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

Filing 85

DECLARATION of Jennifer L. Barry 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.. (Attachments: # 1 Exhibit 1 (REDACTED), # 2 Exhibit 2 (REDACTED), # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12)(Cendali, Dale)

EXHIBIT 9

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following which they would resume funding the case.

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Before:

up to the end of 2011. And at that point, when I went to them

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initial investment. We have a deferral of fees. That took us

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New York, N.Y.
February 27, 2012
1:00 p.m.

Those first two things happened: They put in an

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and said, we really need you to resume funding, particularly,

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waiting to go, at that point, they began backing off. And

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APPEARANCES

we need X amount for our three experts, who were lined up

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HON. KATHERINE B. FORREST
District Judge

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required to defer the next substantial amount of our fees,

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Defendant.
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put in a sum of money to get the thing started. We were then

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case back in early 2011. The basic deal was, the funding firm

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APPLE, INC.,

funding firms, and we lined up some initial funding for the

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11 CV 4060 (KBF)

So I spent some time in talking with litigation

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v.

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Apple.

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obvious to us Mr. Colby could not afford to litigate with

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Plaintiffs,

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three corporate plaintiffs who are in this case, and it was

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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J.T. COLBY & COMPANY, INC., et al.,

their position was, they were willing to continue funding

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disbursements. They wanted our firm to take it on a

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contingency the rest of the way. Our firm policy was, we don't

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MANATT, PHELPS & PHILLIPS, LLP
Attorneys for Plaintiffs
BY: THOMAS C. MORRISON, ESQ.
NIRAV SHAH, ESQ.
KIRKLAND & ELLIS LLP
Attorneys for Defendant
BY: DALE M. CENDALI, ESQ.
CLAUDIA RAY, ESQ.
BONNIE JARRETT, ESQ.

do contingency cases. I tried to sell the case, but I'm

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relatively new at Manatt, I spent my main career at Patterson

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Belknap, and so Manatt said, no, we can't do it on a

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contingency. And so from about the middle of January to now,

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I've been engaged in discussions with several firms to take

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over the case on a contingency basis. We're currently talking

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with three fairly substantial firms and one smaller firm. One

(In open court)

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firm is coming in this afternoon. Mr. Colby and I are meeting

THE CLERK: In the matter J.T. Colby & Company, Inc.,

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with that firm.

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et al. v. Apple, Inc., 11 CV 4060, counsel please state your

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names for the record.

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imagine, firms that do take cases on a contingency have a very

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elaborate process to go through. That's one issue.

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MR. MORRISON: Thomas Morrison for the plaintiff. And

The reason it's taking a while is, as you might

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I'd like to introduce our client, John Colby.

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THE COURT: Good afternoon.

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funding firm is firm in its commitment to fund the

The second issue, we have to make sure that the

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MR. SHAH: Nirav Shah for the plaintiff as well.

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disbursements, because the expert witnesses alone will be quite

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THE COURT: Good afternoon.

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substantial. And so the funding firm says, we can't give you a

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MS. CENDALI: Hello, your Honor. Dale Cendali,

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final yes or no until we know who the firm is going to be.

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Kirkland & Ellis, for Apple. With me is my partner Claudia Ray

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They don't want to fund a case with a firm that they don't have

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and our colleague Bonnie Jarrett.

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confidence in.

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THE COURT: All right. Good afternoon.

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We have got a couple of things I think to talk about

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place, we will then go to the funding firm, and they have
indicated a willingness to work out an arrangement to resume

So as soon as we can line up the firm to take our

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today. One is, Mr. Morrison, sort of the issue about counsel

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and whether or not you are still going to be counsel, if not,

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funding, disbursement, expertise, transcripts. All of that

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how that's going to impact things. That then feeds into, I

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stuff is going to be quite substantially because this is

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think, schedule and, as part of that, then ultimately some of

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obviously a substantial case. I would like to tell you that we

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the discovery issues I was going to address, whatever needs to

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think we will have that in place in the next two or three

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get addressed today.

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weeks, but I can't say that with any certainty. I do think it

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MR. MORRISON: If I may address that, your Honor.

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would be fairer to everyone, certainly to our client and

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THE COURT: Please.

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probably to the Court, to let the new firm negotiate the final

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MR. MORRISON: Mr. Colby came to us back in 2010, and

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schedule. I think it would be very unfair for us to try to do
that.

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we made an initial attempt to talk settlement with Apple. That

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went nowhere. Mr. Colby is basically a sole proprietor of the

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So that's why we could not walk into court today with

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care about.

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our experts were before they would agree that any of their

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documents could go to those experts. I have never seen those

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MS. CENDALI: That's probably true.

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requirements, certainly not in a case where our experts aren't

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THE COURT: Damages. For that can implicate some of

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from the industry.

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this highly sensitive financial information. Who knows. But

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that also strikes me as something that can be dealt with.

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THE COURT: I myself in private practice asked for,

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received, and also had denied that very same requirement. It

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false under the category You can try that. But I think that it

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this is a reciprocal thing, to show, pre-disclose our damages
counter-expert to their damages counter-expert.

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is, except under the most unusual circumstances, where there

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are trade secrets involved, it is not something which typically

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is necessary.

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MS. CENDALI: Well, we don't see any reason why --

THE COURT: Well, I -- the only one that I have to say
that really sort of gives me any pause in terms of the

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Ms. Cendali, do you think it's still necessary to have

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long-term implications of what could be the potential marketing

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this? I mean, is there a particular reason why a particular

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experts where there could be some marketing issues. I don't

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kind of expert would have a problem here?

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know. I don't know what the nature is, what you're going to be

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MS. CENDALI: Well, we don't know. They never told us

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disclosing, but I didn't find particularly moving that the

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what types of experts that they want or what material would be

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damages expert would really been someone from Compass Lexecon

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shown to them. But Apple is sued all the time. We can easily

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or whoever it's going to be opining on the Apple damages. That

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have experts, perhaps, on both sides of these different issues.

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would be something which should be earth-shattering. You know,

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Like a lot of companies in technology, we don't want them, even

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you guys, why don't we do this. You both obviously feel very

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though they're not supposed to use anything, to try to cleanse

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strongly about it. I don't think the disclosure of the names

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their minds from things, from other matters. So we're

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is something that I would want to require except under the most

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concerned that, hence, the need for the prior disclosure, which

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unusual circumstances. However, I'd like you to make your best

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is, in my experience, very common when it's a technology

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argument as to why a particular -- why for damages and for the

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company in particular, so that if there is an issue, we can

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marketing. And that may require you folks to have a

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decide early on, electively, whether there's an issue with

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conversation about the nature of the kind of testimony you

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regard to that expert. It should be an expert.

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folks are going to have, the kinds of documents you end up

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showing them or not. If it's marketing and it's going to be a

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survey and it's going to be likelihood of consumer confusion

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based upon somebody who will look at the ipicturebooks from

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THE COURT: Well, how much technology is going to
actually be -MR. MORRISON: This is not -- I'm going to meet with

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her and tell her the nature of the three experts. There are

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before and/or will do a consumer study and down the road -- and

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not technology experts. This is not a technology case.

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will also look at, sort of, iBooks and do a consumer study,

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THE COURT: Who's the nature of the three experts?

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that, I think, is not going to be an issue. If they're going

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MR. MORRISON: One is a trademark expert because there

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to be looking at internal marketing plans or something of this

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are a lot of PTO documents that need to be looked at and

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sort, that is potentially -- I don't know. They can make their

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explained to the jury. The second is a damages expert. It

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argument.

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will be someone from a consulting firm. And the third is a

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marketing expert, who would also, if we do any consumer

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surveys, that expert would do the surveys. So that person

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the meet-and-confer process to see if there is an issue, in

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would be looking perhaps at Apple marketing documents, most of

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light of your Honor's guidance.

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which are going to be public.

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THE COURT: OK. So the trademark expert, just so that

MS. CENDALI: That makes sense, because we're just
hearing this for the first time. We can probably do more in

THE COURT: All right. Now, we've got discovery

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closing on June 15. And let me go to sort of the next issue,
which is some of the discovery issues that you folks had raised

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you know, the only thing that they would be allowed to testify

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to in front of the jurors would be practices and procedures.

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before. I don't feel any need to walk through them right now

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They wouldn't be able to go through and do whether or not there

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unless they are still live. But if they are still live, then

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has been fraud on the Trademark Office or anything like that.

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let's put them to rest. If, Mr. Morrison, they cannot be put

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to rest right now, then we'll, you know, maybe you can tell me

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why.

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MR. MORRISON: But we do need someone to walk through
what was filed.
THE COURT: That would be Mr. Colby, whoever filed, as

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MR. MORRISON: Yes. From our standpoint there were

posed to some sort of expert who would do sort of a

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walk-through. But at any event, a trademark expert, that

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will eventually require your intervention. The single most

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strikes me as not an expert that anybody at Apple is going to

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significant one -- and this impacts the initial discovery -- is

two major ones that I don't think have been put to rest and