Wi-Lan Inc. v. Sharp Corporation et al

Filing 466

MEMORANDUM ORDER re (281 in 1:15-cv-00788-LPS, 364 in 1:15-cv-00379-LPS) MOTION for Reconsideration is GRANTED IN PART and DENIED IN PART; (374 in 1:15-cv-00379-LPS) (290 in 1:15-cv-00788-LPS) MOTION to Strike is DENIED; (365 in 1:15-cv-00379-LPS, 282 in 1:15-cv-00788-LPS) MOTION for Leave to Supplement the Initial Expert Reports of David Kennedy is DENIED. Signed by Judge Leonard P. Stark on 12/10/18. Associated Cases: 1:15-cv-00379-LPS, 1:15-cv-00788-LPS (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
WI-LAN INC.,
Plaintiff,
V.

C.A. No. 15-379-LPS
SHARP ELECTRONICS CORPORATION,
Defendant.

WI-LAN INC.,
Plaintiff,
V.

C.A. No. 15-788-LPS
VIZIO, INC.,
Defendant.

MEMORANDUM ORDER
At Wilmington this 10th day of December, 2018 :
Pending before the Court is Plaintiff Wi-LAN Inc. 's ("Plaintiff') Motion for
Reconsideration (C.A. No. 15-379 D.I. 364; C.A. No. 15-788 D.I. 281), Plaintiffs Motion for
Leave to Supplement the Initial Expert Reports of David Kennedy (C.A. No. 15-379 D.I. 365 ;
C.A. No. 15-788 D.I. 282), and Defendants Sharp Electronics Corporation and Vizio, Inc.'s
("Defendants") Motion to Strike Portions of Plaintiff's Supplemental and Rebuttal Expert

Reports (C.A. No. 15-379 D.I. 374; C.A. No. 15-788 D.I. 290). 1 Having reviewed the parties'
submissions (D.I. 364, 365 , 368, 373 , 375, 379, 384, 394), IT IS HEREBY ORDERED that, for
the reasons set forth below, Plaintiffs Motion for Reconsideration is GRANTED IN PART and
DENIED IN PART, Plaintiffs Motion for Leave to Supplement is DENIED, and Defendants'

Motion to Strike is DENIED.2
I.

WI-LAN'S MOTION FOR RECONSIDERATION
1.

On June 27, 2018, Defendants filed a Motion to Preclude Portions of Plaintiffs

Expert Reports on Infringement that, in relevant part, sought to strike Plaintiffs induced
infringement theory and sought to strike the Tanner Report in its entirety. (D.I. 336) Following
briefing (D.I. 337, 351 , 354), during a teleconference on July 31 , 2018 the Court granted those
portions of the motion. (See D.I. 362 at 25-28, 38) The Court ruled that Plaintiffs late
disclosure of its indirect infringement theories must be stricken because Plaintiff repeatedly
assured both the Court and Defendants that all of its liability theories had been disclosed during
the multiple reviews of Plaintiffs infringement contentions. (See id. at 26) The Court further
found that the Pennypack factors supported striking Plaintiffs indirect infringement theory. (See
id. at 26-28) Based on this ruling, the Court then determined that the Tanner Report became

"largely or at least entirely irrelevant;" however, the Court also felt that Mr. Tanner' s reliance on
reports of other experts not

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this case was not proper. (See id. at 38) On August 14, Plaintiff

moved for reconsideration of these rulings. (D.I. 364)

1

While this Order will resolve the motions on both dockets, all further docket citations
will be to the C.A. No. 15-379 action.
2

While these motions were set for oral argument on December 19, 2018 (see D.I. 439),
the Court finds that further argument on these motions is not needed.
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2.

Pursuant to Local Rule 7.1.5, motions for reconsideration should be granted only

"sparingly." The decision to grant such a motion lies squarely within the discretion of the district
court. See Dentsply Int '!, Inc. v. Kerr Mfg. Co., 42 F. Supp. 2d 385,419 (D. Del. 1999);
Brambles USA, Inc. v. Blocker, 735 F. Supp. 1239, 1241 (D. Del. 1990). These types of motions
are granted only if the Court has patently misunderstood a party, made a decision outside the
adversarial issues presented by the parties, or made an error not of reasoning but of apprehension.
See Shering Corp. v. Amgen, Inc., 25 F. Supp. 2d 293, 295 (D. Del. 1998); Brambles, 735 F.
Supp. at 1241. "A motion for reconsideration is not properly grounded on a request that a court
rethink a decision already made." Smith v. Meyers, 2009 WL 5195928, at * 1 (D. Del. Dec. 30,
2009); see also Glendon Energy Co. v. Borough of Glendon, 836 F. Supp. 1109, 1122 (E.D. Pa.
1993). It is not an opportunity to "accomplish repetition of arguments that were or should have
been presented to the court previously." Karr v. Castle, 768 F. Supp. 1087, 1093 (D. Del. 1991).
A motion for reconsideration may generally be granted only if the movant can show at least one
of the following : (i) there has been an intervening change in controlling law; (ii) the availability
of new evidence not available when the court made its decision; or (iii) there is a need to correct
a clear error of law or fact to prevent manifest injustice. See Max 's Seafood Cafe by Lou-Ann,
Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). However, in no instance should
reconsideration be granted if it would not result in amendment of an order. See Schering, 25 F.
Supp. 2d at 295.
3.

With respect to the ruling striking Plaintiffs indirect infringement theory,

Plaintiff substantially restates its prior arguments that were already considered and rejected by
this Court, adding that the Court should have applied the Paulis factors rather than the

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Pennypack factors. (See D.I. 364 at 8-10) Since Plaintiff relied on the Pennypack factors in its
initial motion (see D.I. 351 at 4; D.I. 354 at 2), the Court will not reconsider its prior decision
based on a standard Plaintiff could have asked the Court to have applied initially.
4.

With respect to the ruling relating to the Tanner Report, Plaintiff argues that the

Court's understanding that its order striking the indirect infringement theories renders the Tanner
Report irrelevant is incorrect. Plaintiff argues that Mr. Tanner did not opine on indirect
infringement, but rather "demonstrate[d] the extent of use of the methods of the '654 patent by
the accused products," which is relevant to damages for direct infringement, observing that the
only expert who relied on Mr. Tanner' s opinions was Plaintiff's damages expert, Dr. Kennedy.
(D.I. 364 at 4-5) Defendants argue that Plaintiff's own citation to Dr. Kennedy's report shows
that he "relied on the Tanner Report for his opinions that users likely infringe, not for damages."
(D.I. 368 at 7) Based on the limited excerpts of Mr. Kennedy' s report provided to the Court, it
appears that Mr. Kennedy did, indeed, rely on Mr. Tanner's opinions for the extent of use of the
patented invention, i.e. , the ubiquity of the invention, which is relevant to damages.
Accordingly, the Court will amend its prior ruling as follows: the portions of the Tanner Report
that cite to and rely on the Wallace and Frankel Reports remain stricken for the reasons stated
during the teleconference (see D.I. 362 at 38), but the remainder of the Tanner Report is not
stricken from this case.

II.

WI-LAN'S MOTION FOR LEAVE TO SUPPLEMENT
THE INITIAL EXPERT REPORTS OF DAVID KENNEDY
5.

On August 17, 2018, Plaintiff moved for leave to supplement the initial expert

reports on damages of David Kennedy, in light of the Court' s July 31 Order striking the initial

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Tanner Report. (D.I. 365 at 1) As Plaintiff notes, "Mr. Kennedy' s reports were submitted before
the Court precluded Mr. Tanner's report." (Id. at 5) With portions of the Tanner Report
reinstated pursuant to the Court's ruling above, the request to supplement is moot.

III.

DEFENDANTS' MOTION TO STRIKE PORTIONS OF PLAINTIFF'S
SUPPLEMENTAL AND REBUTTAL EXPERT REPORTS
6.

On September 10, 2018, Defendants moved to strike Section IV oflonut Mirel's

Supplemental Expert Report and Section VIII.D .7 of Craig Tanner's Rebuttal Expert Report, on
two grounds. (See D.I. 374) First, Defendants argue that the two reports improperly circumvent
the Court's July 31, 2018 Order striking the initial Tanner Report. Given the Court' s ruling
above, and the fact that the two reports do not rely on the Wallace or Frankel Reports, this
argument is now moot.
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Second, Defendants argue that the Mirel Supplemental Report improperly

contains new opinions that are not proper supplementation under the Court's July 30 Order,
which limited the supplemental report to "(i) discovery produced by Defendants after June 15,
2018, and (ii) additional discovery ordered by the Court during the June 15, 2018 Discovery
Hearing and in C.A. No . 15-379, D.I. 344." (D.I. 360 at 2 n.1) Plaintiff contends that Section IV
of the Mirel Supplemental Report, which is entitled "Interlaced Video Sources," provides an
"evidence-based description of the [four] sources from which the accused televisions receive
interlaced video." (D.I. 384 at 2) Plaintiff further contends that these opinions demonstrate
Defendants' direct infringement, particularly through "testing of the accused television[s] using
one or more of the discussed interlaced video sources." (Id.) The discovery produced by
Defendants after June 15, 2018 included evidence of testing. (See D.I. 344; D.I. 384 at 4)

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Plaintiff argues that it became necessary for Dr. Mirel to explain the interlaced video sources in
order to arrive at his ultimate conclusion that the testing constitutes direct infringement, because
Defendants had not described the format of the video signals used in their testing. (See D.I. 384
at 3-4) Defendants argue that Dr. Mirel cites evidence that was available prior to June 15, 2018,
but they fail to respond to Plaintiffs explanation as to how citation to this earlier-produced
evidence only became necessary after Defendants' testing evidence was produced. (See D.I. 394
at 2) Under the circumstances, Plaintiff properly supplemented Dr. Mirel's report.
8.

Additionally, the Pennypack factors do not support striking Section IV of the

Mirel Supplemental Report. The evidence is important, as it relates to Dr. Mirel's direct
infringement opinions. Defendants are not prejudiced by the disclosures and have had an
opportunity to have their own expert rebut Dr. Mirel' s opinions and to have deposed Dr. Mire 1.
Finally, Defendants' concern about Dr. Mirel relying on already stricken opinions is moot given
the Court's ruling in Section I above.

*

*

*

IT IS FURTHER ORDERED that the parties shall meet and confer and, no later than

December 13, submit ajoint status report regarding the impact, if any, of this Order on the
pending cases and motions.

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