Nuance Communications, Inc. v. International Business Machines Corporation

Filing 237

ORDER: AND NOW, this 12th day of March, 2020, after considering Nuance's Letter Objection to Untimely Hicks Declaration (ECF No. 189), IBMs Letter Opposition to Nuance's Motion to Strike Hicks Rebuttal Declaration (ECF No. 192), Nuance&# 039;s Letter Reply in Support of Nuance's Objection to Hicks Declaration (ECF No. 194), and IBMs Letter Reply in Opposition to Nuance's Objection to Hicks Declaration (ECF No. 195), it is hereby ORDERED that: 1. The Objection to Hickss Second Declaration is OVERRULED; and 2. Nuance is GRANTED LEAVE to call its expert witness for a surrebuttal. AND IT IS SO ORDERED. (Signed by Judge Eduardo C Robreno on 3/12/2020) (jca)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
Nuance Communications, Inc.,
Plaintiff
v.
International Business
Machines Corporation,
Defendant.

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CIVIL ACTION
NO. 16-5173

ORDER
AND NOW, this 12th day of March, 2020, after
considering Nuance’s Letter Objection to Untimely Hicks
Declaration (ECF No. 189), IBM’s Letter Opposition to Nuance’s
Motion to Strike Hicks Rebuttal Declaration (ECF No. 192),
Nuance’s Letter Reply in Support of Nuance’s Objection to Hicks
Declaration (ECF No. 194), and IBM’s Letter Reply in Opposition
to Nuance’s Objection to Hicks Declaration (ECF No. 195), it is
hereby ORDERED that:
1. The Objection to Hicks’s Second Declaration is
OVERRULED; 1 and

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The objection seeks the exclusion of certain expert testimony by way of
written declaration in lieu of live direct testimony. It is not about the
exclusion of expert reports. All witness declarations were due by August 14,
2019. IBM’s submission of a declaration on October 25, 2019, without leave
of the Court, is untimely. But because Nuance will not be unfairly
prejudiced and the evidence is important to the key issues in the case,
Hicks’s Second Declaration will not be excluded. Instead, the Court will
afford Nuance an opportunity for surrebuttal of Hicks’s second declaration by
way of live expert testimony by Schnell.
A court may impose sanctions, including the sanction of exclusion of
testimony, for a party’s failure to comply with a pretrial order. Fed. R.
Civ. P. 16(f); see also Advanced Analytics, Inc. v. Citigroup Glob. Mkts.,
Inc., 301 F.R.D. 31, 35 (S.D.N.Y. 2014). To determine whether evidence will
be excluded for failure to comply with a pretrial order, the Court considers

“(1) the party's explanation for the failure to comply with the [court]
order; (2) the importance of the testimony of the precluded witness; (3) the
prejudice suffered by the opposing party as a result of having to prepare to
meet the new testimony; and (4) the possibility of a continuance.” Softel,
Inc. v. Dragon Med. & Sci. Commc’ns, Inc., 118 F.3d 955, 961 (2d Cir. 1997);
see also Patterson v. Balsamico, 440 F.3d 104, 117 (2d Cir. 2006). And,
contrary to IBM’s argument, bad faith, while considered, is not required for
a court to exclude evidence for a party’s failure to comply with a court
order. Design Strategy, Inc. v. Davis, 469 F.3d 284, 296 (2d Cir. 2006).
That being said, “preclusion is not generally ordered.” Atkins v. Cty. of
Orange, 372 F. Supp. 2d 377, 396 (S.D.N.Y. 2005), aff’d on other grounds sub
nom. Bellotto v. Cty. of Orange, 248 F. App'x 232 (2d Cir. 2007).
The Court applies the Softel factors as follows:
First, as to factor number one, IBM’s explanation weighs in favor of
precluding the evidence. Its explanation for noncompliance is that Hicks
needed to see Schnell’s declaration before preparing a rebuttal declaration.
This explanation is unsatisfactory because Hicks had access to Schnell’s
expert report. And to rebut Schnell, Hicks only needed Schnell’s expert
report because Schnell, as an expert, is only allowed to testify about
matters included in his expert report. See Fed. R. Civ. P.
26(a)(2)(B)(providing that an expert report must contain all opinions to be
offered at trial, the information used to form the opinions, and the exhibits
that support the opinions); Complaint of Kreta Shipping, S.A., 181 F.R.D.
273, 275 (S.D.N.Y. 1998) (“Expert testimony exceeding the bounds of the
expert's report is excludable pursuant to Rule 37(c)(1) . . . .”).
Therefore, the substance of Schnell’s proposed testimony was not novel and
was available to Hicks. This is true even though summary judgment was
granted on one of the counts because it was only granted on the basis that
the count was duplicitous. But IBM’s explanation, although not satisfactory,
does show that IBM was not acting in bad faith.
Second, as to factor number four, the impracticability of a continuance
weighs toward precluding the evidence. Although a continuance is possible,
it would be highly disruptive because it is the eve of the second phase of
the trial and the first phase of the trial has been completed. This
litigation has been ongoing for almost four years, the parties, the
witnesses, and the Court have cleared their schedules to hold trial on March
16th, and the efficient administration of justice would be frustrated by a
further continuance.
Third, as to factor number two, the importance of Hicks’s second
declaration weighs against precluding the evidence. The testimony in Hicks’s
second declaration is of great importance to this case. Indeed, Hicks’s
second declaration elaborates on the general opinions included in Hicks’s
first declaration, provides details applying the general opinions to the
specific software at issue, and responds directly to the opinions in
Schnell’s declaration. The second Hicks declaration goes to the heart of the
case, i.e., what is an update to DeepQA. Thus, this factor weighs heavily
against exclusion.
Fourth, as to factor number three, the lack of unfair prejudice to
Nuance weighs against precluding the evidence. Nuance is not surprised and
thus will not be unfairly prejudiced by having to prepare to cross examine
Hicks on his second declaration, instead of only his first declaration. Both
declarations are grounded on the same opinions and cover the same subject
matter. In fact, the substance of Hicks’s second declaration was provided to
Nuance in Hicks’s expert report. See Cedar Petrochemicals, Inc. v. Dongbu
Hannong Chem. Co., 769 F. Supp. 2d 269, 279 (S.D.N.Y. 2011) (“However, to the
extent that an expert affidavit is within the scope of the initial expert

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2. Nuance is GRANTED LEAVE to call its expert witness
for a surrebuttal.

AND IT IS SO ORDERED.

/s/ Eduardo C. Robreno
EDUARDO C. ROBRENO,
J.

report, it is properly submitted in conjunction with dispositive motions even
outside the time frame for expert discovery.”). And Nuance has had Hicks’s
second declaration for four months, giving Nuance ample time to prepare to
cross examine Hicks on his second declaration.
In sum, weighing the factors above, the Court concludes that the
importance of the evidence and the lack of unfair prejudice to Nuance
outweigh IBM’s unsatisfactory explanation and the impracticability of a
continuance. To ensure the mitigation of any potential unfair prejudice to
Nuance, the Court will allow Nuance to recall Schnell at the conclusion of
Hicks’s testimony for a live surrebuttal of Hicks’s second declaration.

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