Personal Audio LLC v. Google LLC
MEMORANDUM ORDER DENYING 795 MOTION for Leave to Substitute Expert David Kaplan for Expert Robert Heiblim, Deceased filed by Personal Audio LLC. Signed by Judge Colm F. Connolly on 5/22/2023. (nmf)
Case 1:17-cv-01751-CFC Document 814 Filed 05/22/23 Page 1 of 9 PageID #: 42394
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONAL AUDIO, LLC,
Civil Action No. 17-1751-CFC
Plaintiff Personal Audio, LLC has sued Defendant Google LLC for patent
infringement. A jury trial is scheduled to begin on June 12, 2023. Personal Audio
had planned to call Mr. Robert Heiblim to testify as an expert "on market response,
consumer acceptance, and demand for audio products in the consumer electronics
industry." D.I. 796 at 2. Mr. Heiblim, however, passed away on January 7, 2022.
Pending before me is Personal Audio's motion for leave to substitute David
Kaplan for Mr. Heiblim (D.I. 795).
According to a declaration that Personal Audio submitted in support of its
motion, Personal Audio's attorneys "last communicated directly with Mr. Heiblim
in August [ ] 2021, in relation to his declaration in support of [Personal Audio's]
opposition to Google's unsuccessful attempt to strike his opinions under Daubert."
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D.I. 79713. Personal Audio says that after filing Mr. Heiblim's declaration with
the Court, it "had limited communications with Mr. Heiblim given that the case
had not been scheduled for trial," and that these "limited communications" were
made "through the Gerson Lehrman Group ('GLG'), [an] expert search firm
through which [Personal Audio] retained and paid Mr. Heiblim." In Personal
Audio's words: "Until trial, Mr. Heiblim was not needed for substantive work, so
communicating with GLG appeared sufficient." D.I. 79713.
Personal Audio says that in March 2022-two months after Mr. Heiblim
passed away-a GLG representative reached out to Personal Audio's counsel and
asked if Mr. Heiblim's services were still needed. Counsel says that he told GLG
"that Mr. Heiblim was still needed for trial and that counsel would provide an
update as soon as the Court set a trial date." D.I. 797 1 4.
On June 10, 2022, I held a status conference. During the conference, I said,
"[L]et's pick a week [for trial] that works for folks," and I asked Personal Audio to
give me "some sense of when you would like to do this [trial]." D.I. 810-1 at
71 :25-72:2. Personal Audio's lawyer asked for a date in September, but when I
told him my calendar would not allow that, he responded that "January of  is
what makes the most sense." D.I. 810-1 at 72:3-14. Based on that statement, I set
trial for January 9, 2023. At no point during the conference did Personal Audio
indicate that any witness might be unavailable for a January 2023 trial.
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Although Personal Audio's counsel says that he told GLG that he would
"provide [it] an update as soon as the Court set a trial date," D.I. 797,r 4, he waited
more than three months-until September 27, 2022-to "sen[d] Mr. Heiblim and
GLG an email informing them that trial had been set for January 9, 2023," D.I. 797
Two days later, Personal Audio informed me by letter that "one of [its] expert
witnesses is unavailable January 6 through 11, 2023," that it had "informed Google
of this conflict," and that it "intend[ed] to request that the Court reschedule" the
January 2023 trial date. D.I. 775. The expert referred to by Personal Audio,
however, was not Mr. Heiblim. Even though Personal Audio's counsel had not
received a response to his September 27 emails to Mr. Heiblim and GLG, Personal
Audio says it "believed" at this time that Mr. Heiblim was still "available" for the
January trial date because Mr. Heiblim had previously "indicated that as a principal
in his own consulting firm he had considerable flexibility and control of his
schedule." D.I. 797 ,r 6.
The next day-September 30, 2022-I convened another status conference
by telephone. I said during the call that the case had "been around a while" and
"we need to get it tried." I suggested that "we pick a [new trial] date, and I don't
double-book you, and that will be your date and then we won't book anything else
[on that date] to make sure that we try this case." D.I. 776 at 4:8-14. I then looked
at my calendar and said: "I've got the week of June 12, and that will be just your
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week. I will not schedule any other events, and we will make it yours. Does that
work?" D.I. 776 at 6:2-4. Personal Audio's attorney responded: "That works for
us and our experts." D.I. 776 at 6: 10.
According to Personal Audio, its counsel next reached out to Mr. Heiblim in
late November 2022-about two months after the September 30 conferencewhen counsel left "a voicemail to inform [Mr. Heiblim] of the June 12, 2023 trial
date." D.I. 797 ,I 8. Personal Audio says it also emailed Mr. Heiblim and left a
second voicemail on or around December 21, 2022 and then sent another email to
Mr. Heiblim on January 20, 2023. D.I. 79718.
At some unspecified point after the January 20 email went unanswered,
counsel, in his words, "began to get suspicious." He then "visited [Mr. Heiblim's]
company's website," saw that Mr. Heiblim was no longer listed on the website,
and, through subsequent internet searches, learned on February 3, 2023 that Mr.
Heiblim had died more than a year earlier. D.I. 797112, 9.
Six days later, on February 9, 2023, Personal Audio informed Google of Mr.
Heiblim's passing. D.I. 797,I 12. The parties met and conferred on February 16,
2023. Personal Audio informed Google that it intended to substitute Mr. Heiblim
with another expert, and it would tell Google who the expert was once Personal
Audio identified a suitable replacement. D.I. 797 ,I 13. Google said in response
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that "it would consider any reasonable proposal by [Personal Audio] regarding
substitution." D.I. 810 ,I 6.
Personal Audio spent the next two months searching for a replacement for
Mr. Heiblim. On April 14, 2023, it decided to retain Mr. Kaplan as a substitute
expert. D.I. 797117. The parties met and conferred on April 21. D.I. 797119.
Google stated that it was willing to accommodate a new expert if Personal Audio
agreed to postpone the trial. D.I. 787 at 1; D.I.81018. Personal Audio refused to
agree to a postponement. D.I. 787 at 1; D.I. 810 1 8.
On April 24, 2023, Personal Audio asked for a status conference to resolve
the parties' dispute over Personal Audio's desire to have Mr. Kaplan testify as a
substitute expert at trial. D.I. 787 at 1. I held a telephonic status conference on
April 26, 2023. I told the parties I was not willing to move the trial date because
the case was very old (it was filed in 2015), I had intentionally not double-booked
the trial to guarantee that it could move forward on June 12, and my caseload and
schedule would not allow for a postponement. I also expressed strong doubts that
Personal Audio had exercised the necessary diligence to allow for the substitution
of an expert. I nonetheless told Personal Audio it could file a motion for
substitution. D.I. 808 at 21: 16-17.
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In the Third Circuit, a motion to substitute an expert witness is construed as
a Rule 16(b) motion to modify the scheduling order. Eichorn v. AT&T Corp., 484
F.3d 644,650 (3d Cir. 2007). Under Rule 16, "[a] schedule may be modified only
for good cause and with the judge's consent." Fed. R. Civ. P. 16(b)(4). The rule
"gives the district courts wide latitude to manage discovery and other pretrial
matters, and to set deadlines for amending pleadings, filing motions, and
completing discovery." Eichorn, 484 F.3d at 650. For that reason, the Third
Circuit has "frequently upheld a trial court's exercise of discretion to deny a
party's motion to add experts or other fact witnesses after the close of discovery or
after a deadline in a scheduling order." Id. at 650-51 (citations omitted).
"' Good cause' under Rule 16(b) focuses on the diligence of the party
seeking the modification of the scheduling order." Synygy, Inc. v. ZS Assocs., Inc.,
2015 WL 4578807, at *2 (E.D. Pa. July 30, 2015) (citation omitted). "Although
the existence of prejudice to the party opposing modification may also be
considered, the focus of the inquiry is upon the moving party's reasons for seeking
modification. If that party was not diligent, the inquiry should end." Id. (citation
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Personal Audio argues that I should grant its motion because it "acted with
reasonable diligence upon discovering that Mr. Heiblim was deceased," and it
"promptly notified Google of his passing and further notified Google that it would
be designating a substitute expert." D.I. 796 at 17. But Personal Audio's utter
failure to exercise diligence in confirming in 2022 that Mr. Heiblim would be
available for the June 2023 trial ends the good cause inquiry here. Because of that
failure and Personal Audio's representation to the Court during the September 30
conference that the June trial date "works for us and our experts," I will deny its
Personal Audio does not really dispute that the failure to communicate with
Mr. Heiblim and his firm in 2022 to determine his availability for trial in 2023 was
grossly negligent. Rather, it tries to distance itself from that failure by blaming it
on GLG. It says it is "appalled that GLG never contacted [it] about Mr. Heiblim's
passing." D.I. 796 at 5. And its counsel similarly claims to be "outraged" with
GLG and "shocked to learn that [Mr. Heiblim] had passed away almost a year
before [counsel] discovered it" through his internet searches in February 2023.
D.I. 797,r 10. But GLG is the agent of Personal Audio and its attorneys; and,
therefore, GLG's failures are Personal Audio's failures. Neither Personal Audio
nor its counsel can escape responsibility here because they chose to communicate
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with their expert through an intermediary. The expressions of shock, outrage, and
dismay by Personal Audio and its counsel are apt, and they demonstrate
emphatically how gross the failure to confirm in timely fashion Mr. Heiblim' s
availability for trial was.
Because I find that Personal Audio was not diligent, I need not and will not
analyze how much prejudice Google would suffer if Mr. Kaplan were allowed to
testify as a substitute expert or how much prejudice Personal Audio would suffer
without the testimony of a "marketing expert." See Synygy, 2015 WL 4578807, at
*2 ("Although the existence of prejudice to the party opposing modification may
also be considered, the focus of the inquiry is upon the moving party's reasons for
seeking modification. If that party was not diligent, the inquiry should end.")
(citation omitted). I note, however, that Google has outlined legitimate concerns
that it would be unduly prejudiced if Mr. Kaplan testified as a substitute expert,
including concerns that Mr. Kaplan's replacement report "offers opinions that were
not offered by Heiblim" and that if I allowed substitution on the eve of trial,
Google would need to divert at least some of its trial preparation resources to
assessing and potentially challenging Mr. Kaplan's report. D.I. 809 at 15-17.
There would have been plenty of time to address these concerns and still allow
substitution had Personal Audio been diligent.
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I note, too, that Personal Audio overstates its concerns that it will suffer
prejudice if Mr. Kaplan is not allowed to testify as a "marketing expert." Personal
Audio posits that Mr. Heiblim would have offered "opinions [that] would help the
trier of fact understand the nexus between the claimed features of the invention and
the commercial success of smartphones including such features. " D.I. 796 at 2.
But Personal Audio has designated at least one other expert witness who can testify
about the nexus between the claimed invention's features and the commercial
success of smartphones with such features. See, e.g., D.I. 810-1 , Ex. F.
NOW THEREFORE, at Wilmington on this Twenty-second day of May in
2023 , IT IS HEREBY ORDERED that Plaintiff Personal Audio, LLC's Motion
for Leave to Substitute Expert David Kaplan for Expert Robert Heiblim, Deceased
(D.I. 795) is DENIED.
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