Oracle America, Inc. v. Google Inc.

Filing 273

ORDER SETTING CONFERENCE WITH DAMAGES EXPERT CANDIDATES. Signed by Judge Alsup on August 5, 2011. (whalc1, COURT STAFF) (Filed on 8/5/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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ORACLE AMERICA, INC.,
Plaintiff,

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No. C 10-03561 WHA

v.

ORDER SETTING
CONFERENCE WITH
EXPERT CANDIDATES

GOOGLE INC.,
Defendant.

For the Northern District of California

United States District Court

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The parties have submitted the names and resumes of four candidates to serve as

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court-appointed experts under FRE 706. Two candidates were jointly proposed to testify

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regarding damages. Additionally, each side proposed one candidate to testify regarding the basis

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of consumer demand for Android. A conference will be held with counsel and the two damages

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expert candidates at 8:00 A.M. ON AUGUST 19, 2011. The conference will provide an opportunity

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for the Court to vet the candidates and discuss the proposed scope of assignment appended hereto.

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The question of a second expert will be held in abeyance for the time being.

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Each of the damages expert candidates should submit a letter by AUGUST 15, 2011, setting

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forth a fee proposal and stating whether, in his view, any opinions provided in previous reports or

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testimony would unduly restrict his freedom of movement in arriving at an opinion in this case.

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Additionally, the candidate who submitted a resume dated July 2007 should submit an updated

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resume. Counsel shall ensure that both damages expert candidates receive copies of this order

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and the proposed scope of assignment.

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IT IS SO ORDERED.

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Dated: August 5, 2011.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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SCOPE OF ASSIGNMENT FOR RULE 706 EXPERT

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[For Discussion Only]

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Under Rule 706 of the Federal Rules of Evidence, the Court finds that the complexity

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and magnitude of damages at issue in this patent and copyright infringement action are so

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exceptional as to warrant the appointment of a court-appointed expert under Rule 706.

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For the Northern District of California

United States District Court

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The Federal Rules of Evidence allow a court to appoint an expert either “on its own
motion or on the motion of any party.” FRE 706(a). Rule 706(a) provides:
The court may appoint any expert witnesses agreed upon by the
parties, and may appoint expert witnesses of its own
selection. . . . A witness so appointed shall be informed of the
witness’ duties by the court in writing, a copy of which shall be
filed with the clerk, or at a conference in which the parties shall
have opportunity to participate. A witness so appointed shall
advise the parties of the witness’ findings, if any; the witness’
deposition may be taken by any party; and the witness may be
called to testify by the court or any party. The witness shall be
subject to cross-examination by each party, including a party
calling the witness.
As recognized by the Federal Circuit in Monolithic Power Sys., Inc. v. O2 Micro Int’l

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Ltd., 558 F.3d 1341, 1348 (Fed. Cir. 2009), under Ninth Circuit law, “district courts enjoy wide

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latitude to make these appointments.” In Monolithic, the Federal Circuit held that the district

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court did not abuse its discretion in appointing a Rule 706 expert, because the court properly

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administered the standards set by the rule — such as allowing the parties to show cause why an

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expert should not be appointed, instructing the parties to nominate and agree upon candidates,

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providing the witness with detailed written instructions, and making the witness available for

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depositions and examination at trial — and the case presented “unusually complex” issues with

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“starkly conflicting expert testimony.” Ibid.

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The damages arguments advanced to date in the instant action have been complex and

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contradictory. The underlying patent claims are numerous and highly technical, and their

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relationships with the parties’ products and revenues are not straightforward. Given this

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backdrop, the Court finds that this dispute warrants the appointment of a Rule 706 expert to

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help the jury evaluate contradictory damages evidence. Ibid.

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A Rule 706 damages expert shall be appointed to testify at trial regarding the amount of

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damages that may be attributable to any proven infringement. A second Rule 706 expert may

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be appointed to testify at trial concerning whether or not the tried claims constitute the basis of

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demand for Android. In order to provide the foregoing testimony, the expert(s) shall do the

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following in a timely manner consistent with the case management schedule:

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•

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Study and evaluate all relevant testimony and documents that have been
produced in discovery.

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Study and evaluate the expert reports by both sides.

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Make requests to counsel for such additional materials as will be needed.

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Meet with the two sides’ experts to discuss the issues and their respective views

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For the Northern District of California

United States District Court

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in non-recorded sessions. Whether anything said by anyone in these sessions

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will be viable as evidence shall be discussed with counsel.

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Prepare a report on subjects concerning which the expert will testify at trial.

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Sit for a deposition.

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