I/P Engine, Inc. v. AOL, Inc. et al

Filing 857

Memorandum in Support re 856 MOTION to Compel Deposition of Dr. Becker filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

I/P ENGINE, INC.
Plaintiff,
Civil Action No. 2:11-cv-512

v.
AOL INC., et al.,
Defendants.

MEMORANDUM IN SUPPORT OF DEFENDANTS’ MOTION TO COMPEL
DEPOSITION OF DR. BECKER
Plaintiff is seeking a significant enhancement for post-judgment royalties based solely on
the opinion of an expert who Plaintiff is unwilling to make available for deposition without
unreasonable conditions. Such a position is contrary to basic fairness and the law. Defendants
ask the Court to compel Plaintiff to produce Dr. Becker for deposition to provide Defendants the
opportunity to examine his new damages theory and to allow the Court to make a decision about
ongoing royalties based on a complete and thorough record.
BACKGROUND
In seeking post-judgment royalties, Plaintiff filed a declaration from its damages expert
that includes numerous factual allegations not before the jury, opinions about a hypothetical
negotiation occurring more than eight years after the hypothetical negotiation at issue at trial and
involving different parties, and a conclusion as to damages not at issue at trial, including a
different (43% higher) royalty rate than Dr. Becker testified to at trial. (See D.N. 824.)

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Defendants requested that Plaintiff make Dr. Becker available for deposition prior to January 22,
2013, to give Defendants time to question Dr. Becker about these new theories and then respond
to Plaintiff’s motion for post-judgment royalties by the current deadline of January 25, 2013.
Despite Defendants’ repeated attempt to reach a compromise, Plaintiff refused to produce Dr.
Becker unless Defendants agreed to inappropriate, unrelated, and burdensome terms.1 (See
Noona Dec. Exs. 1, 2; Noona Dec. ¶ 3.)
ARGUMENT
As Defendants explained in previous filings, Dr. Becker’s “declaration” is really a
supplemental expert report that puts forth an entirely new damages theory. (See D.N. 848, 4-5;
D.N. 853, 5-8.) It is black letter law that a party may depose opposing expert witnesses. See
Fed. R. Civ. P. 26(b)(4)(A). Because Plaintiff’s expert on damages submitted a supplemental
report that relied on facts and reached a conclusion about which Defendants previously have not
had the opportunity to examine him, Defendants should be able to question him about these new
facts and opinions.
The right to depose experts that rely on additional evidence that was not presented at trial,
as Dr. Becker has done here, is expressly supported in the post-judgment royalties context. See
Paice LLC v. Toyota Motor Corp., No. 2:04-cv-00211-DF, D.N. 241 (E.D. Tex. Mar. 13, 2008)
(ordering discovery, including depositions, and briefing over a three month period leading up to
an evidentiary hearing for purposes of determining an ongoing royalty). Indeed, the court in
Paice, responding to the Federal Circuit’s direction to allow the parties to present evidence
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Plaintiff’s refusal to promptly make Dr. Becker available for deposition without
unreasonable conditions has caused delay and further condensed an already brief period of time
to respond to Plaintiff’s Motion for an Award of Ongoing Royalties. This fact further supports
Defendants’ request to delay briefing and postpone ruling on that motion. Defendants ask the
Court to consider this additional fact in deciding whether to grant Defendants’ Motion to
Postpone Briefing and Ruling on Plaintiff’s Motion for Post-Judgment Royalties. (D.N. 847.)
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before determining an ongoing royalty, also ruled that depositions may be taken of “any witness
that execute[d] a declaration submitted with the other party’s brief” in addition to “experts that
submitted expert reports.” Paice, No. 2:04-cv-00211-DF, D.N. 241 at 3; see also Creative
Internet Adver. Corp. v. Yahoo! Inc., 674 F. Supp. 2d 847, 856-57 (E.D. Tex. 2009) (citing to
deposition testimony produced post-trial in discussing ongoing royalty determination). Thus, Dr.
Becker should be made available for deposition even were his declaration not properly
characterized as a supplemental expert report.
CONCLUSION
For the foregoing reasons, Defendants respectfully request this Court grant their Motion
to Compel Deposition of Dr. Becker and order Plaintiff to make Dr. Becker available for
deposition. Defendants further request that the Court order that the deadline for Defendants’
opposition to Plaintiff’s Motion for an Award of Post-Judgment Royalties be extended until at
least seven days after Plaintiff makes Dr. Becker available for deposition.2

DATED: January 16, 2013

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]

2

Defendants note this requested relief does not alter the relief sought in Defendants’
Motion to Postpone Briefing and Ruling on Plaintiff’s Motion for Post-Judgment
Royalties. (D.N. 847.) Defendants request that the Court compel the deposition of Dr. Becker,
and that the deposition be at least seven days prior to the deadline for Defendants’ opposition to
Plaintiff’s Motion for an Award of Post-Judgment Royalties, whenever that deadline may be.

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David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Counsel for Google Inc., Target Corporation, IAC
Search & Media, Inc., and Gannett Co., Inc.
By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant AOL Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on January 16, 2013, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Counsel for Plaintiff, I/P Engine, Inc.

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
12159778v1

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