J.T. Colby & Company, Inc. et al v. Apple, Inc.

Filing 164

REPLY MEMORANDUM OF LAW in Support re: 83 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Robert T. Scherer.. Document filed by Apple Inc.. (Cendali, Dale)

Dale M. Cendali
Claudia Ray
Bonnie L. Jarrett
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022

Perry J. Viscounty
LATHAM & WATKINS LLP
140 Scott Drive
Menlo Park, CA 94025
Jennifer L. Barry
LATHAM & WATKINS LLP
600 West Broadway, Suite 1800
San Diego, CA 92101-3375

Attorneys for Defendant
APPLE INC.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
J.T. COLBY & COMPANY, INC. d/b/a BRICK
TOWER PRESS, J. BOYLSTON & COMPANY,
PUBLISHERS LLC and IPICTUREBOOKS LLC,
Plaintiffs,
- against -

Case No. 11-CIV-4060 (DLC)
ECF Case

APPLE INC.,
Defendant.

REPLY MEMORANDUM IN SUPPORT OF DEFENDANT’S MOTION TO
EXCLUDE ANY TESTIMONY, ARGUMENT OR EVIDENCE REGARDING
THE EXPERT REPORTS AND OPINIONS OF ROBERT T. SCHERER

TABLE OF CONTENTS
PAGE
PRELIMINARY STATEMENT ..................................................................................................1
ARGUMENT..................................................................................................................................2
I.

MR. SCHERER IS NOT AN EXPERT IN CURRENT TRADEMARK
LAW OR TRADEMARK SEARCHING OR CLEARANCE
PRACTICES. ...........................................................................................................2

II.

MR. SCHERER SHOULD BE PRECLUDED FROM OFFERING
ADMITTEDLY NON-EXPERT OPINIONS ON COMPUTER
SOFTWARE OR PATENTS...................................................................................6

III.

PLAINTIFFS EFFECTIVELY CONCEDE THAT ALL OF MR.
SCHERER’S LEGAL CONCLUSIONS MUST BE EXCLUDED. .......................7

IV.

MR. SCHERER’S PROPOSED TESTIMONY REGARDING PRIOR
LAWSUITS SHOULD BE EXCLUDED UNDER BOTH FED. R. EVID.
(“FRE”) 403 AND 702. ...........................................................................................8

V.

MR. SCHERER SHOULD NOT BE PERMITTED TO OFFER HIS
UNTIMELY AND IMPERMISSIBLE OPINION THAT APPLE ACTED
IN “BAD FAITH.”...................................................................................................9

VI.

THE PERVASIVE FACTUAL ERRORS UNDERLYING MR.
SCHERER’S OPINIONS FURTHER WARRANT EXCLUSION. .....................10

CONCLUSION ............................................................................................................................10

i

CASES
405 Condo Assocs. LLC v. Greenwich Ins. Co.,
No. 11-CV-9662, 2012 U.S. Dist. LEXIS 181922 (S.D.N.Y. Dec. 26, 2012)............................ 6
Arista Records LLC v. Lime Group LLC,
No. 06-CV-5936, 2011 WL 1674796 (S.D.N.Y. May 2, 2011)...................................... 4, 6, 8, 9
Bank of N.Y. Mellon Trust Co. v. Solstice ABS CBO II, Ltd.,
No. 09-CV-9415, 2012 U.S. Dist. LEXIS 180291 (S.D.N.Y. Dec. 20, 2012)............................ 7
Berk v. St. Vincent’s Hosp. & Med. Ctr.,
380 F. Supp. 2d 334 (S.D.N.Y. 2005) ....................................................................................... 10
Cerbelli v. City of N.Y.,
No. 99-CV-6846, 2006 U.S. Dist. LEXIS 69902 (E.D.N.Y. Sept. 27, 2006)............................. 3
Daubert v. Merrell Dow Pharms., Inc.,
509 U.S. 579 (1993) .................................................................................................................... 8
Fernandez v. Central Mine Equip. Co.,
670 F. Supp. 2d 178 (E.D.N.Y. 2009)......................................................................................... 4
Medisim Ltd. v. BestMed LLC,
861 F. Supp. 2d 158 (S.D.N.Y. 2012) ......................................................................................... 3
Nimely v. City of New York,
414 F.3d 381 (2d Cir. 2005)........................................................................................................ 8
R.F.M.A.S., Inc. v. Mimi So,
748 F.Supp.2d 244 (S.D.N.Y. 2010) ......................................................................................... 10
Richmond Steel Inc. v. Puerto Rican Amer. Ins. Co.,
954 F.2d 19 (1st Cir. 1992) ......................................................................................................... 3
Rosado v. Deters,
5 F.3d 119 (5th Cir. 1993)........................................................................................................... 3
Sam’s Wines & Liquors, Inc. v. Wal-Mart Stores, Inc.,
32 U.S.P.Q.2d 1906 (N.D. Ill. 1994)........................................................................................... 2
Snyder v. Wells Fargo Bank, N.A.,
No. 11-CV-4496, 2012 WL 4876938 (S.D.N.Y. Oct. 15, 2012) ................................................ 7
Telebrands Corp. v. HM Import USA Corp.,
No. 09-CV-3492, 2012 WL 3930405 (E.D.N.Y. July 26, 2012) ................................................ 8
United States v. Duncan,
42 F.3d 97 (2d. Cir. 1994)........................................................................................................... 7
ii

United States v. Williams,
506 F.3d 151 (2d Cir. 2007)........................................................................................................ 2
RULES
Fed. R. Evid. 403 ............................................................................................................................ 8
Fed. R. Evid. 702 ...................................................................................................................... 8, 10

iii

PRELIMINARY STATEMENT
Plaintiffs effectively confirmed the merits of Apple’s motion to exclude Robert Scherer’s
so-called “expert” reports when they submitted, along with their opposition brief, proposed
“redacted” versions of those reports, removing certain of his conclusions regarding the ultimate
issues of the case. Plaintiffs suggest the Court should strike, among other things, the section
summarizing the opinions Mr. Scherer intends to present to the jury. While Apple certainly
agrees that Mr. Scherer’s ultimate opinions—and the other passages that Plaintiffs suggest the
Court strike—are inadmissible, the problems with his reports extend far beyond those opinions.
Indeed, as a threshold issue, Mr. Scherer is not qualified to testify as an expert regarding
any of the subjects on which he opines. Plaintiffs try to mask Mr. Scherer’s lack of current
trademark expertise by exaggerating both his past experience and his recent litigation consulting
work. Most notably, Plaintiffs repeatedly reference Mr. Scherer’s work in the Patent and
Trademark Office, when he only worked there for two years as an entry-level attorney forty
years ago. They also claim he is currently practicing trademark law, when all he has done in the
last seven years is prepare a draft expert report in another case and conduct a series of
convoluted searches to support his reports in this case. In this rapidly evolving area of law, a
seven-year practical experience gap cannot be ignored.
Mr. Scherer’s outdated experience in his purported field of expertise is highlighted by the
numerous misstatements and omissions of key legal principles and the various factual errors
made in his reports. Plaintiffs’ Opposition attempts to downplay or explain away these
misstatements, omissions and errors, going so far as to claim that at least one such misstatement
was Mr. Scherer’s “attempt at humor,” when the report at issue and his testimony indicate
otherwise. This Court should reject Plaintiffs’ failed explanations for Mr. Scherer’s mistakes
and exclude his purported “expert” testimony in its entirety.
1

ARGUMENT
I.

MR. SCHERER IS NOT AN EXPERT IN CURRENT TRADEMARK LAW OR
TRADEMARK SEARCHING OR CLEARANCE PRACTICES.
Plaintiffs’ argument for Mr. Scherer’s admission starts with a curious cite to a twentyyear-old out-of-circuit opinion for the proposition that courts have, in general, allowed
intellectual property attorneys to offer expert testimony in trademark cases. (Opp. at 3. 1) Of
course, the narrow threshold question is not whether an intellectual property attorney may be
theoretically eligible to offer expert testimony about some hypothetical topic in a trademark case.
Rather, the question here is whether Mr. Scherer, a long-retired former in-house trademark
attorney, is qualified to testify as an expert in this case regarding current trademark law or
trademark clearance practices. Plaintiffs’ Opposition falls far short of satisfying Plaintiffs’
burden on this question. See, e.g., United States v. Williams, 506 F.3d 151, 160 (2d Cir. 2007).
First, Plaintiffs proudly trumpet Mr. Scherer’s “years” of experience at the PTO as
evidence that he is “eminently qualified” to testify in this matter. (Opp. at 3-4.) Plaintiffs fail to
mention, however, that Mr. Scherer spent just two years working in an entry-level position at the
PTO approximately forty years ago. (Barry Reply Decl., Ex. 13 (“Scherer Dep.”) at 22:2-5; id.
at 25:18-24.) While Mr. Scherer may have gotten his feet wet in the trademark area in his brief
stint at the PTO immediately following his law school graduation in the early 1970s, such work
does not indicate expertise with respect to current trademark law or clearance practices.
Second, Mr. Scherer’s post-PTO experience is similarly irrelevant to his offered
opinions, particularly in light of his unambiguous testimony that it has been seven years since he
1

Contrary to Plaintiffs’ suggestion that Sam’s Wines & Liquors, Inc. v. Wal-Mart Stores, Inc., 32 U.S.P.Q.2d 1906
(N.D. Ill. 1994), supports Mr. Scherer’s proposed testimony in this case simply because he was formerly an
“intellectual property lawyer,” that case expressly recognized that “courts have rejected expert testimony by a
lawyer” where, as is the case here, “the testimony is only intended to instruct as to the applicable trademark law” or
offer conclusions regarding “ultimate issues.” See id. at 1912-13.

2

last engaged in the very practice on which he purports to be a contemporary expert: “[Q:] Can
you tell me the year in which you last cleared a trademark? [A:] 2005.” (Scherer Dep. at 38:1317.) Courts have excluded purported “experts” in similar situations, where the allegedly relevant
experience is outdated 2 and/or where the practices and procedures about which the purported
expert seeks to testify have changed since his relevant experience. 3
Third, Plaintiffs’ attempts to fill Mr. Scherer’s admitted seven-year experience gap are
unavailing, as they consist entirely of (1) Mr. Scherer’s work in this case, (2) his “expert” work
in a prior case in which he did not even submit a report, and (3) his self-serving assurance that he
has “continued to stay abreast of developments in the trademark field” since his 2005 retirement.
(Opp. at 5-6.) Plaintiffs’ circular reliance on Mr. Scherer’s litigation consulting work is
particularly illogical; Mr. Scherer cannot be qualified to testify as an expert in litigation based
essentially on his work in preparing to provide such testimony. 4
Setting aside Mr. Scherer’s litigation consulting work (as the Court should), Plaintiffs are
left only with Mr. Scherer’s own vague, self-serving assurance that he has stayed “abreast of
developments in the trademark field” since his retirement. (Opp. at 5.) Such a generalized
assurance is woefully inadequate to meet the applicable requirements to qualify an expert. 5

2

See, e.g., Rosado v. Deters, 5 F.3d 119 (5th Cir. 1993) (affirming exclusion based on lack of specialized
knowledge where expert had not had refresher course in many years); Richmond Steel Inc. v. Puerto Rican Amer.
Ins. Co., 954 F.2d 19, 21-22 (1st Cir. 1992) (affirming decision to strike expert testimony where 10 years had
elapsed since expert had work experience with facts similar to those at issue).
3
See, e.g., Cerbelli v. City of N.Y., No. 99-CV-6846, 2006 U.S. Dist. LEXIS 69902, *33 (E.D.N.Y. Sept. 27, 2006)
(finding proposed expert unqualified to testify regarding practices developed after he retired from the relevant field).
4
Plaintiffs cite Medisim Ltd. v. BestMed LLC, 861 F. Supp. 2d 158 (S.D.N.Y. 2012), to support the proposition that
post-retirement “professional expert witness” activities can, on their own, render a proposed expert’s experience
sufficiently up-to-date. (Opp. at 6.) Medisim does not, however, stand for that proposition. In Medism, the court
noted that, in addition to the litigation-based expert work related to the subject of his proposed testimony (i.e. digital
conductive thermometry) the expert-at-issue had, since his retirement, “continued to work with medical device
manufacturers in a variety of fields and ha[d] consulted on several projects directly related to digital conductive
thermometry.” Medisim, 861 F.Supp.2d at 168. Mr. Scherer has not performed any such work since his retirement.
5
And, as Apple has already noted, Mr. Scherer has never taught classes, published articles, given public speeches,

3

Fourth, in any event, Mr. Scherer’s generalized assurance that he has stayed abreast of
recent developments in trademark law is belied by the content of his reports, which include
several glaring misstatements or omissions regarding such law. (See Moving Br. at 8-9, 15.)
Plaintiffs go to incredible lengths to explain away or downplay his misstatements or omissions,
but those efforts are not persuasive. For example, Mr. Scherer’s report clearly indicates his
intent to testify that Apple had a duty to perform a comprehensive trademark search. (See id. at
15; Opp. at 8-9 (quoting Mr. Scherer’s claim that “Apple has a duty to properly search and clear
new marks or new uses of existing marks”).) Confronted with the fact that the law imposes no
such duty, Plaintiffs now seek to explain away Mr. Scherer’s admitted misstatement by claiming
that he only used the word “duty” once in his report and, in doing so, he was referring to Apple’s
“ethical” duty rather than any legal duty. (Opp. at 9.) Putting aside the fact that Mr. Scherer is
now apparently claiming to be an expert on business ethics, Plaintiffs’ reimagining of Mr.
Scherer’s written position on this issue is flatly at odds with the plain language of his report and
the inescapable implications of that language. (See, e.g., Scherer Report at 7 (“[I]t is imperative
that the trademark attorney conduct the necessary searches . . .”) (emphasis added).)
By way of further example, Mr. Scherer’s report states that “the PTO has created
arbitrary classes of goods and services numbered from 1 – 45” and that “the primary purpose of
this classification system is to allow the PTO to charge separate filing fees per class.” (Scherer
Report at 9 n.2.) When questioned about this statement in his deposition, Mr. Scherer
or been admitted as an expert regarding the subject matter of his alleged expertise. (Moving Br. at 7.) Because
Plaintiffs cannot dispute those facts, they instead misrepresent Apple’s arguments regarding them. (Opp. at 6.)
Apple does not, as the Plaintiffs claim, argue that each of these facts independently require Mr. Scherer’s exclusion.
Rather, Apple has noted how the absence of such experience viewed in the context of Mr. Scherer’s other deficient
“qualifications,” require his exclusion. See Arista Records LLC v. Lime Group LLC, No. 06-CV-5936, 2011 WL
1674796, *5-6 (S.D.N.Y. May 2, 2011) (excluding alleged expert from testifying regarding statistics because, inter
alia, he “does not teach statistics” and “has never published articles on statistics”); Fernandez v. Central Mine
Equip. Co., 670 F. Supp. 2d 178, 183-84 (E.D.N.Y. 2009).

4

unequivocally confirmed that it remained his opinion that the primary purpose of the PTO’s
classification system “is to allow the PTO to charge separate filing fees per class.” (Scherer Dep.
at 215:14-217:6.) In truth, the PTO’s classification system was implemented pursuant to the
United States’ adoption of the Nice Agreement. (Moving Br. at 8.) Despite Mr. Scherer’s clear
testimony under oath at his deposition that his report reflected his sincere belief on this issue,
Plaintiffs now take the incredible position that this aspect of Mr. Scherer’s report was “Mr.
Scherer’s attempt at humor” and that, since this position was “intended to be humorous,” it
should be discounted accordingly. (Opp. at 9 n.4. 6) Perhaps most troublingly, Mr. Scherer
himself now claims “under penalty of perjury” that this aspect of his report was “intended as
humor.” (Scherer Decl., ¶ 25.) Plaintiffs’ Opposition and Mr. Scherer’s declaration are directly
at odds with Mr. Scherer’s sworn testimony on this subject, and evidence the lengths to which
Plaintiffs will go to qualify Mr. Scherer as an expert.
As another example of Mr. Scherer’s failure to “stay abreast” of current trademark law,
“Mr. Scherer admittedly did not take account of a statement in the PTO Trademark Manual of
Examining Procedures regarding ‘i-formative’ marks” when preparing his written report. (Opp.
at 11.) Plaintiffs scramble to downplay the significance of this omission, characterizing it as a
“minor flaw” in Mr. Scherer’s work. (Id. at 12.) Given that this issue is critically relevant to Mr.
Scherer’s analysis of the descriptive nature of Plaintiffs’ purported trademark, this is far more
than a minor flaw. To the contrary, this omission persuasively demonstrates Mr. Scherer’s lack
of expertise on the current state of trademark law and practice, particularly as that law and
practice applies to the specific facts of this case.
6

Curiously, Plaintiffs claim that if Apple “truly believed” that Mr. Scherer’s understanding of the purposes of the
PTO’s classification system was erroneous, “its counsel could have asked him about the footnote at his deposition.”
(Opp. at 9 n.4.) As indicated above, Apple did, in fact, question Mr. Scherer about this issue in his deposition and
Mr. Scherer embraced the assertion in his report without expressing any purported intention for “humor.”

5

II.

MR. SCHERER SHOULD BE PRECLUDED FROM OFFERING ADMITTEDLY
NON-EXPERT OPINIONS ON COMPUTER SOFTWARE OR PATENTS.
Mr. Scherer’s proposed testimony includes opinions regarding (1) alleged differences

between Apple’s iBooks software and Family Systems’ IBOOK software, and (2) the scope of a
patent owned by Family Systems. (Moving Br. at 9-11.) Plaintiffs’ Opposition confirms that
Mr. Scherer has no expertise related to such matters. (Opp. at 13 (recounting “Mr. Scherer’s
candid admissions that he is not an expert in patent law or in computer software”).)
Notwithstanding his lack of expertise, Plaintiffs claim that Mr. Scherer still should be
permitted to offer these opinions to the jury because he “need not be qualified as an expert in
patent law or computer software” to offer them. (Id. at 12; see also Scherer Decl., ¶ 13 (“tying
this patent to Family Systems’ IBOOK product does not require patent expertise”).) According
to Plaintiffs, there is nothing to suggest “that Mr. Scherer needed to be an expert on computer
software coding, or on construction of the claims in the underlying patent, in order to read the
patent abstracts, web pages, and other data underlying his expert opinion” on these issues. (Opp.
at 14.) In other words, Plaintiffs argue that it does not take an expert to understand these issues.
This argument presents a “Catch 22” for Plaintiffs. If Plaintiffs are correct and one need not be
an expert to understand these issues, then Mr. Scherer’s patent-related and software-related
opinions must be excluded. 7 If Plaintiffs are incorrect and expert testimony on these topics
would be appropriate, then Mr. Scherer’s opinions must be excluded on the separate grounds of
his admitted lack of expertise on those topics. Either way, Plaintiffs lose and Mr. Scherer’s
opinions on these topics should be excluded.
7

See, e.g., Arista, 2011 WL 1674796 at *6 (“[T]o the extent that [the proposed expert’s] opinions do not depend
upon any . . . expertise, they are not appropriate matters for expert testimony.”); 405 Condo Assocs. LLC v.
Greenwich Ins. Co., No. 11-CV-9662, 2012 U.S. Dist. LEXIS 181922, *10-11 n.34 (S.D.N.Y. Dec. 26, 2012)
(“Expert testimony is also inadmissible when it addresses lay matters which the trier of fact is capable of
understanding and deciding without the expert’s help.”).

6

III.

PLAINTIFFS EFFECTIVELY CONCEDE THAT ALL OF MR. SCHERER’S
LEGAL CONCLUSIONS MUST BE EXCLUDED.
Mr. Scherer begins the concluding section of his report by summarizing the six
“opinions” that he intends to present to the jury as an “expert.” (Scherer Report at 44-45.) These
six “opinions”—i.e. a distillation of Mr. Scherer’s intended testimony—can only be described as
pure legal conclusions. Plaintiffs effectively admit as much, submitting to the Court a proposed
“redacted” version of Mr. Scherer’s report removing those opinions, in case “the Court holds that
Mr. Scherer is not permitted to offer conclusory opinions concerning ultimate issues.” (Opp. at
2, 17, 18 n.11; see also Chattoraj Decl. Ex. C.) Plaintiffs thus essentially concede the outcome
necessitated by Second Circuit law—namely, the exclusion of all proposed testimony by Mr.
Scherer stating legal conclusions, including the entire “Opinions” section of his report: “In
evaluating the admissibility of expert testimony, the Second Circuit requires the exclusion of
testimony which states a legal conclusion.” Bank of N.Y. Mellon Trust Co. v. Solstice ABS CBO
II, Ltd., No. 09-CV-9415, 2012 U.S. Dist. LEXIS 180291, *25 (S.D.N.Y. Dec. 20, 2012)
(quoting United States v. Duncan, 42 F.3d 97, 101 (2d. Cir. 1994)) (emphasis added).
Plaintiffs’ proposed redactions identify the most egregious examples of when Mr. Scherer
overstepped the bounds of admissible expert testimony (and the absolute minimum that should
be excluded), but those examples are merely the tip of the iceberg. Indeed, his reports are so
infected with improper legal conclusions, the Court should strike them in their entirety. See
Snyder v. Wells Fargo Bank, N.A., No. 11-CV-4496, 2012 WL 4876938, *5 (S.D.N.Y. Oct. 15,
2012). 8

8

In the event the Court declines to exclude Mr. Scherer’s proposed testimony in its entirety, then Apple respectfully
requests that at least Sections 4, 8, 9, 10, and 16 of his Report and Sections 1 and 3 of his Rebuttal Report be
excluded on the grounds that they present inadmissible legal conclusions or instruction. (Moving Br. at 11-14;
Chattoraj Decl. Ex. C; Chattoraj Decl. Ex. D.)

7

IV.

MR. SCHERER’S PROPOSED TESTIMONY REGARDING PRIOR LAWSUITS
SHOULD BE EXCLUDED UNDER BOTH FED. R. EVID. (“FRE”) 403 AND 702.
Plaintiffs claim that Mr. Scherer should be permitted to present “expert” testimony

regarding prior disputes between Apple and third parties involving other trademarks. (Opp. at
23.) Plaintiffs effectively concede in their proposed redactions that Mr. Scherer’s ultimate
conclusion as to these disputes is inadmissible (Chattoraj Decl. Ex. C at 44), but argue that he
still should be allowed to recount to the jury information that he learned about these disputes
from perusing various blogs and other online sources (Opp. at 23; see also Scherer Report at 44).
Plaintiffs’ position is contrary to FRE 403, FRE 702, and a prior discovery ruling in this case.
First, Mr. Scherer’s proposed testimony is irrelevant, unfairly prejudicial, and risks
wasting time, and thus should be excluded pursuant to FRE 403. (Moving Br. at 22-23.) The
need for exclusion of this testimony is heightened where, as here, the potentially prejudicial
evidence would be presented to the jury under the guise of “expert” testimony. See, e.g.,
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595 (1993) (“Expert evidence can be both
powerful and quite misleading . . . . Because of this risk, the judge in weighing possible prejudice
against probative force under Rule 403 . . . exercises more control over experts than over lay
witnesses.”); Arista, 2011 WL 1674796 at *4 (“The Rule 403 inquiry is particularly important in
the context of expert testimony, ‘given the unique weight such evidence may have in a jury’s
deliberations.’”) (quoting Nimely v. City of New York, 414 F.3d 381, 397 (2d Cir. 2005)). 9

9

Plaintiffs cite three cases purportedly evidencing that Mr. Scherer’s proposed expert testimony regarding prior,
unrelated trademark disputes is relevant and admissible. (Opp. at 23.) All of those cases are inapposite to the
present dispute because none of them deal with either a FRE 403 challenge in general or, more specifically, a
challenge to proposed expert testimony regarding the prior disputes. Indeed, the prior disputes discussed in at least
one of those cases had progressed much further than mere unproven allegations of infringement (such as in the prior
disputes listed in Mr. Scherer’s report)—rather, the court referenced in connection with its bad faith finding a prior
final judgment and order of nearly $400,000 in damages against the defendant in a prior action. See Telebrands
Corp. v. HM Import USA Corp., No. 09-CV-3492, 2012 WL 3930405, *5 (E.D.N.Y. July 26, 2012).

8

Second, Mr. Scherer possesses no specialized knowledge or expertise with respect to this
proposed line of testimony. Indeed, he admits that he had no involvement whatsoever with
Apple’s prior, unrelated trademark disputes, did not review any of the pleadings or materials
from those disputes, and is simply “stating what the news media has reported” with respect to
those disputes. (Barry Reply Decl., Ex. 13 (Scherer Dep.) at 217:20-223:2.) When asked if he
felt he was qualified to opine on those prior disputes, the most Mr. Scherer could muster was that
he feels he is “qualified to report what the news reports were.” (Id. at 222:7-13 (emphasis
added).) Plaintiffs should not be permitted to parade an expert in front of the jury simply to
regurgitate unsubstantiated news reports. Aside from being highly prejudicial, such testimony is
not even remotely “expert” and must be excluded. See Arista, 2011 WL 1674796 at *6.
Third, Judge Forrest already indicated that trademarks not asserted in the Complaint are
outside the permissible scope of this case. (Barry Decl. Ex. 11 (“[T]his Court notes that it will
limit discovery strictly to those trademark claims actually asserted in the Complaint.”).)
Plaintiffs’ characterization of the Court’s Order as not “expressly den[ying]” a discovery request
encompassing other trademarks is misleading and unavailing. (Opp. at 24 n.13.)
V.

MR. SCHERER SHOULD NOT BE PERMITTED TO OFFER HIS UNTIMELY
AND IMPERMISSIBLE OPINION THAT APPLE ACTED IN “BAD FAITH.”
The words “bad faith” do not appear anywhere in the 50-plus pages of Mr. Scherer’s
reports. (See generally Barry Decl., Exs. 1, 2.) Those words also do not appear anywhere in the
first 300-plus pages of his deposition transcript, during which he was repeatedly asked to state all
of the opinions he intended to offer. Those words first appeared in the context of Mr. Scherer’s
“expert” opinions when they were uttered by Plaintiffs’ counsel in a leading question at the end
of Mr. Scherer’s deposition. (Scherer Dep. at 332:23-333:2.) Only then did Mr. Scherer finally
disclose that he apparently intended to opine that Apple acted in “bad faith.” (Id. at 332:239

333:10.) This improper and untimely disclosure violates Fed. R. Civ. Proc. 26 and renders Mr.
Scherer’s proposed “bad faith” opinion “presumptively inadmissible.” R.F.M.A.S., Inc. v. Mimi
So, 748 F.Supp.2d 244, 254 (S.D.N.Y. 2010). Plaintiffs have failed to rebut that presumption,
mustering only (1) the counterfactual claim that the opinion was disclosed in Mr. Scherer’s
reports (in code, apparently, given the complete absence of the words “bad faith” in either one),
and (2) the incredible assertion that providing Apple’s counsel with only a few mid-deposition
minutes to conduct a re-cross examination cured the prejudicial impact of the late disclosure.
VI.

THE PERVASIVE FACTUAL ERRORS UNDERLYING MR. SCHERER’S
OPINIONS FURTHER WARRANT EXCLUSION.
Plaintiffs concede that Mr. Scherer made numerous factual errors in his reports,10 but
claim that he should still be allowed to testify as an expert notwithstanding these errors.
Plaintiffs’ claims, when viewed in the context of Mr. Scherer’s inexperience in recent trademark
law, his misstatements and omissions of trademark law and his admitted factual mistakes, should
be rejected. In sum, Mr. Scherer’s reports include a fatal combination of deficiencies that
overwhelmingly require its exclusion. See FRE 702(b), (d); Berk v. St. Vincent’s Hosp. & Med.
Ctr., 380 F. Supp. 2d 334, 352-56 (S.D.N.Y. 2005).
CONCLUSION
For the reasons set forth herein, Apple’s motion to exclude should be granted.
10

For example, Mr. Scherer relies on an incorrect date of assignment to conclude that Family Systems’ assignment
to Apple was invalid. Plaintiffs make excuses for this incorrect reliance, but do not deny it. (Opp. at 19-20
(explaining that Mr. Scherer had relied on the date of an assignment document filed with the PTO); Scherer Decl., ¶
15(b) (“I focused on the . . . document dated January 29, 2010, rather than the assignment agreement, which I
understand is dated January 27, 2010.”).) As another example, Mr. Scherer admitted that he mistakenly concluded
that Apple “made no attempt to purchase Family Systems’ IBOOK mark in [Japan and the EU].” (Scherer Decl. ¶
15(c); Moving Br. at 16-17.) Again, Plaintiffs’ only response to this admission is to parrot back to the Court his
conclusory assertion that the correct facts do not “materially change” his opinion. (Opp. at 20; Scherer Decl. ¶
15(c).) Mr. Scherer’s reports contained further factual (as well as legal) misstatements on which he built his
opinions. (Moving Br. at 14-22.) Plaintiffs’ responses to these errors are variations on the themes set forth above,
seeking to minimize the import of such errors or confusing the issues set forth in the moving brief in order to
construct and defeat their own straw man arguments. (Opp. at 18-23.)

10

Date: February 5, 2013

Respectfully submitted,
s/ Dale M. Cendali
Dale M. Cendali
Claudia Ray
Bonnie L. Jarrett
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022
Tel: [phone]
Fax: [phone]
Jennifer L. Barry
LATHAM & WATKINS LLP
600 West Broadway, Suite 1800
San Diego, CA 92101-3375
Tel: [phone]
Fax: [phone]

Perry J. Viscounty
LATHAM & WATKINS LLP
140 Scott Drive
Menlo Park, CA 94025
Tel: [phone]
Fax: [phone]

ATTORNEYS FOR DEFENDANT

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