I/P Engine, Inc. v. AOL, Inc. et al

Filing 857

Memorandum in Support re 856 MOTION to Compel Deposition of Dr. Becker filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA NORFOLK DIVISION I/P ENGINE, INC. Plaintiff, Civil Action No. 2:11-cv-512 v. AOL INC., et al., Defendants. MEMORANDUM IN SUPPORT OF DEFENDANTS’ MOTION TO COMPEL DEPOSITION OF DR. BECKER Plaintiff is seeking a significant enhancement for post-judgment royalties based solely on the opinion of an expert who Plaintiff is unwilling to make available for deposition without unreasonable conditions. Such a position is contrary to basic fairness and the law. Defendants ask the Court to compel Plaintiff to produce Dr. Becker for deposition to provide Defendants the opportunity to examine his new damages theory and to allow the Court to make a decision about ongoing royalties based on a complete and thorough record. BACKGROUND In seeking post-judgment royalties, Plaintiff filed a declaration from its damages expert that includes numerous factual allegations not before the jury, opinions about a hypothetical negotiation occurring more than eight years after the hypothetical negotiation at issue at trial and involving different parties, and a conclusion as to damages not at issue at trial, including a different (43% higher) royalty rate than Dr. Becker testified to at trial. (See D.N. 824.) 01980.51928/5133282.3 1 Defendants requested that Plaintiff make Dr. Becker available for deposition prior to January 22, 2013, to give Defendants time to question Dr. Becker about these new theories and then respond to Plaintiff’s motion for post-judgment royalties by the current deadline of January 25, 2013. Despite Defendants’ repeated attempt to reach a compromise, Plaintiff refused to produce Dr. Becker unless Defendants agreed to inappropriate, unrelated, and burdensome terms.1 (See Noona Dec. Exs. 1, 2; Noona Dec. ¶ 3.) ARGUMENT As Defendants explained in previous filings, Dr. Becker’s “declaration” is really a supplemental expert report that puts forth an entirely new damages theory. (See D.N. 848, 4-5; D.N. 853, 5-8.) It is black letter law that a party may depose opposing expert witnesses. See Fed. R. Civ. P. 26(b)(4)(A). Because Plaintiff’s expert on damages submitted a supplemental report that relied on facts and reached a conclusion about which Defendants previously have not had the opportunity to examine him, Defendants should be able to question him about these new facts and opinions. The right to depose experts that rely on additional evidence that was not presented at trial, as Dr. Becker has done here, is expressly supported in the post-judgment royalties context. See Paice LLC v. Toyota Motor Corp., No. 2:04-cv-00211-DF, D.N. 241 (E.D. Tex. Mar. 13, 2008) (ordering discovery, including depositions, and briefing over a three month period leading up to an evidentiary hearing for purposes of determining an ongoing royalty). Indeed, the court in Paice, responding to the Federal Circuit’s direction to allow the parties to present evidence 1 Plaintiff’s refusal to promptly make Dr. Becker available for deposition without unreasonable conditions has caused delay and further condensed an already brief period of time to respond to Plaintiff’s Motion for an Award of Ongoing Royalties. This fact further supports Defendants’ request to delay briefing and postpone ruling on that motion. Defendants ask the Court to consider this additional fact in deciding whether to grant Defendants’ Motion to Postpone Briefing and Ruling on Plaintiff’s Motion for Post-Judgment Royalties. (D.N. 847.) 01980.51928/5133282.3 2 before determining an ongoing royalty, also ruled that depositions may be taken of “any witness that execute[d] a declaration submitted with the other party’s brief” in addition to “experts that submitted expert reports.” Paice, No. 2:04-cv-00211-DF, D.N. 241 at 3; see also Creative Internet Adver. Corp. v. Yahoo! Inc., 674 F. Supp. 2d 847, 856-57 (E.D. Tex. 2009) (citing to deposition testimony produced post-trial in discussing ongoing royalty determination). Thus, Dr. Becker should be made available for deposition even were his declaration not properly characterized as a supplemental expert report. CONCLUSION For the foregoing reasons, Defendants respectfully request this Court grant their Motion to Compel Deposition of Dr. Becker and order Plaintiff to make Dr. Becker available for deposition. Defendants further request that the Court order that the deadline for Defendants’ opposition to Plaintiff’s Motion for an Award of Post-Judgment Royalties be extended until at least seven days after Plaintiff makes Dr. Becker available for deposition.2 DATED: January 16, 2013 /s/ Stephen E. Noona Stephen E. Noona Virginia State Bar No. 25367 KAUFMAN & CANOLES, P.C. 150 West Main Street, Suite 2100 Norfolk, VA 23510 Telephone: (757) 624.3000 Facsimile: (757) 624.3169 senoona@kaufcan.com 2 Defendants note this requested relief does not alter the relief sought in Defendants’ Motion to Postpone Briefing and Ruling on Plaintiff’s Motion for Post-Judgment Royalties. (D.N. 847.) Defendants request that the Court compel the deposition of Dr. Becker, and that the deposition be at least seven days prior to the deadline for Defendants’ opposition to Plaintiff’s Motion for an Award of Post-Judgment Royalties, whenever that deadline may be. 01980.51928/5133282.3 3 David Bilsker David A. Perlson QUINN EMANUEL URQUHART & SULLIVAN, LLP 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: (415) 875-6600 Facsimile: (415) 875-6700 davidbilsker@quinnemanuel.com davidperlson@quinnemanuel.com Counsel for Google Inc., Target Corporation, IAC Search & Media, Inc., and Gannett Co., Inc. By: /s/ Stephen E. Noona Stephen E. Noona Virginia State Bar No. 25367 KAUFMAN & CANOLES, P.C. 150 W. Main Street, Suite 2100 Norfolk, VA 23510 Telephone: (757) 624-3000 Facsimile: (757) 624-3169 Robert L. Burns FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190 Telephone: (571) 203-2700 Facsimile: (202) 408-4400 Cortney S. Alexander FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 3500 SunTrust Plaza 303 Peachtree Street, NE Atlanta, GA 94111 Telephone: (404) 653-6400 Facsimile: (415) 653-6444 Counsel for Defendant AOL Inc. 01980.51928/5133282.3 4 CERTIFICATE OF SERVICE I hereby certify that on January 16, 2013, I will electronically file the foregoing with the Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to the following: Jeffrey K. Sherwood Kenneth W. Brothers DICKSTEIN SHAPIRO LLP 1825 Eye Street NW Washington, DC 20006 Telephone: (202) 420-2200 Facsimile: (202) 420-2201 sherwoodj@dicksteinshapiro.com brothersk@dicksteinshapiro.com Donald C. Schultz W. Ryan Snow Steven Stancliff CRENSHAW, WARE & MARTIN, P.L.C. 150 West Main Street, Suite 1500 Norfolk, VA 23510 Telephone: (757) 623-3000 Facsimile: (757) 623-5735 dschultz@cwm-law.cm wrsnow@cwm-law.com sstancliff@cwm-law.com Counsel for Plaintiff, I/P Engine, Inc. /s/ Stephen E. Noona Stephen E. Noona Virginia State Bar No. 25367 KAUFMAN & CANOLES, P.C. 150 West Main Street, Suite 2100 Norfolk, VA 23510 Telephone: (757) 624.3000 Facsimile: (757) 624.3169 senoona@kaufcan.com 12159778v1 01980.51928/5133282.3 5