Walker Digital LLC v. Google Inc. et al.
MEMORANDUM ORDER denying without prejudice 300 MOTION To Exclude Testimony Regarding Commercial Success of the Accused Google Products and Services , granting 312 MOTION to Strike Untimely Infringement Theories. Signed by Judge Sue L. Robinson on 6/14/2013. (nmfn)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
WALKER DIGITAL, LLC,
Civ. No. 11-309-SLR
GOOGLE INC., MICROSOFT CORP,
day of June, 2013, having considered plaintiff Walker
Digital, LLC's ("Walker Digital") motion to exclude testimony regarding commercial
success of the accused Google products and services (D.I. 300), and defendant
Microsoft Corporation's ("Microsoft") motion to strike untimely infringement theories (D. I.
312), as well as the papers submitted therewith;
IT IS ORDERED that:
1. Background. On April11, 2011, Walker Digital filed suit in this district
against multiple defendants, including Google Inc. ("Google"), Samsung
Telecommunications America, LLC ("Samsung"), and Microsoft alleging infringement of
United States Patent No. 6,199,014 ("the '014 patent"). (D.I. 1) Samsung answered
and counterclaimed against Walker Digital on June 20, 2011, Google on June 21, 2011,
and Microsoft on July 11, 2011. (D.I. 36, 39, 55) Walker Digital answered Google and
Samsung's counterclaims on July 11, 2011 and Microsoft's on August 1, 2011. (D.I. 53,
54, 64) Fact discovery closed on October 22, 2012. (D. I. 138) The court has
jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
2. Standard. "Trial judges are afforded wide discretion in making rulings on the
admissibility of evidence." Quinn v. Consolidated Freightways Corp. of Delaware, 283
F.3d 572, 576 (3d. Cir. 2002) (citations omitted). "[T]he exclusion of critical evidence is
an 'extreme' sanction, not normally to be imposed absent a showing of willful deception
or 'flagrant disregard' of a court order by the proponent of the evidence." Meyers v.
Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 904 (3d Cir. 1977), rev'd on
other grounds. Appropriate sanctions for violation of a scheduling order by a failure to
disclose or supplement with respect to Fed. R. Civ. P. ("Rule") 26(a) or (e), are provided
at Rule 37(c). Courts in the Third Circuit consider five factors when deciding whether to
preclude evidence under Rule 37:
(1) the prejudice or surprise to a party against whom the
evidence is offered; (2) ability of the injured party to cure the
prejudice; (3) likelihood of disruption of trial; (4) bad faith or
willfulness involved in not complying with the disclosure
rules; and (5) importance of the evidence to the proffering
GlobespanVirata, Inc. v. Texas Instruments, Inc., Civ. No. 03-2854, 2005 WL 1638136
at *2 (D. N.J. July 12, 2005) (citing Quinn, 283 F.3d at 577) (Pennypack factors).
3. Motion to exclude testimony. On August 13, 2012, Walker Digital served
interrogatories requesting financial information regarding the accused instrumentalities,
two months before close of fact discovery. On September 17, 2012, Google provided
no substantive information, instead, offering to "meet and confer" with Walker Digital.
Walker Digital asserted that Google's revenue data was relevant to the issue of
commercial success, a secondary consideration of non-obviousness. Google
disagreed, stating that the court bifurcated the case and allowed the parties to only
seek "limited financial discovery." (D. I. 100 at 4) The parties conferred from
September 19-21, 2012 without resolution; however, Google offered a 30(b)(6) witness
to testify about limited financial matters. (D. I. 346 at 3) Walker Digital then filed a
motion to compel the financial data on October 22, 2012, the day fact discovery closed.
(D.I. 237) The court denied the motion per its policy that discovery motions are not to
be filed in patent cases absent prior approval, but invited the parties to schedule an inperson discovery conference to resolve any disputes. (D. I. 264) On October 26, 2012,
Walker Digital took the deposition of Google's 30(b)(6) witness, which included financial
topics and information regarding commercial success. (D.I. 347, ex. 6 at 76-78, 103:8104:11) On December 21, 2012, Google supplemented its interrogatory responses with
additional financial data, including revenue "attributable to Street View generally," for
May 2009-September 2012. 1 (D.I. 346 at 6; D.l. 300, ex. D)
4. After review, the court concludes that the financial data supplied in the
supplemental interrogatory is not well beyond or inconsistent with the testimony of
Google's 30(b)(6) witness. Further, Walker Digital had ample opportunity to seek the
court's assistance in obtaining financial data earlier, but did not do so. After Google
supplemented its interrogatory response, the court held a discovery conference on
January 9, 2013 and a status conference on February 6, 2013. Walker Digital
Google avers the information was consistent with its expert's deposition
testimony. (D. I. 346 at 6)
communicated to the court that there were no issues with respect to Civ. No. 11-309 for
discussion at the status conference. Walker Digital had the opportunity to depose a
30(b)(6) witness on financial topics and chose not to follow up with the court after the
denial of its motion to compel. Nor has Walker Digital shown evidence of bad faith as
required for exclusion. For these reasons, on balance, the various Pennypack factors
weigh against precluding Google's disclosed financial data. The court denies Walker
Digital's motion to exclude. 2
5. Motion to strike the late instrumentalities. On August 5, 2011, the court
ordered Walker Digital to identify the instrumentalities for infringement to focus
discovery. On August 19, 2011, Walker Digital identified Bing Maps and Streetside and
further provided Microsoft with formal infringement contentions on December 2, 2011.
6. On September 25, 2012, during his deposition, a Microsoft engineer
mentioned that Microsoft used Google Maps for competitive analysis. Walker Digital
informed Microsoft (via email on October 12, 2012) that it intended to allege
infringement based on Microsoft's internal use of Google Maps. Another engineer, on
October 18, 2012, testified about an "Internal System" developed and used by
Microsoft. Walker Digital then alleged these two additional instrumentalities against
Microsoft and provided discussion regarding these in its expert report dated November
Walker Digital may identify this issue as a topic for discussion at the pretrial
conference if Google appears to be presenting as trial evidence documents and/or
testimony beyond the scope discussed above.
7. Given that Microsoft did not disclose these instrumentalities until the close of
fact discovery, it is not surprising that these instrumentalities were not vetted by
Microsoft and Walker Digital through the fact discovery process. However, upon
learning about the "Internal System" (which was based on a publically available 2009
paper and 2010 patent application), 3 Walker Digital chose to present its infringement
allegations in a conclusory fashion in its expert report and did not provide an
infringement chart. (D.I. 311, ex. 6 at ,-r,-r128-134) At this late stage, it is unreasonable
for Microsoft to respond to conclusory allegations, with information that was not vetted
through the discovery process. Further, as to Microsoft's internal use of Google Maps,
Microsoft was not given the opportunity to participate in the discovery process related
thereto. Therefore, Microsoft's motion to strike is granted.
8. Conclusion. Based on the foregoing, the court denies without prejudice
Walker Digital's motion to exclude testimony regarding commercial success of the
accused Google products and services (D. I. 300), and grants Microsoft's motion to
strike untimely infringement theories (D. I. 312).
See Billy Chen et al., Integrated Videos and Maps for Driving Directions,
presented at the ACM UIST 2009 Conference in Canada on October 7, 2009; U.S.
Patent Application 2010/0235078 A 1. (D.I. 313 at 1 & n.1; D.l. 311, ex. 8; D.l. 359, ex.
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