Motorola Inc v. Vtech Communications, Inc. et al, No. 5:07-cv-00171 (E.D. Tex. Sept. 5, 2008)

The Court is considering the appointment of Mr. Richard Egan of O’Keefe, Egan, & Peterman, & Enders LLP, of Austin, Texas as a technical advisor to the Court. Techsearch, L.L.C. v. Intel Corporation, 286 F.3d 1360 (Fed. Cir. 2002); Reilly v. United States, 863 F. 2d 149 (2d Cir. 1988). The Court finds that this case is an exceptional one under the standards set forth in the Federal Circuit’s Techsearch decision. By this Order, the Court endeavors to provide a fair and open procedure to the parties for the selection of a technical advisor. Given Mr. Egan’s background and qualifications, the Court is satisfied that his appointment pursuant to the terms of this Order would assist the Court in this case. The Court therefore proposes his appointment.

To assist the Court, Mr. Egan would examine the patents in suit, the pertinent briefs, and any evidence submitted in the claim construction process with an eye toward tutoring the Court in the technology involved in the patents; assisting the Court in the preparation of the Report and Recommendation construing the claims; and acting as a sounding board for the Court. This will enable the Court to place the legal questions of claim construction in context given the technology at issue. Moreover, the Court may call upon Mr. Egan’s expertise in the technology at issue should discrete issues arise before or after the claim construction process. He will not contribute evidence,2 but will be limited to assisting the Court in the manner described above.

Mr. Egan has determined that no conflicts of interest would preclude his acceptance of this appointment. The Court will permit the parties to lodge any objections to this appointment within five (5) days from the date of entry of this Order. Such objections may be filed under seal and in camera.