Prism Technologies v. AT&T et al

Filing 421

MEMORANDUM AND ORDER - IT IS ORDERED: The plaintiff's motion (Filing No. 270 ) is denied in part and granted in part. Mr. Neal may be called as a live witness but the scope of his testimony is limited to the contents of his deposition, the d ocuments which Syniverse produced to Prism, and his competency during his deposition. The documents which the defendant produced for the first time in response to the plaintiff's expert report concerning Microsoft user data and metrocells are s tricken and excluded. The "profit and loss" spreadsheet that contained the line item "Interconnect/Facilities" is not stricken. The defendant's motion (Filing No. 317 ) to file a sur-reply is granted; the sur-rely is deemed filed. Ordered by Senior Judge Lyle E. Strom. (TCL )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
AT&T MOBILITY, LLC,
)
)
Defendant.
)
______________________________)

8:12CV122

MEMORANDUM AND ORDER

This matter is before the Court on the motion (Filing
No. 270) of plaintiff Prism Technologies, L.L.C. (“Prism”) to
strike the fourth amended initial disclosures and late-disclosed
evidence of defendant AT&T Mobility, L.L.C. (“AT&T”).

The motion

has been fully briefed (Filing No. 273, Filing No. 301, Filing
No. 314).

After review of the motions, briefs, indices of

evidence, and relevant case law, the Court finds as follows.
I.

BACKGROUND
AT&T seeks to introduce a third-party trial witness,

two documents, and an expert report which contains information
about which AT&T once claimed it lacked knowledge (Filing No.
273, at 4).

These disclosures come three months after the close

of discovery and one month after Prism served its infringement
report (Id. at 5).

II.

LAW
Federal Rule of Civil Procedure 26(a)(1)(A)(i) requires

parties to disclose “the name . . . of each individual likely to
have discoverable information -- along with the subjects of that
information -- that the disclosing party may use to support its
claims or defenses . . . .”

Rule 26(e) also requires a party

“supplement or correct its disclosure or response . . . in a
timely manner . . . .”
When a party fails to provide information or identify
witnesses in accordance with Rule 26, Federal Rule of Ciivl
Procedure 37(c) prevents the party from relying on such
information or witness at trial “unless the failure was
substantially justified or [] harmless.”

See also Giard v.

Burlington No. Santa Fe Ry. Co., No. CV-12-113, 2014 WL 37687,
*1, *5 (D. Mont. Jan 6, 2014).

AT&T bears the burden “. . . of

establishing that a failure to disclose was substantially
justified or harmless . . . .”

Mitchell v. Ford Motor Co., 318

Fed. Appx. 821, 824 (11th Cir. 2009).
III. DISCUSSION
A.

WITNESS
Syniverse is a third-party, AT&T vendor which provides

roaming interconnection services to AT&T.

Prism decided not to

depose Syniverse but AT&T insisted upon a deposition.
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Syniverse

disclosed Mr. Neal as the witness and produced documents in May
2014.

Also, AT&T amended its disclosures in May 2014.

deposition occurred in June 2014.

The

Prism does not object to

AT&T’s use of the deposition video or transcript.

However, Prism

objects to AT&T’s use of Mr. Neal for live witness testimony
which exceeds the scope of the parties’ limitation.

Filing No.

273, at 7.
Prism claims the parties limited the scope of the
deposition to those documents Syniverse produced.

In support,

Prism cites Prism’s objection in Mr. Neal’s deposition.

Filing

No. 273, at 7 (citing Filing No. 273-1, at 4, Neal Tr.
76:23-77:6).

That objection does not evidence an agreement to

limit the deposition to the documents.

Filing No. 273-1, at 4,

Neal Tr. 76:23-77:6.
AT&T seeks to offer Mr. Neal’s testimony to rebut
Prism’s expert report, specifically, he wishes to contradict his
former statement that Syniverse’s backbone system is an internet
protocol network, an important question of fact in this case.
AT&T claims Mr. Neal was not informed of the Court’s Markman
order construing the term internet protocol network.
The Court finds Mr. Neal can testify at trial
concerning Syniverse documents.

Furthermore, Mr. Neal may offer

rebuttal testimony regarding his own statements in the deposition
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as to whether he competently testified in his deposition.

Prism

will face limited, and not unexpected, prejudice in allowing Mr.
Neal to appear live to testify on these limited issues.

First,

Prism does not object to the Neal’s testimony regarding the
documents Syniverse produced to Prism because Prism does not
object to the playing of Mr. Neal’s deposition at trial.

Second,

AT&T made a specific objection regarding the very testimony AT&T
seeks to offer as a rebuttal.

See Filing No. 301 (“[T]he Court

has issued a construction of IP network, which I don't think Mr.
Neal is even aware of.

But go ahead and answer the question, to

the best of your ability.”).

As the Court understands AT&T’s

justification for calling Mr. Neal, AT&T wishes to clarify that
Mr. Neal did not in fact understand a question to which he
offered an answer.

This goes directly to his competency.

AT&T

shall limit its examination of Mr. Neal to the contents of his
deposition, the documents which Syniverse produced to Prism, Mr.
Neal’s competency, and nothing more.

Beyond these subjects, AT&T

had offered no justification for the late disclosure.
B.

DOCUMENTS
In AT&T’s rebuttal expert reports, AT&T introduced new

evidence which it had not previously disclosed.
The first document is a spreadsheet which reduces
Prism’s damage model.

It contemplates the license agreement
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between Prism and Microsoft.

Concisely, because AT&T’s revenues

include Microsoft products, the license between Prism and
Microsoft should reduce Prism’s damages model by Microsoft
revenues.

AT&T did not produce this spreadsheet or its

underlying documents until its rebuttal export report.
AT&T claims it was blind-sided by Prism’s damages
model, particularly in light of the Court’s Markman order.

AT&T

claims in various briefs that the Court’s Markman order excluded
“internet access” and therefore revenue damages is incompatible
with the Markman order.

The Court does not read its order in

this manner and the Court does not agree that revenue damages
would not have been foreseeable.

The Court finds that AT&T’s

failure to timely deliver the Microsoft revenue numbers to Prism
is unjustified and the evidence will be excluded.
Similarly, the second document is a spreadsheet of data
usage of AT&T’s metrocell system.

Though AT&T’s rebuttal damages

expert uses this document to calculate damages, AT&T never
provided this document to Prism.
sided by Prism’s damages model.

AT&T claims that it was blindAlso, AT&T claims Prism had

numerous opportunities to request metrocell data, but never
specifically requested the “metrocell” data.

Instead, Prism’s

requests were overly-broad and, when the requests were specific,
they requested everything except “metrocell” data.
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The Court

finds that AT&T’s failure to timely deliver the metrocell
information to Prism is unjustified and the evidence will be
excluded.
C.

EXPERT WITNESS
AT&T designated Mr. Weatherly as AT&T’s 30(b)(6)

witness.

Mr. Weatherly is not a technical expert but Prism asked

the witness several technical questions regarding a “profit and
loss” spreadsheet that contained a line item labeled
“Interconnect/Facilities.”

Mr. Weatherly stated he did not know

and could not assist Prism to sufficiently understand the
technicalities of the document.

AT&T plans to use this document

at trial.
Prism asserts that the subsequent explanation of the
document constitutes a late disclosure and moves to strike the
document.

AT&T, however, claims Mr. Weatherly simply lacked such

information, and AT&T acquired its information about the document
from a separate witness.

Prism deposed a technical expert in

between Mr. Weatherly’s multiple depositions but Prism did not
ask that expert’s opinion regarding the document.

Despite the

fact that AT&T designated a 30(b)(6) designee who lacked
knowledge of documents within the scope of the deposition, Prism
had multiple occasions to inquire into the document but failed to
do so.

Therefore, Prism suffers no prejudice because it failed
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to depose other witnesses or inquire into the matter with persons
other than Mr. Weatherly.

The motion will denied.

IT IS ORDERED:
1) The plaintiff’s motion (Filing No. 270) is denied in
part and granted in part.
2) Mr. Neal may be called as a live witness but the
scope of his testimony is limited to the contents of his
deposition, the documents which Syniverse produced to Prism, and
his competency during his deposition.
3) The documents which the defendant produced for the
first time in response to the plaintiff’s expert report
concerning Microsoft user data and metrocells are stricken and
excluded.
4) The “profit and loss” spreadsheet that contained the
line item “Interconnect/Facilities” is not stricken.
5) The defendant’s motion (Filing No. 317) to file a
sur-reply is granted; the sur-rely is deemed filed.
DATED this 30th day of September, 2014.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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