Special Master Paul M. Lukoff recently recommended denying a plaintiff’s request for leave to serve a supplemental expert report in rebuttal of the defendant’s supplemental (and unexpected) report. Robocast, Inc. v. Microsoft Corp., C.A. No. 10-1055 (RGA) (D. Del. Jan. 21, 2014). The plaintiff argued it should be permitted a supplemental report to rebut the defendant’s own supplemental report, which the Court had permitted. The defendant countered that the Court previously made clear that no further reports would be permitted and, further, that it would be prejudiced if the plaintiff were allowed to serve a supplemental report at this stage because there would be no opportunity to depose the expert on the new opinions. The Special Master supported his recommendation that the plaintiff not be permitted to serve a supplemental rebuttal report by explaining that “[t]he parties have been around and around this technical mulberry bush so many times that they must be bored with the repetitive nature of their activities.” The Special Master explained further that, based on declarations filed during summary judgment briefing, the defendant was so familiar with the opinions of the plaintiff’s expert that “the defendant will have lost nothing in connection with its ability to question this particular expert witness” at trial. Id. at 3. As a result, Special Master Lukoff recommended denying the plaintiff’s request for permission to serve a supplemental rebuttal report, but recommended that the plaintiff’s expert be permitted to provide rebuttal testimony at trial. Id.
Special Master Lukoff recently considered the latest of several motions regarding expert discovery in Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. Dec. 4, 2013) (previous decisions discussed here and here). Apple moved to strike the supplemental expert report of Robocast’s damages expert, Mr. Hoffman. The expert’s original report was based in part on the opinions of another expert who had analyzed user surveys. Id. at 1. Subsequently, plaintiff withdrew this expert’s opinions, leaving Hoffman’s report “with a gap in the foundation of his own opinions.” Id. Robocast, however, did not seek the Court’s permission to issue a supplemental expert report that was untimely.
Special Master Lukoff noted that “[i]n an assessment of a relatively grey area, plaintiffs having Mr. Hoffman generate a supplemental report could be generously classified as an effort to comply with its FRCP 26(e) obligation to supplement discovery under appropriate circumstances.” Id. at 2. In this case, however, Special Master Lukoff determined that after plaintiff notified Apple that it was voluntarily withdrawing the opinions upon which Mr. Hoffman predicated a portion of his damages projection, there was no obligation to supplement the Hoffman report under Rule 26(e) “since it was crystal clear to Apple what had happened and what the loss of the [other expert’s] opinions would mean.” Id. at 3. Instead, Special Master Lukoff found that Robocast used the opportunity to add a new theory to Mr. Hoffman’s opinions that could have been contained in his original report. Id. As such, Apple’s motion was granted and Robocast’s supplemental Hoffman report was stricken.
Special Master David White recently issued a ruling granting in part and denying in part a motion to compel. Frontier Communications Corp. v. Google Inc., C.A. No. 10-545-GMS (D. Del. Dec. 6, 2013).
Special Master White first found the defendant’s identification of only two individuals who have “participated in the design, development, testing, implementation, marketing, sales, or distribution of the Accused Systems/Services” to be a deficient response to an interrogatory seeking the identification of “all persons … who have participated in ….” The Special Master agreed with the defendant that the interrogatory seeking the identifies of “all” such individuals was overbroad, but found that “the interests of both parties may be respected by requiring Google to identify those individuals who are most knowledgeable about or primarily responsible for each of the activities set forth in the Interrogatory ….” The defendant had referred the plaintiff to the defendant’s document production as a source from which the plaintiff could identify the identities of the individuals sought by the interrogatory, but the Special Master rejected that approach, since the plaintiff could not, simply by reference to the document production, “locate and identify [the relevant individuals] as readily as” the defendant could.
The parties also disputed what the appropriate number of record custodians should be searched by the defendant, with the plaintiff identifying 60 such individuals, and the defendant willing to search only 7. The Special Master found that the Default Standard was triggered by the parties’ disagreement, meaning that the defendant was required to search 10 custodians. He added, though, that “[i]n the event that Frontier is able to provide particularized information which demonstrates the need for an expanded search, the Court will consider such supplemental application, and Google’s response thereto, consistent with the standards set forth in the Federal Rules.”
Next, the Special Master endorsed the defendant’s preference for Boolean searches, but found that its proposed searches were too narrow. He ordered, as a result, that the defendant broaden its searches. Further, the plaintiff was permitted, consistent with the Default Standard, to provide the defendant with 10 additional search terms beyond the broadened Boolean searches proposed by the defendant.
The Special Master then considered a dispute over the production of the defendant’s source code. The plaintiff moved to compel the production of all of the source code of the Accused System, while the defendant’s position was that it should only be required to produce the source code related to the alleged infringement. Special Master White found that the parties had negotiated sufficient safeguards for access to source code in their protective order such that the defendant’s interest in safeguarding its source code would be protected. Accordingly, he ordered that the defendant make its source code available for review consistent with the protective order.
Special Master Lukoff recently resolved another dispute between the paries regarding their inequitable conduct experts’ reports. Robocast, Inc. v. Apple, Inc., et al., C.A. Nos. 11-235-RGA, C.A. No. 10-1055-RGA (D. Del. Oct. 24, 2013). Special Master Lukoff had previously permitted defendants to serve a supplemental expert report in response to plaintiff’s expert’s rebuttal report. Here, plaintiff requested that it be permitted to issue a supplemental rebuttal report to respond to “new opinions” in defendant’s supplemental report. Id. at 2. Plaintiff also requested that it be permitted to an additional deposition of defendant’s expert. Id. Defendants opposed plaintiff’s request because plaintiff’s expert could have addressed the issues in question before his last report. Id.
Special Master Lukoff noted that the Court’s Scheduling Order only permits service of initial and rebuttal expert reports, absent the parties’ agreement or leave of Court. Id. Because Special Master Lukoff gave leave for defendants to supplement their expert report, the court was inclined to now do the same for plaintiff, albeit reluctantly. Id. at 3. While Special Master Lukoff recognized the need for the finality that underpins the provisions of the Scheduling Order, he noted that he was “equally sensitive to a full opportunity on the merits to develop the litigants’ forensic positions on the inequitable conduct issue.” Id. at 4. Defendants identified no prejudice resulting from the additional expert report, therefore, plaintiff was permitted to serve a supplemental rebuttal report and both plaintiff and defendants were permitted additional three-hour depositions of eachother’s experts. Id. at 4-5.
Special Master Redfearn recently considered cross motions to exclude the competing expert reports of the parties in Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al. The moving defendants, several mobile carriers and mobile technology companies, sought to exclude portions of an infringement expert report that discussed (1) doctrine of equivalents theories that had not previously been asserted in infringement contentions and (2) various third party applications that had not been previously disclosed as accused products.
The Special Master noted that the doctrine of equivalents argument would be moot if the Court did not adopt defendants’ claim construction position, but that allowing the theory “to remain in [the] report does not mean that the Court will adopt the Plaintiff’s claim construction.” Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al., C.A. No. 10-812-RGA, Rulings and Recommendations at 6 (D. Del. Oct. 3, 2013). The Special Master further found that the plaintiff was not accusing the third party applications of infringement but could potentially make an appropriate reference to the software at trial, so the admissibility of the third party application references should be left to the discretion of Judge Andrews at trial. Id.
The plaintiff moved to exclude certain combinations of prior art as untimely disclosed in an invalidity expert report, arguing that it could not take discovery on those combinations at this stage of the case. The defendants pointed out, however, that the plaintiff had not previously sought discovery on any prior art combinations. Further, the Special Master found that the invalidity expert report did not include any evidence not previously disclosed and did not include any new or abandoned references. Finally, the plaintiff’s expert was able to analyze and address the combinations at issue. Id. at 7-8.
Thus, the Special Master denied both motions to exclude. Addressing the Third Circuit’s Pennypack factors, the Special Master concluded that neither party suffered any prejudice and neither side had acted in bad faith. Therefore, because “it is important that these issues be fully presented and all valid legal theories considered,” the “extreme sanction” of exclusion was not warranted. Id. at 8-9.
Special Master Lukoff recently considered Apple and Microsoft’s request to order plaintiff to produce early surveys commissioned by one of plaintiff’s experts in anticipation of issuing his expert reports. Robocast, Inc. v. Apple, Inc., et al., C.A. No. 11-235-RGA, C.A. No. 10-1055-RGA (D. Del. Sept. 18, 2013). The early surveys were conducted prior to the surveys which formed the basis of plaintiff’s expert’s opinions. Id. 1-2. The parties’ dispute hinged on the interpretation of the phrase “the facts or data considered by the witness in forming [the opinions],” found in Rule 26(a)(2)(B)(ii). Id. at 2. Plaintiff argued that production was not required because the expert did not consider those prior surveys when reaching his conclusions, and could not have considered them since the expert deleted the earlier surveys from his computer. Id. at 2. Defendants, on the other hand, argued that under Rule 26 the expert must have considered the surveys, even based only on the similarity of all the surveys. Id at 3. Moreover, defendants argued that the term “considered,” for purposes of Rule 26, has been defined by courts to mean “reviewed.” Id. “As such, a review having occured, there is no question about whether the expert had ‘considered’ the earlier surveys.” Id.
Special Master Lukoff noted that there was no reason to doubt that Plaintiff’s expert deleted the prior surveys and could not remember them when drafting his expert reports. Id. However, when construing Rule 26 “using common sense,” Special Master Lukoff determined that it would be “impossible to believe that an expert whose opinions are predicated upon the creation of a statistically-meaningful effort could have, in the statistical sense, completely ignored the data that had been previously collected by him.” Id. at 4. Ultimately, Special Master Lukoff noted that it was a close call, but, since there was “sufficient ambiguity” as to whether the prior surveys played a role in the expert’s final reports, the plaintiff was ordered to immediately produce those prior surveys (including questions and answers) to the defendants. Id. at 5-6.
In two recently issued rulings and recommendations, Special Master B. Wilson Redfearn considered defendant motions to strike portions of the plaintiff’s expert reports. In the first ruling, the Special Master considered whether to strike portions of an expert report analyzing alleged infringement by defendants Sprint and Simplexity based on their marketing of Apple products—products which the Special Master previously had “specifically stated . . . were not a part of this case.” Eon Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-182 (RGA) (D. Del. Aug. 28, 2013). In his ruling, the Special Master explained “[f]or the third time: The [Apple] products identified in the Fourth Supplement of Accused Products are not a part of this case. Those products were untimely identified and, if they had been allowed, it would have compromised not only document production but fact discovery as well as the dates and deadlines set out in the agreed Amended Scheduling Order.” Id. at 4 (the Fourth Supplement of Accused Products had been served on February 22, 2013, only 6 days before the document production deadline under the Amended Scheduling Order). Although the plaintiff argued that its earlier disclosures had included references to the Apple products, the Special Master found that the earlier disclosures included “no more than passing references” to them, and did not provide the claim-by-claim contentions necessary to put Sprint and Simplexity on notice that they were accused of infringement based on Apple products. Id. at 4-5.
The Special Master opted not to strike the offending portions of the plaintiff’s expert report, though. Citing a Western District of Pennsylvania decision, and Rule 12(f), the Special Master explained that a court is only permitted to strike matters from the pleadings, and “[a]n expert report is not a pleading.” Id. at 6 (citing Wonderland Nurserygoods Co., Ltd. v. Thorley Indus., LLC, 2013 WL 2471801 (W.D. Pa. June 7, 2013)). Instead, the Special Master explained, Rule 37(b)(2)(A)(ii) allows a court to enter “an order prohibiting a party from introducing designated matters into evidence.” Id. at 6. The Special Master therefore ruled that, subject to the trial judge’s discretion, “any expert opinion or suggested testimony that assumes or attempts to prove that the Apple wireless devices infringe the ‘757 patent should not be allowed.” Id.
In the second ruling, the Special Master considered a motion filed by defendant Qualcomm to strike portions of the plaintiff’s expert report which stated that Qualcomm’s accused product satisfies the “Radio Wave Transmission and Reception Means” and “Monitoring Means” claims of the patent-at-issue, two claims which were not included in the plaintiff’s infringement contentions. Eon Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-182(RGA) (D. Del. Sept. 5, 2013). Again citing Wonderland Nursery Goods, the Special Master explained that “a motion to strike parts of a report is not the appropriate method to address this issue. I am therefore treating this as a motion to exclude the evidence at trial.” Id. at 1 n.1.
In this case, the plaintiff responded both in its answering brief and at a hearing before the Special Master that it was not asserting infringement of the “Radio Wave Transmission and Reception Means” claim. On that basis, the Special Master found that there was no need to take action to strike or exclude the portions of the opinion at this stage of the litigation, and instead explained that “the issue can be addressed to the trial judge through an appropriate objection” if and when it is raised at trial. Id. at 2-3. With respect to the “Monitoring Means” claim, the Special Master found that the plaintiff’s expert was entitled to set out his opinion on this claim in response to Qualcomm’s claim construction positions. Based on the relatively early stage of the litigation, the Special Master found that Qualcomm would not be prejudiced by being required now to provide rebuttal expert testimony on the issue. Id. at 3-4.
Having recently issued a decision relating to plaintiff’s privilege log on July 19, discussed here (“the July 19 decision”), Special Master Paul M. Lukoff issued a second Opinion and Order “devoted to two additional issues, as well as a continuation” of the issues in the July 19 decision. Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA; Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA, slip. op. at 2 (D. Del. Jul. 30, 2013).
Special Master Lukoff first assessed which communications of a Canadian lawyer (Pozner) who functioned as plaintiff’s Director of Business Development were protected by the attorney-client privilege. Judge Andrews had previously ruled that these documents were not privileged and ordered them produced, and plaintiff continued to withhold some of them. Id. at 1. But the Special Master concluded that, before Judge Andrews, the parties had not briefed the specific question now before him: whether plaintiff could still claim privilege where Pozner specifically functioned as a “conduit or adjunct to lawyers.” Id. at 2-3. Special Master Lukoff concluded that most of Pozner’s communications with attorneys were privileged as he was “actively engaged in securing, and integral to the consideration by [plaintiff] of, of legal advice.” Id. at 3-4. But where Pozner communicated with non-lawyers without outside counsel being party to these communications, “there was greater opportunity to find that his involvement, having already lost any patina of protection in terms of attorney-client privilege” due to Judge Andrew’s decision, “was for business rather than legal reasons.” Id. at 4.
Defendant also argued that there were more than 1,000 log entries that were inadequate under Rule 26(b)(5)(A) and their documents should be produced. Generally Special Master Lukoff found that plaintiff’s descriptions were sufficient as he “had no reason to doubt plaintiff’s counsels’ representation . . . they they’ve described as well as they can documents which they’re certain came from an outside law firm, but whose metadata . . . provided no further insights as to which firm and which attorney within that firm was the originator.” Id. at 4. Special Master Lukoff then conducted the same “item-by-item determination” present in the July 19 decision, as to whether the presence of third parties on these additional log entries waived privilege. See id. at 5-7.
Special Master B. Wilson Redfearn recently considered plaintiff’s motion to compel a defendant’s response to its Interrogatories 1 and 10, which requested the following:
-Interrogatory 1: Identify and describe in detail your expectations of sales and actual sales of the Relevant Products or Relevant Services and mobile devices.
-Interrogatory 10: Describe all communications between you and any mobile network operator (e.g., Sprint, U.S. Cellular) regarding the sale or potential sale of Relevant Products.
EON Corp. IP Holdings, LLC v. Flo TV Inc., et al., C.A. No. 10-812-RGA (D. Del. Jul. 23, 2013) (emphasis added). As Special Master Redfearn explained, “the case has been bifurcated,” but plaintiff argued that the “information sought through these interrogatories is relevant to the infringement issues because it is probative of commercial success, a secondary consideration of nonobviousness.” Id. at 1. Defendant, on the other hand, argued that before it is required to respond, plaintiff must “first show a specific nexus between the commercial success of the product and the alleged infringing features.” Id. at 3. Special Master Redfearn disagreed with defendant’s contention and found that plaintiff “is allowed to propound discovery for the purpose of developing factual information which could assist in showing that its invention is valid, i.e., it can propound discovery which it reasonably believes will permit it to argue at trial that there was commercial success, which supports its position on nonobviousness (rebutting the invalidity contentions).” Id. at 4.
Nevertheless, Special Master Redfearn found that the scope of Interrogatory 1 should be narrowed. Specifically, Special Master Redfearn explained that defendant “must furnish actual sales information concerning its ‘Relevant Products,’” but “its response can be limited to (1) sales which involve products using the accused features; and (2) products which were sold within thirty-six months after they were put on the market.” Id.
Further, Special Master Redfearn concluded that Interrogatory 10 should be denied as “ambiguous and overbroad.” Id. at 5. He explained that “[i]n order for an interrogatory (or interrogatories) of this nature to be properly formed for a company the size of [defendant], with a national and international sales force, the Plaintiff would have to set out the type of communications to which it refers; narrow the persons (or at least the internal entities) from whom the information is being sought; and set out the relevant time period.” Id. at 4-5. The Special Master noted that “[e]ven then, there could well be valid objections on the basis of relevancy.” Id. at 5.
Special Master Paul M. Lukoff recently ruled on a dispute “over so-called third party consultants and the impact of their presence on what might otherwise be privileged communications.” Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA; Robocast, Inc. v. Microsoft Corporation, C.A. No. 10-1055-RGA, slip. op. at 2 (D. Del. Jul. 19, 2013). Special Master Lukoff addressed the issue on a document-by-document basis and ordered that some of the documents on plaintiff’s log were to be produced, as the presence of third parties had waived attorney-client privilege. Id. at 13-14.
As a preliminary matter, the Special Master examined, on a document-by-document basis, whether plaintiff complied with FRCP 26(b)(5)(A), which obligates a party claiming privilege to describe the withheld documents with sufficient detail, or whether noncompliance with this rule resulted in waiver. While the Special Master disagreed with plaintiff’s argument that some Delaware cases “stand for the proposition that the privilege proponent must always be given further opportunity, in the face of a Rule 26(b)(5)(A) challenge, to take another stab at an adequate description” (and in this case the plaintiff had already amended its log several times, id. at 3-5) the Special Master found “very few” Rule 26(b)(5)(A) issues in plaintiff’s current log. Id. at 4 n.5.
Turning to the specific issue in dispute, the Special Master observed that there was a “possibly irreconcilable split” between Third Circuit (non-Delaware) district courts as to the proper test for whether a non-employee was the “functional equivalent” of an employee for purposes of attorney-client privilege. Id. at 6-7. Additionally, there was no Third Circuit case “explicitly adopt[ing] the functional equivalent concept in any form.” Id. However, this issue “pose[d] no obstacle” to resolving this dispute because: (i) the Special Master was “comfortable with the notion that some functions of a relatively small company like [plaintiff] might be best or necessarily accomplished through independent contractors and/or non-employee consultants;” (ii) Third Circuit precedent made clear that “there is no discernible bright line to be followed when the privilege is assessed;” and (iii) “even if one adopts and then adheres to one interpretation of the functional equivalent test or the other, each individual document must be reviewed on a case-by-case basis to determine if it was created for the purpose of providing or obtaining legal advice.” Id. at 7 (internal citations omitted).
With these principles in mind, the Special Master examined the duties of various non-employees and discussed how their duties may or may not waive privilege when they were privy to communications. Id. at 7-11. The Special Master further explained that his “rationale for making any such determination [of waiver] will not be founded on [the third party’s] status as an ‘outsider’ or the ‘functional equivalent’ of a [plaintiff] employee, but rather on the individual’s relative position with respect to obtaining legal advice.” Id. at 13.
Special Master Lukoff mapped out his Rule 26(b)(5)(A) and privilege conclusions in a “lengthy chart,” and ordered plaintiff to produce copies of all documents in the log that the Special Master had concluded were not privileged based on waiver. Id. at 13-14.