Prism Technologies v. T-Mobile USA, Inc.

Filing 447

ORDER that Prism's 335 Motion to Strike T-Mobile's second supplemental initial disclosures is granted in part and denied in part. Prism's motion to strike the disclosure of potential trial witness Cameron Byrne is granted. Prism's motion to strike the disclosure of potential trial witness Kirti Krishnan is denied. Ordered by Senior Judge Lyle E. Strom. (LAC)

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

)
)
Plaintiff,
)
)
v.
)
)
T-MOBILE USA INC.,
)
)
Defendant.
)
______________________________)

8:12CV124

MEMORANDUM AND ORDER

This matter is before the Court on the plaintiff’s
motion (Filing No. 335) to strike the defendant’s second
supplemental initial disclosures.

The plaintiff filed a brief

(Filing No. 336) in support of its motion.

The defendant filed a

brief in opposition (Filing No. 366), to which the plaintiff
replied (Filing No. 403).

After review of the motion, briefs,

indices of evidence, and the applicable law, the Court will grant
the motion in part and deny it in part.
Background
This is an infringement action in which the plaintiff,
Prism Technologies, L.L.C. (“Prism”), alleges that the defendant,
T-Mobile USA, Inc. (“T-Mobile”), has infringed a series of its
patents.
219).

Fact discovery closed on June 13, 2014 (See Filing No.

On July 31, 2015, T-Mobile served supplemental initial

disclosures identifying two new fact witnesses.

T-Mobile added

Kirti Krishnan (“Krishnan”) as its 30(b)(6) witness because the

previous witness is not longer employed at T-Mobile.

Cameron

Byrne (“Byrne”), a member of the T-Mobile Technical Staff, System
Design and Strategy, was also added as an potential trial
witness.

Prism moves this Court to strike the second

supplemental initial disclosures as being untimely.
Legal Standard
Federal Rule of Civil Procedure 26(a)(1)(A)(i) requires
that parties provide "the name and, if known, the address and
telephone number 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, unless the use would be solely for impeachment.”

In

addition, Rule 26(e)(1) requires that a party "supplement or
correct its disclosure or response . . . in a timely manner if
the party learns that in some material respect the disclosure or
response is incomplete or incorrect, and if the additional or
corrective information has not otherwise been made known to the
other parties during the discovery process or in writing."
Under Rule 37(c), "[i]f a party fails to provide
information or identify a witness as required by Rule 26(a) or
(e), the party is not allowed to use that information or witness
to supply evidence on a motion, at a hearing, or at a trial,
unless the failure was substantially justified or is harmless."
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The Eighth Circuit has endorsed four considerations to aid in the
substantial-justification/harmlessness analysis:

“(1) the reason

the party fails to name the witness; (2) the importance of the
testimony; (3) the amount of time the opposing party needs to
properly prepare for the testimony; and (4) whether a continuance
would in some way be useful."

Citizens Bank of Batesville,

Arkansas v. Ford Motor Co., 16 F.3d 965, 966 (8th Cir. 1994).
Analysis
T-Mobile argues that its supplemental disclosures of
potential witnesses Krishnan and Byrne are timely.

Once again,

T-Mobile claims that it was “startled” to learn at the Sprint
trial that Prism’s expert, Dr. Lyon, described providing access
to the Internet as a “protected computer resource.”

Based on

this “new” information, T-Mobile argues that its supplemental
disclosures were timely.

Furthermore, T-Mobile alleges that the

witnesses were known to the Prism a year ago.

The witnesses were

made known to Prism because both are authors of documents
introduced as exhibits at depositions or produced during the
discovery.

In addition, Kishnan was at one time noticed for

deposition, and Byrne is one of the four T-Mobile engineers that
T-Mobile expert, Dr. Proctor, interviewed in forming his opinion.
Both of T-Mobile’s arguments fail.

First, this Court

has previously found that Dr. Lyon’s testimony that providing
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access to the Internet is a “protected computer resource” is not
new information under Rule 26(e) (See Filing No. 395).

Due to

the fact that this information is not new, T-Mobile’s
supplemental disclosures are not timely.

Finally, the fact that

the disclosed witnesses were listed as authors or interviewed for
expert opinions does not make the witnesses known as potential
trial witnesses.

This is not the type of disclosure intended by

the rules.
T-Mobile has failed to timely disclose potential
witnesses under Rule 26(a) and (e) during the discovery process.
The Federal Rules instruct district courts that such a “party is
not allowed to use the information or witnesses . . . unless the
failure was substantial justified or is harmless.”
37(c)(1).

Fed.R.Civ.P.

The Court has considered the four factors outlined in

the Citizens Bank of Batesville case for both witnesses Krishnan
and Byrne.

The Court finds that substantial justification is

present for the addition of Krishnan as a potential witness.
T-Mobile’s previously designated 30(b)(6) witness is no longer
employed at T-Mobile, but Prism was able to depose that witness.
In addition, Krishnan was the manager of the previously
designated witness, and was at one time disclosed as a potential
30(b)(6) designee.

The Court does not find substantial

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justification for the addition of Byrne as a potential witness.
Accordingly,
IT IS ORDERED that Prism’s motion to strike T-Mobile’s
second supplemental initial disclosures is granted in part and
denied in part.
1) Prism’s motion to strike the disclosure of potential
trial witness Cameron Byrne is granted.
2) Prism’s motion to strike the disclosure of potential
trial witness Kirti Krishnan is denied.
DATED this 28th day of September, 2015.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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