Prism Technologies v. Sprint Spectrum L.P.

Filing 209

ORDER - Plaintiff's motion, filing 196 is denied in part and granted in part as set forth above. Ordered by Senior Judge Lyle E. Strom. (GJG)

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

)
)
Plaintiff,
)
)
v.
)
)
SPRINT SPECTRUM L.P.,
)
d/b/a SPRINT PCS,
)
)
Defendant.
)
______________________________)

8:12CV123

ORDER

This matter is before the Court on the plaintiff’s
motion (Filing No. 196) to strike a late disclosed witness.

The

plaintiff has filed a brief (Filing No. 197) and index of
evidence (Filing No. 198) in support of its motion.

The

defendant has filed a brief (Filing No. 203) and indices of
evidence (Filing Nos. 204 and 205) in opposition of the motion.
The motion will be granted in part and denied in part.
This is an infringement action in which the plaintiff,
Prism Technologies, L.L.C. (“Prism”), alleges that the defendant,
Sprint Spectrum L.P. (“Sprint”), has infringed a series of its
patents.

The patents in question are germane to United States

Patent Number 6,516,416 (“‘416 patent”).
Mark Morscher authored a prior art reference which
Sprint will use in expert testimony, but, unbeknownst to Sprint
when it identified the reference, Mr. Morscher also worked on the

‘416 patent.

According to Sprint, it discovered Mr. Morscher’s

involvement with Prism and the ‘416 patent only recently.

Sprint

also claims that Prism never informed Sprint of its relationship
with Mr. Morscher despite requests to disclose those involved in
the formation of the ‘416 patent.
Prism objects to the addition of Mr. Morscher to
Sprint’s witness list because the disclosure was made well after
the close of fact discovery.

Therefore, under Federal Rule of

Civil Procedure 26, Prism states the disclosure is untimely and
should be stricken.
The Court finds that the disclosure of Mr. Morscher was
untimely but substantially justified.

The mere use of a prior

art reference did not necessarily notify Sprint of Mr. Morscher’s
personal communications with Prism.

In fact, the delay in

disclosing Mr. Morscher as a witness lies squarely with Prism for
its failure to properly answer discovery requests.
Rule 26(e) provides that a party must supplement its
initial disclosures “if the additional or corrective information
has not otherwise been made known to the other parties during the
discovery process.”

Fed. R. Civ. Pro. 26(e)(1)(A).

Prism

otherwise knew of Mr. Morscher’s relationship with Prism and
Prism’s failure to disclose Mr. Morscher in previous discovery
does not shield it from that knowledge.
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In the event that the Court ruled in Sprint’s favor,
Prism requested that the Court limit Mr. Morscher’s testimony to
his communications as a member of CompuServe.
with Prism.

The Court agrees

The Court will limit Mr. Morscher’s testimony to the

alleged conversations during his time at CompuServe regarding
‘416 and he should not testify regarding the CompuServe RPA prior
art.
IT IS ORDERED that the plaintiff’s motion is denied in
part and granted in part as set forth above.
DATED this 16th day of May, 2014.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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