Intellectual Ventures II LLC v. Sprint Spectrum, L.P. et al

Filing 440

MEMORANDUM ORDER re 304 Opposed SEALED MOTION Memorandum of Points and Authorities in Support of Motion to Exclude Untimely and Undisclosed Expert Testimony of Christian Skarby, Dr. Stefan Parkvall, and Ulf Rydin filed by Intellectual Ventures II LLC. Signed by Magistrate Judge Roy S. Payne on 4/12/2019. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INTELLECTUAL VENTURES II LLC,
Plaintiff,
v.
SPRINT SPECTRUM, L.P., ET AL.
Defendants.

T-MOBILE USA, INC., ET AL.,
Defendants,
v.
NOKIA OF AMERICA CORPORATION,
Intervenor.

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Case No. 2:17-CV-0662-JRG-RSP
(LEAD)

Case No. 2:17-CV-0661-JRG-RSP
(MEMBER)

MEMORANDUM ORDER
On February 18, 2019, Defendant Ericsson served disclosures regarding Christian Skarby,
Dr. Stefan Parkvall, and Ulf Rydin as non-retained expert witnesses pursuant to Fed. R. Civ. P.
26(a)(2)(C). Plaintiff moves to strike these witness’ opinion testimony (Dkt. No. 304), arguing that
the disclosures are untimely under this Court’s Docket Control Orders (Dkt. Nos. 260 and 284).
Federal Rule of Civil Procedure 26 (a)(2)(A) requires the disclosure of expert testimony
prior to trial – “a party must disclose to the other parties the identity of any witness it may use at
trial to present evidence under Federal Rule of Evidence 702, 703, or 705.” Rule 26 (a)(2)(D)
further adds that expert disclosures must be made “at the times and in the sequence that the court
orders.” Fed. R. Civ. P. 26 (a)(2)(D). If a party fails to identify a witness as required by Rule 26(a),
“the party is not allowed to use that information or witness to supply evidence on a motion, at a
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hearing, or at trial, unless the failure was substantially justified or is harmless.” Fed. R. Civ. P. 37
(c)(1).
Here, the deadline to serve disclosures for expert witnesses by the party with the burden of
proof was December 12, 2018. (Dkt. No. 260). The deadline to serve disclosures for rebuttal
expert witnesses was January 21, 2019. (Dkt. No. 284). No matter how the proffered opinion
testimony of Skarby, Parkvall, and Rydin is described, the expert disclosures are untimely under
the Court’s scheduling order.
Once a scheduling order is entered, it may be modified only for good cause. Fed. R. Civ.
P. 16 (b)(4). In determining whether good cause exists to modify a scheduling order, the Court
considers the following factors: “(1) the explanation for the failure to identify the witness; (2) the
importance of the testimony; (3) potential prejudice in allowing the testimony; and (4) the
availability of a continuance to cure such prejudice.” Geiserman v. MacDonald, 893 F.2d 787, 791
(5th Cir. 1990).
Defendant Ericsson’s explanation does not warrant relief. Ericsson contends that it “was
justifiably compelled” to designate Skarby, Parkvall, and Rydin as employee-experts “out of an
abundance of caution.” (Dkt. No. 333 at 4). Ericsson states that during the trial in Intellectual
Ventures I LLC v. T-Mobile USA, Inc. et al, Case No. 2:17-cv-00577-JRG (the “577 case”),
Plaintiff objected to Skarby’s testimony numerous times as being improper expert testimony. (Dkt.
No. 333 at 4). Once the trial in the 577 case concluded, Ericsson designated Skarby, Parkvall, and
Rydin as non-retained employee-experts in this case, apparently to prevent the same objections
being raised in the upcoming trial of this case. If Ericsson wanted to preserve the right to elicit
opinion testimony, it should have been done so by disclosing Skarby, Parkvall, and Rydin by the
deadlines set out in the Court’s scheduling orders. See Sturgeon v. Airborne Freight Corp., 778

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F.2d 1154, 1158 (5th Cir.1985) (plaintiff should have been aware of need for expert testimony and
last-minute expert designation was refused).
Ericsson contends that Skarby, Parkvall, and Rydin’s testimony is important because each
witness has extensive personal knowledge of the accused products and 3GPP standards and would
not be cumulative of the testimony offered by Ericsson’s retained experts. (Dkt .No. 333 at 5, 67). There is no dispute as to whether these witnesses may testify about their personal knowledge
of the facts. (See Dkt. No. 371 at 2) (“To be clear, [Plaintiff] does not and has not opposed these
witnesses testifying about their personal knowledge of facts.”). Rather, the question is whether
these witnesses’ testimony may include expert opinion.
Even so, Ericsson contends the untimely disclosure is not prejudicial because “the subject
matter and facts disclosed in each witness’s Rule 26 (a)(2)(C) disclosures was consistent with the
subject matter and facts covered in each witness’s deposition.” (Dkt. No. 333 at 7). This argument
misses the point. Plaintiff was not on notice, at the time of the depositions, that these witnesses
would be allowed to express expert opinions at trial. Thus Plaintiff had no reason to fully explore
any opinions tendered during the depositions, and to probe the qualifications of the witnesses and
the evidentiary bases to support the opinions. Just saying that the trial testimony will be the same
as the deposition testimony does not cure the failure to timely disclose the opinions.
This case has pending for more than eighteen months and trial is scheduled for next month.
Continuing the trial at the eleventh hour to accommodate three untimely disclosed witnesses would
not cure the prejudice, but would only exacerbate the prejudice. Defendant Ericsson therefore
cannot establish good cause for this Court to modify its scheduling order to accommodate this
untimely disclosure. Accordingly, Plaintiff’s motion is GRANTED. This Memorandum Order

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does not prevent Skarby, Parkvall, or Rydin from testifying as to their personal knowledge of any
relevant facts.
SIGNED this 3rd day of January, 2012.
SIGNED this 12th day of April, 2019.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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