realZOOM LLC v. L Brands, Inc. et al

MOTION to Strike Untimely Expert Disclosure of Steven Laff and Mark Ormston and Preclude Their Testimony

E.D. Tex.July 30, 2018

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION REALZOOM LLC, Plaintiff, v. L BRANDS, INC., and VICTORIA’S SECRET STORES, LLC, Defendants. Case No. 2:17-CV-00118-RWS LEAD CASE JURY TRIAL DEMANDED DEFENDANTS’ MOTION TO STRIKE THE UNTIMELY EXPERT DISCLOSURE OF STEVEN LAFF AND MARK ORMSTON AND PRECLUDE THEIR TESTIMONY Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 1 of 21 PageID #: 1429 i TABLE OF CONTENTS Page I. INTRODUCTION .............................................................................................................. 1 II. LEGAL STANDARDS ...................................................................................................... 2 A. Expert Witness Disclosures Must Be Made Pursuant to the Court’s Scheduling Order or Be Stricken ............................................................................ 2 B. Designation of Non-Retained Witnesses Requires Specificity as to Facts and Opinions ........................................................................................................... 3 C. A Non-Retained Expert Can Only Testify Without a Report If They Have Firsthand Knowledge of the Facts of the Case ....................................................... 4 III. FACTS ................................................................................................................................ 5 IV. ARGUMENT ...................................................................................................................... 6 A. Neither Mr. Laff nor Mr. Ormston Should Be Permitted to Provide Expert Testimony Because Their Designations Are Untimely and Insufficient ................ 6 1. Plaintiff’s Designation of Mr. Laff and Mr. Ormston Is Untimely ............ 7 2. Plaintiff’s Designation of Mr. Laff and Mr. Ormston is Insufficient ......... 8 B. Neither Mr. Laff nor Mr. Ormston Are Qualified to Testify as Stated in the Late Disclosure Without a Report......................................................................... 10 C. Mr. Ormston’s Declaration Regarding Invalidity Should Be Stricken Because It Is Improper Expert Testimony ............................................................ 11 D. Plaintiff’s Untimely Disclosures Are Neither Substantially Justified nor Harmless ............................................................................................................... 12 V. CONCLUSION ................................................................................................................. 14 Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 2 of 21 PageID #: 1430 ii TABLE OF AUTHORITIES Page(s) FEDERAL CASES Avnet, Inc. v. Motio, Inc., 2016 U.S. Dist. LEXIS 29534 * (N.D. Ill. Mar. 4, 2016) ........................................................10 Barrett v. Atl. Richfield Co., 95 F.3d 375 (5th Cir. 1996) .......................................................................................................3 Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993) .........................................................................................................1, 3, 13 Diamond Consortium v. Manookian, 2017 U.S. Dist. LEXIS 105768 * (E.D. Tex., July 10, 2017)..............................................4, 10 Eagle Oil & Gas Co. v. Travelers Prop. Cas. Co. of Am., No. 7:12-cv-00133, 2014 U.S. Dist. LEXIS 103537 * (N.D. Tex. July 30, 2014) ..............4, 10 Johnson & Johnson Vision Care, Inc., 725 F.3d 1377 (Fed. Cir. 2013) .........................................2 Motio, Inc. v. BSP Software LLC, 2016 U.S. Dist. LEXIS 901 * (E.D. Tex. Jan 6, 2016) ..................................................3, 7, 8, 9 O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006)..................................................................................................2 Retractable Technologies, Inc. v. Becton, Dickinson and Co., No. 2:08-CV-16-LED-RSP, 2013 U.S. Dist. LEXIS 127732 * (E.D. Tex. Sep. 6, 2013) ..........................................................................................................................................3 Schoch v. Wells Fargo Home Mortg., 2017 U.S. Dist. LEXIS 188364 * (E.D. Tex. May 16, 2017) ............................2, 4, 7, 8, 10, 11 Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008)..........................................................................................11, 12 TracBeam LLC v. Google, Inc., 2014 U.S. Dist. LEXIS 193246 * (E.D. Tex. Apr. 14, 2014) ..............................2, 3, 12, 13, 14 Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (Fed. Cir. 2010)..........................................................................................11, 12 Wilson v. Woods, 163 F.3d 935 (5th Cir. 1999) ...................................................................................................10 Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 3 of 21 PageID #: 1431 iii RULES Local Patent Rule 4-2.......................................................................................................................5 Local Patent Rule 4-3.......................................................................................................................5 Fed. R. Civ. P. 26 .........................................................................................................................3, 7 Fed. R. Civ. P. 26(a) ........................................................................................................................2 Fed. R. Civ. P. 26(a)(2) ....................................................................................................................2 Fed. R. Civ. P. 26(a)(2)(B) ..............................................................................................................4 Fed. R. Civ. P. 26(a)(2)(C) .................................................................................................... passim Fed. R. Civ. P. 26(a)(2)(C)(ii)......................................................................................................3, 9 Fed. R. Civ. P. 26(a)(2)(D) ......................................................................................................2, 6, 7 Fed. R. Civ. P. 37(c) ........................................................................................................................7 Fed. R. Evid. 602 ...........................................................................................................................11 Fed. R. Evid. 701 ...........................................................................................................................11 Fed. R. Evid. 702 .................................................................................................................3, 11, 12 Fed. R. Evid. 703 .......................................................................................................................3, 11 Fed. R. Evid. 704, 705 ...................................................................................................................11 Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 4 of 21 PageID #: 1432 1 I. INTRODUCTION Plaintiff is attempting to designate two expert witnesses in this case long after the deadline to do so. Plaintiff has already submitted a declaration containing expert testimony from one of these improperly designated witnesses. Plaintiff also indicates that it intends to submit more such testimony at trial. Plaintiff’s untimely designation violates both this Court’s Docket Control Order and the Federal Rules. Thus, the Court should strike Plaintiff’s untimely designation and improper expert testimony. On July 18, 2018, months after the deadline to designate expert witnesses, more than a month after the deadline to serve dispositive and Daubert motions, and after the close of expert discovery, Plaintiff—for the first time—attempts to designate as testifying experts its principal and a programmer that works for the prior owner of the Patent-in-Suit.1 Plaintiff is also attempting to submit expert testimony from the same programmer in opposition to Defendants’ motion for summary judgment. In doing so, Plaintiff ignored—and violated—the Federal Rules of Civil Procedure and this Court’s Docket Control Order. Plaintiff’s untimely attempt to designate expert witnesses is neither justified nor harmless. Thus, Federal Rule of Civil Procedure 37(c) requires Plaintiff’s untimely and improper expert disclosure and testimony to be stricken. Defendants respectfully ask the Court not to countenance Plaintiff’s willful refusal to litigate this case according to the rules, and to strike both Plaintiff’s untimely designation and late expert testimony. 1 Plaintiff contends that these alleged experts are non-retained experts that do not need to provide expert reports under Federal Rule of Civil Procedure 26(a)(2)(C). Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 5 of 21 PageID #: 1433 2 II. LEGAL STANDARDS A. Expert Witness Disclosures Must Be Made Pursuant to the Court’s Scheduling Order or Be Stricken Pursuant to Federal Rule of Civil Procedure 26(a)(2), “a party must disclose, as directed by the court, its expert witnesses and a report that ‘contains[s] a complete statement of all opinions to be expressed and the basis and reasons therefor.’” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1368-69 (Fed. Cir. 2006) (quoting Fed. R. Civ. P. 26(a)(2)). For experts the party does not retain in anticipation of litigation (a non-retained expert), the expert must provide a disclosure stating “(i) the subject matter on which the [expert] is expected to present evidence . . . and (ii) a summary of the facts and opinions to which the [expert] is expected to testify.” Schoch v. Wells Fargo Home Mortg., 2017 U.S. Dist. LEXIS 188364, *2-3 (E.D. Tex. May 16, 2017) (citing Fed. R. Civ. P. 26(a)(2)(C)). “Whether retained or not, the parties ‘must make these disclosures at the times and in the sequence that the court orders.’” Schoch v. Wells Fargo Home Mortg., 2017 U.S. Dist. LEXIS 188364, *2-3 (E.D. Tex. May 16, 2017) (citing Fed. R. Civ. P. 26(a)(2)(D)). “Rule 37(c) provides that a party’s failure to comply with Rule 26(a) mandates exclusion of that party’s disclosures unless that party can demonstrate that its failure to comply is substantially justified or harmless.” TracBeam LLC v. Google, Inc., 2014 U.S. Dist. LEXIS 193246, at *3 (E.D. Tex. Apr. 14, 2014) (emphasis added) (citations omitted). The sanctions in Rule 37(c) are self-executing, automatic, and the burden is on the party facing the sanctions to demonstrate that its failure to comply with Rule 26(a) was substantially justified or harmless. Id.; Johnson & Johnson Vision Care, Inc., 725 F.3d 1377, 1381 (Fed. Cir. 2013). Four factors are typically considered when determining whether untimely expert disclosures are substantially justified or harmless: (1) the explanation, if any, for the party’s Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 6 of 21 PageID #: 1434 3 failure to comply with the discovery order; (2) the prejudice to the opposing party that would result from permitting the untimely disclosures; (3) the possibility of curing such prejudice by granting a continuance; and (4) the importance of the witnesses' testimony. TracBeam (citing Barrett v. Atl. Richfield Co., 95 F.3d 375, 380 (5th Cir. 1996)). B. Designation of Non-Retained Witnesses Requires Specificity as to Facts and Opinions The proponent of expert testimony bears the burden of showing that the proffered expert is qualified to give an expert opinion. Motio, Inc. v. BSP Software LLC, 2016 U.S. Dist. LEXIS 901, at *4 (E.D. Tex. Jan 6, 2016) (citing Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 592-93 (1993)). Even when a party seeks to introduce expert testimony from a “non-retained” expert pursuant to Fed. R. Civ. P. 26(a)(2)(C), they must still make a disclosure that complies with that rule. Rule 26(a)(2)(C) requires the party to provide “(i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and (ii) a summary of the facts and opinions to which the witness is expected to testify.” Fed. R. Civ. P. 26(a)(2)(C). The party must do more than simply identify topics on which the expert must testify, but must offer actual facts to be relied on and actual opinions to be rendered. See Motio, 2016 U.S. Dist. LEXIS 901, at *7-8 (holding that an expert disclosure that “merely lists a set of topics . . . but offers no actual facts or opinions, forcing [the opposing party] to make assumptions based on things outside the disclosure” did not satisfy Rule 26(a)(2)(C)(ii)). Referral to depositions is not an adequate substitute for the summary required by Rule 26. Id. (citing Retractable Technologies, Inc. v. Becton, Dickinson and Co., No. 2:08-CV-16-LED-RSP, 2013 U.S. Dist. LEXIS 127732, at *3-4 (E.D. Tex. Sep. 6, 2013)). Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 7 of 21 PageID #: 1435 4 C. A Non-Retained Expert Can Only Testify Without a Report If They Have Firsthand Knowledge of the Facts of the Case “A retained expert witness is an expert who, without prior knowledge of the facts giving rise to litigation, is recruited to provide expert opinion testimony.” Diamond Consortium v. Manookian, 2017 U.S. Dist. LEXIS 105768, at *6 (E.D. Tex., July 10, 2017) (internal quotations omitted). A witness is “specially employed”—and thus must provide a report under Rule 26(a)(2)(B)—when “he has no personal involvement in facts giving rise to the litigation, but is engaged to provide opinion testimony, regardless of whether he is compensated or simply volunteers.” Diamond Consortium, 2017 U.S. Dist. LEXIS 105768, at *6 (citing Tolan v. Cotton, No. CIV.A. H-09-1324, 2015 U.S. Dist. LEXIS 121717, 2015 WL 5332171, at *1 (S.D. Tex. Sept. 14, 2015)). A non-retained expert’s testimony, on the other hand, “arises not from his enlistment as an expert, but, rather, from his ground-level involvement in the events giving rise to the litigation.” Diamond Consortium, 2017 U.S. Dist. LEXIS 105768, at *6 (internal quotations omitted). The proponent of expert testimony from a non-retained expert bears the burden of demonstrating that they are qualified to testify as such without a report. Schoch, 2017 U.S. Dist. LEXIS 188364, at *5 (citing Eagle Oil & Gas Co. v. Travelers Prop. Cas. Co. of Am., No. 7:12- cv-00133, 2014 U.S. Dist. LEXIS 103537 at *7 (N.D. Tex. July 30, 2014)). The mere fact that a party wishes to use an employee as an expert does not mean that the employee can testify about any subject under the sun. Where a purported non-retained expert does not have personal involvement in the events giving rise to the litigation (such as a treating physician), that person is required to submit an expert report that complies with Rule 26(a)(2)(B). Diamond Consortium, 2017 U.S. Dist. LEXIS 105768, at *7 (witness without ground-level involvement in the events giving rise to the litigation must submit an expert report). Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 8 of 21 PageID #: 1436 5 III. FACTS The Docket Control Order in this case has five deadlines relevant to the identification of expert witnesses. Initial Disclosures and Additional Disclosures August 3, 2017 [Dkt. 28] Identification of Extrinsic Evidence for Use in Claim Construction (P.R. 4-2) September 27, 2018 [Dkt. 28] Joint Claim Construction Statement and Identification of Expert Testimony in Opposition to Claims of Indefiniteness (P.R. 4-3) October 18, 2018 [Dkt. 28] Parties with Burden of Proof to Designate Expert Witnesses April 30, 2018 [Dkt. 57] Parties Designate Rebuttal Expert Witnesses May 29, 2018 [Dkt. 65] Plaintiff served initial disclosures on August 3, and did not identify any expert witnesses. (Ex. A). Plaintiff never supplemented its initial disclosures. Plaintiff’s preliminary claim constructions pursuant to Rule 4-2 did not identify any expert witnesses. (Ex. B.) The Joint Claim Construction Chart pursuant to P.R. 4-3 did not identify any expert witnesses. (Dkt. No. 50.) In its reply brief regarding claim construction, Plaintiff submitted a declaration by a programmer that works for the prior owner of the Patent-in-Suit (A Far Site Better, LLC), Mr. Mark Ormston. (Dkt. No. 48-1.) Neither Plaintiff’s brief, nor the declaration, identified Mr. Ormston as an expert. (Dkt. No. 48; Dkt. No. 48-1.) Plaintiff did not serve any expert reports or serve any designation of any expert witnesses on or before the April 30, 2018 expert witness disclosure deadline. Nor did Plaintiff serve any expert reports or any designation of any rebuttal expert witnesses on or before the May 29, 2018 rebuttal expert witness disclosure deadline. The parties filed opening summary judgment briefs on June 13, 2018, and Plaintiff did not submit any expert testimony or designate any expert witnesses with its motion. (Dkt. 71.) Expert discovery, which was extended to allow Plaintiff to Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 9 of 21 PageID #: 1437 6 depose Defendants’ experts (which Plaintiff did not do) closed on July 13, 2018. (Dkt. 75.) On June 13, 2018, the parties filed dispositive motions, and Plaintiff filed a Daubert motion. (Dkt. 66-72.) On July 16, 2018, Plaintiff served rebuttals to Defendants’ motions for summary judgment. Plaintiff’s response to Defendants’ motion for summary judgment of invalidity relied on a declaration from Mr. Ormston. (Dkt. 78; Dkt. No. 78-1 (herein after Ex. C)). For the first time in this case, Plaintiff contended that Mr. Ormston was an expert. (Dkt. 78 at 6-7 (reciting “conflicting opinions of experts” as grounds for denying summary judgment); Dkt. No. 79 at 6, 7 (“As co-inventor and expert witness Mark Ormston explained.” “On this motion, this Court must assess these competing opinions from the opposing experts.”) On Wednesday, July 18, 2018, plaintiff served a document titled “Supplemental Expert Witness Disclosure.” (“Late Disclosure”) (Ex. D.) Plaintiff’s Late Disclosure purports to designate Plaintiff’s owner (Mr. Steven Laff) and a programmer that works for a prior owner of the Patent-in-Suit (Mr. Mark Ormston) as experts to testify about infringement, validity, and damages. (Id. at 1-2.) The Late Disclosure appears to be an attempt to identify Mr. Ormston and Mr. Laff as non-retained experts who allegedly do not need to submit an expert report pursuant to Fed. R. Civ. P. 26(a)(2)(C). IV. ARGUMENT A. Neither Mr. Laff nor Mr. Ormston Should Be Permitted to Provide Expert Testimony Because Their Designations Are Untimely and Insufficient This Court’s orders and the Federal Rules of Civil Procedure require all parties in this case to make a proper designation of their expert witnesses according to the deadlines set forth in the Court’s scheduling orders. Fed. R. Civ. P. 26(a)(2)(D). Plaintiff’s Late Disclosure failed as to both sufficiency and timeliness. Even if Mr. Ormston and Mr. Laff are qualified to testify as Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 10 of 21 PageID #: 1438 7 experts without submitting a report—which, as discussed below, they are not—the Late Disclosure is both untimely and insufficient under Fed. R. Civ. P. 26(a)(2)(C). It should be stricken for both reasons. 1. Plaintiff’s Designation of Mr. Laff and Mr. Ormston Is Untimely This Court’s scheduling order required the parties to designate expert witnesses either by April 30, 2018 (burden of proof) or by May 29, 2018 (rebuttal). (Dkt. No. 57; Dkt. No. 65.) Plaintiff did neither. At no time in this case (prior to the Late Disclosure) did Plaintiff make any disclosure that could rise to the level of a satisfactory designation of either Mr. Ormston or Mr. Laff. Plaintiff’s failure to make a designation by the deadlines set forth in the scheduling order requires both the Late Disclosure and Mr. Ormston’s declaration to be stricken. Fed. R. Civ. P. 26(a)(2)(D) and 37(c); Motio, 2016 U.S. Dist. LEXIS 901, at *4; Schoch, 2017 U.S. Dist. LEXIS 188364, at *2-3. The Late Disclosure states that it is “supplemental to Plaintiff’s many prior disclosures, including but not limited to its Initial Disclosures (served August 2, 2017), deposition testimony (given April 2018), Witness List (served May 31, 2018), Rebuttal Witness List (served June 5, 2018), and summary judgment briefing and declarations (served July 16, 2018).” (Ex. D at 1.) Other than the July 16, 2018 briefing and declaration (well after the deadline to designate experts), none of the items Plaintiff mentions in the Late Disclosure designates either Mr. Laff or Mr. Ormston as an expert witness. (Exs. A, E, F.) Moreover, Plaintiff’s reliance on deposition testimony (which also did not involve a disclosure) cannot take the place of a proper disclosure pursuant to Rule 26. See Motio, 2016 U.S. Dist. LEXIS 901, at *7-8. Consequently, the Court should strike Plaintiff’s untimely designation of alleged experts, and Mr. Ormston and Mr. Laff should not be permitted to provide expert testimony in this case – either at trial or with respect to summary judgment. Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 11 of 21 PageID #: 1439 8 2. Plaintiff’s Designation of Mr. Laff and Mr. Ormston is Insufficient In addition to being untimely, Plaintiff’s Late Disclosure is also insufficient to serve as a proper expert designation pursuant to Fed. R. Civ. P 26(a)(2)(C). Under that rule, Plaintiff is required to “provide a meaningful ‘summary of the facts and opinions to which [the witness] is expected to testify.’” Motio, 2016 U.S. Dist. LEXIS 901, at *7. At least some specificity is required, and “‘merely stating the topic matters of facts relied upon does not suffice.’” See Schoch, 2017 U.S. Dist. LEXIS 188364 (internal citations omitted). Simply listing a set of topics that Mr. Laff or Mr. Ormston may speak toward, without offering facts or opinions, is inadequate. See Motio, 2016 U.S. Dist. LEXIS 901, at *8. For example, in Motio, the following disclosure was found to be insufficient under Rule 26(a)(2)(C): Lynn Moore. Mr. Moore, in addition to offering fact testimony that is not subject to disclosure under Rule 26(a)(2)(C), may present expert testimony on the patent- in-suit and the products at issue in this lawsuit including the operation of Motio’s MotioCI product and Defendants’ ICS/IVC product. He may also present expert testimony in response to the opinions expressed by Defendants' purported experts. It is expected that Mr. Moore may testify as to the validity of the patent in suit pursuant to 35 U.S.C. §§ 101, 102, 103 & 112 including secondary considerations of non-obviousness. It is expected that Mr. Moore may testify as to Defendants’ infringement of the patents in suit and the resulting damage to Motio by Defendants’ continued infringement. Motio, 2016 U.S. Dist. LEXIS 901, at *4-5, 7-8 (finding the above disclosure non-compliant with Rule 26(a)(2)(C) because it is a mere list of “a set of topics that . . . offers no actual facts or opinions, forcing Defendants to make assumptions based on things outside the disclosure” as to what the witness will testify). Plaintiff’s Late Disclosure includes no more detail than the insufficient disclosure in Motio. As an initial matter, the Late Disclosure does not even specifically identify which witness will provide which expert testimony. (Ex. D at 2.) Apparently, Plaintiff intends to have both Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 12 of 21 PageID #: 1440 9 witnesses testify as experts as to any topic relating to infringement, validity, and damages. (Id.) Further, Plaintiff’s attempt to satisfy the requirements of Rule 26(a)(2)(C)(ii) with respect to these topics falls far short of satisfying Plaintiff’s disclosure obligations. Regarding damages, the Late Disclosure merely recites the Georgia Pacific factors, and states that “the facts and opinions will include particularly these witnesses’ personal knowledge and familiarity with the facts relevant to a consideration of the Georgia-Pacific factors for setting a reasonable royalty.” (Ex. D at 3-4.) The Late Disclosure identifies no specific facts on which the witnesses will allegedly rely, and offers no hint whatsoever as to the opinions either one will offer.2 (Id.) The Late Disclosure is no better as to infringement and validity. In fact, it is nearly identical to the insufficient disclosure in Motio. As to infringement, as in Motio, the Late Disclosure states, “the facts and opinions include particularly these witnesses’ familiarity with the functionality and operation of Defendants’ accused infringing instrumentality and systems.” (Ex. D at 2.) With respect to validity,3 as in Motio, the Late Disclosure states: “the facts and opinions include particularly these witnesses’ personal knowledge and familiarity with the claimed inventions and the “plain and ordinary meaning” (as construed by the Court) of each element of the asserted claims of the ’712 patent-in-suit, as compared to the disclosure (or lack of disclosure) of any prior art reference Defendants present at trial (including the analysis of the Abramson reference presented by Defendants only as of June 13, 2018 as a proposed basis for summary judgment).” In neither case is Plaintiff’s disclosure sufficient to satisfy Rule 2 The Late Disclosure seems to indicate the intent is to have Mr. Laff testify as an expert for damages, although it plainly is not limited to Mr. Laff. (Ex. D at 3.) 3 The Late Disclosure seems to indicate the intent is to have Mr. Ormston testify as an expert for validity, although it plainly is not limited to Mr. Ormston. (Ex. D at 2.) Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 13 of 21 PageID #: 1441 10 26(a)(2)(C)(ii), and consequently the Court should strike the Late Disclosure and Mr. Ormston’s declaration for this reason as well. B. Neither Mr. Laff nor Mr. Ormston Are Qualified to Testify as Stated in the Late Disclosure Without a Report Plaintiff bears the burden of showing that Mr. Laff and Mr. Ormston are entitled to testify as experts without providing a report. Schoch, 2017 U.S. Dist. LEXIS 188364, at *5 (citing Eagle Oil & Gas Co. v. Travelers Prop. Cas. Co. of Am., No. 7:12-cv-00133, 2014 U.S. Dist. LEXIS 103537 at *7 (N.D. Tex. July 30, 2014)). That requires showing that the potential expert has firsthand factual knowledge of the allegations. Id. If that knowledge was gained specifically with respect to the litigation, however, then even an employee4 witness is still “specially employed” as an expert, and must submit a report. See Diamond Consortium, U.S. Dist. Lexis 105768 at *8; Avnet, Inc. v. Motio, Inc., 2016 U.S. Dist. LEXIS 29534, at *4-9 (N.D. Ill. Mar. 4, 2016). Plaintiff’s disclosure does not explain how either Mr. Laff or Mr. Ormston is qualified to testify as an expert without a report on the listed topics. (Ex. D.) Plaintiff makes no effort to show that Mr. Laff or Mr. Ormston have any expertise to offer that was gained outside of specific preparation for this litigation. (Id.) Indeed, even the general areas of testimony provided make clear that any knowledge Mr. Ormston or Mr. Laff might have had to be gained in anticipation of litigation, since their opinions apparently relate to the accused website, Defendants’ invalidity positions, and the Georgia-Pacific analysis. (Id.) Even if Plaintiff can demonstrate that either witness has firsthand knowledge of the facts that was not generated for this litigation, Plaintiff still must demonstrate that the potential expert 4 Notably, Mr. Ormston is not an employee of Plaintiff. Mr. Ormston is an employee of the prior owner of the Patent-in-Suit—A Far Site Better, LLC. Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 14 of 21 PageID #: 1442 11 is qualified “through knowledge, skill, experience, training, or education related to the issues to which the expert will testify and that the expert’s testimony will be relevant and reliable.” Schoch, 2017 U.S. Dist. LEXIS 188364, at *5 (citing Wilson v. Woods, 163 F.3d 935, 937 (5th Cir. 1999)). Plaintiff’s Late Disclosure makes no attempt whatsoever to demonstrate in any way that either witness is qualified to speak as an expert as to the topics they will allegedly testify to the jury. C. Mr. Ormston’s Declaration Regarding Invalidity Should Be Stricken Because It Is Improper Expert Testimony Plaintiff’s failure to properly designate Mr. Ormston as an expert in this case mandates that his declaration in opposition to Defendants’ motion for summary judgment of invalidity be stricken. His testimony is not based on his own personal knowledge, as would be required for a non-expert witness. See Fed. R. Evid. 602 (“A witness may testify to a matter only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter.”) Rather, he is testifying as to what his opinion is of what one of ordinary skill in the art would understand the prior art and the ’712 Patent to disclose. This is not testimony from personal knowledge; that is an opinion on invalidity,5 and thus is the province of experts. See Fed. R. Evid. 702-705. Because Mr. Ormston has not been properly designated as an expert, this testimony must be stricken. See Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1339-40 (Fed. Cir. 2010) (“[T]he district court properly allowed testimony from the witnesses about the patents they invented based on their personal knowledge, and properly excluded these same witnesses from providing expert testimony on invalidity for which they had not previously provided expert reports or been qualified as an expert.”); Sundance, Inc. v. Demonte Fabricating 5 A lay witness can provide an opinion only if that opinion is “not based on scientific, technical, or other specialized knowledge within the scope of Rule 702.” Fed. R. Evid. 701. Mr. Ormston’s testimony is highly technical, and thus cannot be presented under Rule 701. Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 15 of 21 PageID #: 1443 12 Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“[W]here an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art.”). Specifically, the substantive portion of Mr. Ormston’s declaration consists entirely of technical opinion testimony that can only be given by a properly designated expert. (See Ex. C ¶¶ 4-8.) In the declaration, Mr. Ormston provides his opinion about how “[one] with ordinary skill in the art” would view the disclosure of the prior art or the ‘712 Patent. (Id.) Mr. Ormston testifies about what a person of ordinary skill in the art would understand about how certain technologies recited in those patent documents (such as “Shockwave.” HTML, and CSS) would work. (See id.) His testimony is clearly about how an ordinary person with certain technical skills would understand technical disclosures. (See id.) And, of course, Plaintiff is now referring to Mr. Ormston as an expert in its briefing. (Dkt. 79 (Opposition to Noninfringement Motion) at 6.) Thus, his opinions are expressly not his personal knowledge or his own views, and because he has not been properly designated as an expert witness, Defendants respectfully submit that this testimony must be stricken. Fed. R. Evid. 702; Verizon, 602 F.3d at 1339-40; Sundance, 550 F.3d at 1363. D. Plaintiff’s Untimely Disclosures Are Neither Substantially Justified nor Harmless Pursuant to Federal Rule of Civil Procedure 37(c), Plaintiff’s failure to make the necessary disclosure of Mr. Ormston or Mr. Laff as potential experts as required by this Court’s order mandates excluding any such testimony unless Plaintiff can demonstrate that its failure is either substantially justified or harmless. TracBeam LLC v. Google, Inc., 2014 U.S. Dist. LEXIS 193246, at *3. Plaintiff cannot establish either. Plaintiff has provided no justification for the late disclosure. Plaintiff cannot reasonably contend that it was not aware of the deadlines to designate experts. Indeed, some of those Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 16 of 21 PageID #: 1444 13 deadlines were extended to accommodate Plaintiff’s effort to submit a rebuttal expert report, which was never served. (Dkt. No. 64 at 2; Dkt. No, 74 at 2.) Plaintiff signed each motion to modify the Docket Control Order. (Id.) The correspondence leading up to these extended deadlines makes clear that Plaintiff knew it needed to submit an expert report for Mr. Ormston if he was going to testify regarding validity. (Ex. G at 1-3, 5-6, 8.) Yet no report (or designation) was forthcoming. Plaintiff simply allowed these deadlines to pass without any disclosure whatsoever. Indeed, Plaintiff did not seek leave of Court for its Late Disclosure, nor the expert testimony it provided in response to Defendants’ motion for summary judgment of invalidity. Nor can the mere fact that Plaintiff now wants to attempt to rebut Defendants’ timely expert report regarding invalidity (served almost three months ago, on April 30, 2018), does not justify the Late Disclosure, having passed up the opportunity to do so on May 29, 2018 as required by the Docket Control Order. See TracBeam, 2014 U.S. Dist. LEXIS 193246, at *9 (finding that a desire to respond to conclusions reached in rebuttal expert report is not enough to justify a supplement because “[o]therwise, deadlines for expert reports would become meaningless as parties could continually supplement at will”). Nor is Plaintiff’s untimely disclosure harmless. Plaintiff, having willfully allowed the deadlines to designate experts to pass, now seeks to inject unspecified expert testimony into this case from unqualified experts not just after the deadline for expert designations, but after the summary judgment and Daubert deadlines. If Plaintiff is allowed to provide new expert opinions now (particularly on damages and infringement, where Plaintiff bears the burden of proof), not only should Defendants be allowed an opportunity for depositions of Plaintiff’s new experts, but Defendants should also be allowed to provide rebuttals by its own expert witnesses, and seek to challenge Plaintiff’s expert testimony under Daubert. See TracBeam, 2014 U.S. Dist. LEXIS Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 17 of 21 PageID #: 1445 14 193246, at *10 (finding that a late-submitted opinion was not harmless because, inter alia, the opposing party “may need to respond to these opinions in turn, which could open up another round of Daubert Motions and expert depositions.”) Much as in TracBeam, what would amount to, essentially, a complete reset of expert discovery is not harmless. Id. Indeed, this would also, in effect, double the cost of expert discovery for Defendants (who did follow the rules), creating significant prejudice that could not be remedied by a continuance. V. CONCLUSION For the reasons set forth above, Defendants respectfully ask the Court to strike Plaintiff’s untimely and inadequate expert designation (the Late Disclosure – Exhibit D) and prevent Mr. Laff and Mr. Ormston from presenting expert testimony in this case. Relatedly, Defendants ask the Court to strike Mr. Ormston’s improper expert declaration (Dkt. 78-1, Ex. C) because it is expert testimony submitted by a person who has not been properly designated to provide such testimony. Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 18 of 21 PageID #: 1446 15 Dated: July 30, 2018 /s/ Richard W. Miller Richard W. Miller Darjush Boushehri (pro hac vice) Ballard Spahr LLP 999 Peachtree St. NE, Suite 1000 Atlanta, GA 30309 Phone: 678.420.9300 Fax: 678.420.9301 millerrw@ballardspahr.com bousherehid@ballardspahr.com Lynn E. Rzonca Ballard Spahr LLP 1735 Market Street, 51st Floor Philadelphia, PA 19103-7599 Phone: 215.665.8500 Fax: 215.864.8999 rzoncal@ballardspahr.com Melissa R. Smith Texas Bar No. 24001351 Gillam & Smith, LLP 303 South Washington Avenue Marshall, Texas 75670 Phone: 903.934.8450 Fax: 903.934.9257 melissa@gillamsmithlaw.com Attorneys for Defendants Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 19 of 21 PageID #: 1447 16 CERTIFICATE OF CONFERENCE On July 30, 2018, pursuant to Local Rule CV-7(h), counsel for Defendants met and conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed to the relief sought by this Motion. Dated: July 30, 2018. /s/ Richard W. Miller Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 20 of 21 PageID #: 1448 17 CERTIFICATE OF SERVICE The undersigned hereby certifies that on this day I caused to be served true and correct copies of the foregoing document on all parties appearing in this case by CM/ECF notification, and such documents are available for viewing and downloading via the CM/ECF system. Dated: July 30, 2018. /s/ Richard W. Miller Richard W. Miller Case 2:17-cv-00118-RWS Document 82 Filed 07/30/18 Page 21 of 21 PageID #: 1449