Molins PLC v. Textron, Inc.,, 48 F.3d 1172, 1178 (Fed.Cir.1995). 

2

37 C.F.R. § 1.56(a). 

3

FMC Corp. v. Manitowoc Co., Inc., 835 F.2d 1411, 1415 (Fed.Cir. 1987). 

4

Refac Int’l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1581 (Fed.Cir. 1996).

5

Revlon Consumer Prod. Corp. v. L’Oreal S.A., 1997 WL 158281, *1 (D.Del.).

Page 4 of 8

fact. Specifically, Mr. Gerstman’s report describes the United States Patent System, procedure

within the PTO, and how Se-Kure allegedly intentionally withheld material prior art, thereby

rendering the ‘771 the ‘590 Patents unenforeable. 

A. Inequitable Conduct

The Federal Circuit Court of Appeals defines inequitable conduct as an “affirmative

misrepresentation of a material fact, failure to disclose material information, or submission of false

material information, coupled with an intent to deceive.”1

 There is a “duty of candor and good faith”

on the part of an applicant that includes the “duty to disclose to the Patent Office all information

known ... to be material to patentability.”2 Thus, to be guilty of inequitable conduct due to a “failure

to disclose” a party must offer clear and convincing proof of: (1) prior art or information that is

material; (2) knowledge of that prior art and its materiality chargeable to the applicant; (3) the

applicant’s intent to mislead the PTO by failing to disclose the prior art or information.3

 For

information to be material there must a “substantial likelihood that a reasonable examiner would

have considered the information important in deciding whether to allow the applicant to issue as a

patent.”4 It is up to the district court to weigh the findings of materiality and intent to determine

whether inequitable conduct was committed.5

 
6

Fed. R. Evid. 702.

7

See Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354, 1358 (2006). 

8

Good Sheperd Manor Foundation, Inc. v. City of Momence, 323 F.3d 557 (7th Cir. 2003). 

9

Endress + Houser, Inc. v. Hawk Measurement Sys. Pty., Ltd.., 122 F.3d 1040, 1042 (Fed.Cir. 1997). 

10Liquid Dynamics Corp. v. Vaughan Co., Inc., No. 01-6934, 2004 WL 2260626 (N.D. Ill. Oct. 1, 2004).

Page 5 of 8

B. Expert Testimony

In this case Defendants assert Mr. Gerstman’s testimony as to inequitable conduct will assist

the trier of fact and is, thus, admissible under Federal Rule of Evidence 702: 

If scientific, technical, or other specialized knowledge will assist the trier of fact to

understand the evidence or to determine a fact in issue, a witness qualified as an expert by

knowledge, skill, experience, training, or education, may testify thereto in the form of an

opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the

testimony is the product of reliable principles and methods, and (3) the witness has applied

the principles and methods reliably to the facts of the case.6

The law of the Seventh Circuit Court of Appeals governs this motion, as opposed to the law

of the Federal Circuit, because the admission of expert testimony is a procedural matter not unique

to patent law.7

 Whether to admit expert testimony is determined by the district court and, as

provided for by Rule 702, testimony may be excluded if the testimony will not assist the trier of fact

or is not sufficiently reliable. Also inadmissable is expert testimony as to legal conclusions that will

determine the outcome of the case.8 Nonetheless, the district court has “wide latitude in the kinds

of aids, including testimony of witnesses, employed to assist in the job of claim interpretation as a

matter of law.”9 Further, a patent lawyer may testify in a patent suit and any lack of technical

expertise merely goes to the weight of the expert’s testimony, not its admissibility.10 The court has

discretion to adopt an expert legal opinion as its own, find guidance from it, to ignore it, or to
11Markman v. Westview, 52 F.3d 967, 983 (Fed.Cir. 1995)(holding that legal experts’ opinions do not bind

the court or relieve the court of its obligation to construe a patent because the patent attorney’s construction of the

claims is entitled to no deference) .

12See Bausch & Lomb, Inc. v. Alcon Laboratories, Inc., 79 F.Supp.2d 252, 255 (W.D.N.Y. 2000)(finding

that testimony concerning general patent application procedures may be helpful to the jury). 

Page 6 of 8

exclude it entirely.11

Attempts by Mr. Gerstman, for example, to testify as to whether the ‘590 Patent is

enforceable, whether Se-Kure committed inequitable conduct, or as to the level of intent behind any

alleged failures to disclose prior art, is all inadmissable testimony. It is a basic principle that the

duty of the district court is to explain the law. Testimony by a witness, therefore, is limited to

opinions based on facts, but may not include legal conclusions. Mr. Gerstman’s statements that he

expects to testify about Se-Kure’s failure to comply with its duty of disclosure, resulting in equitable

conduct, is simply inadmissable. Mr. Gerstman is also not a mind-reader. He may not testify that

he knows Se-Kure’s intent to hide certain information nor may he testify that he knows Se-Kure lied

about certain information. Also inadmissible are Mr. Gerstman’s long explanations of rules and legal

definitions. 

Mr. Gerstman is permitted to testify about general procedures involved in the patent

application process and the operations and functions of the PTO. This type of testimony can be

helpful to the fact-finder.12 As an attorney with 40 years experience in patent law and as a former

United States Patent Examiner, Mr. Gerstman is also likely able to provide some factual context for

why Se-Kure’s behavior may have been inequitable, but only in the narrow context that he is able

to testify as to the materiality of the relevant prior art. If Mr. Gerstman can shed light on what a

reasonable examiner would have considered important, his testimony is admissible. Should his

testimony stray “into matters that are the exclusive purview of the court,” such testimony must be
13Armament Sys. & procedures, Inc. v. IQ Hong Kong Ltd., et al., No 00-1257, 2007 WL 1267877 (E.D.

Wis.)(holding that the motion to exclude the expert’s testimony was denied). 

14Liquid Dynamics Corp., No. 01-6934, 2004 WL 2260626 at *7. 

15See THK Am., Inc. v. NSK, Ltd. & NSK Corp., No. 90-6049, 1996 WL 33398071 (N.D. Ill Jan. 9,

1996)(finding that separation of jury issues from those decided by the court, namely inequitable conduct, is

warranted); see also Agfa Corp. v. Creo Prod., Inc., 451 F.3d 1366, 1375 (Fed.Cir. 2006)(holding inequitable

conduct is an equitable defense “that may be adjudicated by the trial court without a jury.”). 

Page 7 of 8

curtailed.13 

Se-Kure finally disputes Mr. Gerstman’s reliance on facts that Se-Kure argues are fabricated.

Se-Kure claims, for example, Mr. Gerstman’s reference to a certain Montgomery Wards Kit sold

in 1992 is incorrect because there only exists invoices for a sale of these alarm kits in late 1993. As

stated by Defendants, any factual disputes should be resolved through cross examination. Such

discrepancies do not warrant altogether barring Mr. Gerstman’s testimony. 

The Court notes that evidence of inequitable conduct is effectively evidence of fraud.14

Because there exists a danger that such evidence could prejudice issues before the jury, Mr.

Gertsman’s testimony should be heard by the Court, outside the purview of the jury. As Defendants

point out, because inequitable conduct is an issue decided by the court, there is no concern of unduly

influencing the jury if the expert testimony on this subject is tried outside the presence of the jury.15
Page 8 of 8

IV. Conclusion

Se-Kure’s motion to disqualify Defendants’ patent expert, Mr. Gerstman, is denied with

certain limitations on the scope of Mr. Gerstman’s testimony noted by the Court. Further status set

for February 27, 2008 at 9:30a.m. 

IT IS SO ORDERED

ENTERED: January 17, 2008 _____________________________________

UNITED STATES MAGISTRATE JUDGE