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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

ASUS TECHNOLOGY LICENSING 

INC. AND CELERITY IP, LLC,

 Plaintiffs,

v.

AT&T CORP., AT&T MOBILITY 

LLC, AT&T MOBILITY II LLC, 

AT&T SERVICES INC., T- MOBILE 

USA, INC., AND CELLCO 

PARTNERSHIP D/B/A VERIZON 

WIRELESS,

 Defendant.

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CASE NO. 2:23-CV-00486-JRG-RSP

(LEAD CASE)

MEMORANDUM ORDER

Before the Court is Plaintiff’s Motion to Disqualify Experts Ms. Johanna Dwyer and Mr. 

Paul Carpenter. (Dkt. No. 127.) On August 30, 2024, the Court heard arguments on this motion. 

For the reasons provided below, the motion is GRANTED and Ms. Johanna Dwyer and Mr. Paul 

Carpenter are disqualified from further participation as experts in this case.

In determining whether an expert should be disqualified, the Court asks two questions:

First, was it objectively reasonable for the first party who claims to have retained 

the expert to conclude that a confidential relationship existed?

Second, was any confidential or privileged information disclosed by the first party 

to the expert?

Koch Ref. Co. v. Jennifer L. Boudreau M/V, 85 F.3d 1178, 1181 (5th Cir. 1996). “Only if the 

answers to both questions are affirmative should the witness be disqualified.” Id. The Court 

finds both questions should be answered in the affirmative in this case. 

Both experts and their company, QipWorks, were engaged by plaintiff to perform pre-suit 

analysis on the infringement of plaintiff’s portfolio of patents. Over the course of this

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undertaking, the parties agree Ms. Dwyer and Mr. Carpenter reviewed confidential materials of 

the plaintiffs, including claim charts prepared by plaintiff. 

As part of these discussions the experts informed plaintiffs that they would not be adverse 

to Ericsson, an intervenor in this case. To effect this, the experts analyzed the user equipment 

claims but not the base station claims of the patents. The experts also declare they did not 

provide any FRAND, licensing, or IP portfolio management, strategy, analysis, or policy 

services. Plaintiff argues this is a red-herring in light of the experts’ receipt of confidential 

information related to the asserted patents and claims.

Some seven weeks prior to the filing of this action, the experts terminated their 

engagement with plaintiffs and later began an engagement with defendants several months after 

the filing of the complaint. Upon disclosure, plaintiff brought this motion.

The Court finds that this is a clear case. It was objectively reasonable for plaintiffs to 

conclude that a confidential relationship existed. Plaintiffs retained the experts for prelitigation/licensing investigation. This is well understood to involve confidentiality as it often 

relates to litigation strategy. Likewise, it is clear the experts received confidential or privileged 

information from plaintiffs. Plaintiffs provided infringement charts--a statement of how plaintiffs 

believe another party might infringe their patents--generally prepared in anticipation of litigation 

by or at the direction of attorneys.

While the experts did provide notice of their intention “not to be adverse to Ericsson,”

this was reasonably understood by Plaintiffs to mean that the experts would not work for 

Plaintiffs in litigation against Ericsson. It did not provide notice to Plaintiffs that the experts 

would work for Ericsson against Plaintiffs. The experts still opined for plaintiffs on subject 

matter closely related to what they would opine upon for defendants, and received confidential 

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information relating to these opinions. Limiting their work to not include base stations but to 

include the claims of the same patent directed to customer equipment does not mitigate the harm 

to plaintiffs. Likewise, expressing the intention to avoid being adverse to another party is not a 

reservation that they might be adverse to plaintiffs. 

Therefore, the Court ORDERS Ms. Dwyer and Mr. Carpenter are disqualified from 

further participation as experts in this case.

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