GENBAND US LLC v. Metaswitch Networks Corp. et al
ORDER denying 259 & 260 Motions to Strike. Signed by Magistrate Judge Roy S. Payne on 01/09/2016. (rsp2, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
GENBAND US LLC
METASWITCH NETWORKS CORP., ET
Case No. 2:14-cv-33-JRG-RSP
ORDER ON MOTIONS TO STRIKE
Before the Court is a Motion to Strike the Expert Reports of Dr. Robert Akl and Dr. Tim
Williams on Essentiality filed by Plaintiff Genband US LLC (“Genband”) (Dkt. No. 259). Also
before the Court is Genband’s Motion to Strike Testimony on Non-Infringing Alternatives. (Dkt.
These are not Daubert motions under Fed. R. Evid. 702. Instead, both motions are
premised on the argument that Metaswitch Networks Ltd and Metaswitch Networks Corp.
(collectively “Metaswitch”) failed to timely disclose its contentions in the course of discovery.
A party “who has responded to an interrogatory . . . must 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.” Fed. R. Civ. P. 26(e)(1). If a party fails to provide information 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. Fed.
R. Civ. P. 37(c)(1).
A court considers four factors in determining whether a Rule 26 violation is harmless: (1)
the party’s explanation, if any, for its failure to disclose the information in a timely manner; (2)
the prejudice to the opposing party if the evidence is admitted; (3) the possibility of curing such
prejudice by granting a continuance; and (4) the importance of the evidence. See Texas A & M
Research Found. v. Magna Transp. Inc., 338 F.3d 394, 402 (5th Cir. 2003). Courts have broad
discretion in determining whether to admit expert submissions under Rule 37(c). Burleson v. Tex.
Dep’t of Criminal Justice, 393 F.3d 577, 583 (5th Cir. 2004).
The Federal Rules contemplate that contention interrogatories need not necessarily be
answered early in a case. See Fed. R. Civ. Proc. 33(a)(2); see also Rule 33 advisory committee’s
note (1970 amendment, subdivision (b)) (“Since interrogatories involving mixed questions of
law and fact may create disputes between the parties which are best resolved after much or all of
the other discovery has been completed, the court is expressly authorized to defer an answer”). In
responding to interrogatories, a party is “not required  to disclose its experts’ opinions in
advance of the deadline for serving expert reports.” See Beneficial Innovations, Inc. v. AOL LLC,
Case No. 2:07-cv-555, Dkt. No. 260 at 1 (E.D. Tex. May 26, 2010) (Dkt. No. 256); see also IP
Innovation L.L.C. v. Sharp Corp., 219 F.R.D. 427, 430 (N.D. Ill. 2003) (“Plaintiffs’ request for
an invalidity analysis before Sharp is required to produce its expert report is denied as
premature”); Duncan v. Chevron U.S.A., Inc., 2011 U.S. Dist. LEXIS 63707 at *10-11 (E.D. La.
June 15, 2011) (discovery seeking disclosure of expert opinions and bases for such opinions was
premature in light of expert disclosure deadline imposed by the Court).
A. Standards Essentiality Opinions
On April 16, 2014, GENBAND propounded Interrogatory No. 6, which sought
information about whether Metaswitch contended that any claims of the asserted claims were
essential to the practice of any standard:
State your entire factual basis for any contention you have that GENBAND is
subject to a FRAND/RAND commitment including identifying the standard
setting organization, the relevant standard, the claims of any of the Asserted
Patents that you believe are essential to implementation of that standard and the
portion of that standard that you contend any such claims are essential to, all
reasons why you contend any such claim is essential to implementation of that
standard, specifically how you contend GENBAND undertook any such
FRAND/RAND commitment, and what you believe the relevant FRAND/RAND
(Dkt. No. 259-2 at 8). Metaswitch served responses and supplemental responses to this
interrogatory, culminating in a response on May 5, 2015 (the day before the close of fact
discovery) that identified approximately 75 standards “including each of the standards discussed
in  Metaswitch’s expert reports.” See (Dkt. No. 259 at 8).
When it received Metaswitch’s May 5, 2015 response, Genband did not file a motion
arguing that the response was deficient or late, and there is no evidence in the record indicating
that Metaswitch could have served its response earlier. Accordingly, the Court has no reason to
conclude that Metaswitch’s response was untimely. The only remaining question is whether it
was sufficiently complete.
Parties are not required to disclose the details of expert opinions prior to the expert
disclosure deadline. However, a party must provide fair notice of its contentions when this
information is sought during discovery. Metaswitch was therefore required to disclose the
standards it contends are essential, which it did. Metaswitch was not required to disclose the
details of the analysis its experts would subsequently rely upon to render their opinions that these
standards are essential.
Accordingly, the Court finds that the essentiality opinions disclosed in the May 8, 2015
expert reports of Dr. Akl and Dr. Williams were sufficiently disclosed during discovery.
Moreover, Genband had a full and fair opportunity to inquire into the details of these essentiality
opinions during expert discovery. The Court declines to exclude these opinions.
Genband also argues that the purported “rebuttal” opinions of Dr. Akl, served June 19,
2015, are untimely. These opinions were served more than a month after the expert disclosure
deadline. The opinions concern the alleged standards-essentiality of claims 70 and 92 of the ’971
Patent. (Dkt. No. 259-9). Although characterized as “rebuttal” opinions, Dr. Akl’s opinions on
standards essentiality do not appear to address or rebut the opinion of any other expert, other
than to note that “Dr. Beckmann has not provided any opinions regarding claim 21 of the ‘971
patent.” (Id. at ¶ 211).
Dr. Akl’s June Report was not timely disclosed, but an untimely expert report is
nevertheless admissible if the party offering it demonstrates good cause under the four factor
Primrose test. Primrose Operating Co. v. Nat’l Am. Ins. Co., 382 F.3d 546, 563-64 (5th Cir.
2004) (“(1) the importance of the evidence; (2) the prejudice to the opposing party of including
the evidence; (3) the possibility of curing such prejudice by granting a continuance; and (4) the
explanation for the party's failure to disclose”).
Metaswitch’s justification for serving Dr. Akl’s report after the expert disclosure deadline
is that Genband dropped claim 21 of the ’971 Patent. (Dkt. No. 324 at 5). Dr. Akl discussed
claim 21 in his opening report and opined that claim 21 showed that the ’971 Patent is standardessential. (Dkt. No. 259-7 at ¶ 54). Genband argues that Dr. Akl should have opined about claims
70 and 92 in his opening report as well. (Dkt. No. 302 at 7). However, Genband identifies no
evidence of actual prejudice. Genband was aware that Dr. Akl would opine that the ’971 patent
was standards-essential, and the record indicates that Genband was able to ask Dr. Akl about his
late-disclosed opinions at his deposition. (Dkt. No. 259-11 at 220:1-221:3).
Because Metaswitch offers some justification for its late disclosure and explains why Dr.
Akl’s late opinions are necessary, and because Genband does not appear to have suffered any
prejudice, the Court holds that the late disclosure of Dr. Akl’s June report was harmless under
Primrose and therefore declines to strike it.
B. Non-Infringing Alternatives Opinions
On January 15, 2015, GENBAND propounded Interrogatory No. 16, which asked
Metaswitch to identify “design-arounds” alleged to be non-infringing alternatives:
Separately for each of the Asserted Patents, identify and describe in detail any
alleged design-around or alternative technology or method (“design-around”) that
You allege can be used as an alternative to claimed subject matter of the asserted
claims of the Asserted Patents, including: (a) a description of the alleged designaround; (b) when and how the alleged design-around was developed; (c)
individuals involved in developing the alleged design-around, including an
identification of their titles and departments if they are or were Metaswitch
employees; (d) when the alleged design-around was available for use, and the
costs associated with implementation and use of the alleged design-around; (e)
whether the alleged design-around is incorporated or utilized by the Metaswitch
Accused Products and, if so, the date on which each Metaswitch Accused Product
incorporated or utilized the alleged design-around.
(Dkt. No. 260-2 at 9). Metaswitch served a response identifying its own accused products as noninfringing alternatives (because Metaswitch contends they do not infringe), and also identified
the prior art in its invalidity contentions as potential non-infringing alternatives. (Dkt. No. 260 at
at 6). On May 5 and May 6 2015, Metaswitch served supplemental interrogatory responses
outlining a variety of hypothetical design-arounds and providing some information about how
these designs might be implemented. (Dkt. No. 260-4 at 50–59; Dkt. No. 301-4 at 145–48).
Metaswitch’s experts Dr. Akl, Dr. Williams, and Mr. Gunderson offer opinions about some of
these alleged design-arounds. (Dkt. No. 278 at 5).
The facts and arguments Genband relies on to support its Motion to Strike non-infringing
alternatives closely parallel those addressed above for Genband’s Motion to Strike regarding
standards essentiality. As with Genband’s Interrogatory No. 6, there is no evidence that
Metaswitch could have served its response to Interrogatory No. 16 responses earlier than it did,
and Genband never moved the Court for relief when it received Metaswitch’s responses.
Metaswitch’s interrogatory responses provide sufficient notice to Genband of Metaswitch’s
contentions, and Genband was not entitled to the detailed analyses of Metaswitch’s experts prior
to the expert disclosure deadline.
Genband points out that Metaswitch’s 30(b)(6) witnesses testified they were not aware of
any design-arounds. (Dkt. No. 260 at 8–10). But it appears these witnesses were questioned
about “[n]oninfringing alternatives considered, planned, or implemented” by Metaswitch. (Dkt.
No. 278 at 14). That Metaswitch testified it did not consider, plan, or implement any noninfringing alternatives does not preclude its experts from opining that non-infringing alternatives
exist. The Court declines to strike Metaswitch’s experts’ opinions about non-infringing
Genband’s Motion to Strike the Expert Reports of Dr. Robert Akl and Dr. Tim Williams
on Essentiality (Dkt. No. 259) is DENIED. Genband’s Motion to Strike Testimony on NonInfringing Alternatives. (Dkt. No. 260) is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 8th day of January, 2016.
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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