DSM IP Assets, B.V. et al v. Lallemand Specialties, Inc. et al

Filing 136

ORDER granting in part and denying in part 122 Motion to Compel. Signed by District Judge William M. Conley on 1/12/2018. (bgw)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
DSM IP ASSETS, B.V., and DSM BIO-BASED
PRODUCTS & SERVICES, B.V.,

v.

Plaintiffs,

LALLEMAND SPECIALITIES, INC., and
MASCOMA LLC,

ORDER
16-cv-497-wmc

Defendants.
In this patent lawsuit, plaintiffs DSM IP Assets, B.V., and DSM Bio-Based Products
& Services, B.V., seek an order compelling two depositions on a related issue of the
availability of acceptable, noninfringing alternatives -- a relevant factor to the
determination of a reasonable royalty. (Dkt. #122.) The court held a telephonic hearing
on this motion today, at which the parties appeared by counsel. As explained during that
hearing, and set forth more formally in this order, the court denied in part and granted in
part that motion.
First, plaintiffs sought to depose defendants’ expert Dr. Dennis Winge a second
time, albeit limited to the opinions raised in his rebuttal report. Plaintiffs have already
deposed Dr. Winge once. After that deposition, defendants served Winge’s rebuttal report,
in which he describes that at least one laboratory strain “remains under intense study at
Lallemand as an alternative to” the alleged infringing product. (Winge’s Rebuttal Rept.
(dkt. #120) ¶ 18.) These opinions were offered in response to plaintiffs’ expert, Dr.
Stephanopoulos, who concluded that “there was no evidence to support a contention that
any of these laboratory strains would be effective for industrial scale . . . fermentations

because none of them had been shown to work outside of laboratory conditions.” (Pls.’
Mot. (dkt. #122) 2-3 (citing Stephanapoulus Rept. (dkt. #118) ¶¶ 3, 17-25).)
Plaintiffs represent, and attach email communications between the parties, that
initially defendants agreed to produce Winge for a deposition provided that the topics were
limited to his December 21, 2017, rebuttal report on noninfringing alternatives. (Id. at 6.)
Subsequently, however, defendants placed two conditions on Winge’s deposition: (1) that
it be limited to 90 minutes; and (2) that Dr. Stephanopoulos’s deposition be extended to
8.5 hours. On the first condition, 90 minutes appears to be a reasonable amount of time
to cover the limited scope of Winge’s rebuttal report, although the court will not limit
plaintiffs to this single topic.

Instead, once plaintiffs name a new liability expert,

defendants will be afforded the same amount of total time to depose that expert; since Dr.
Winge will be deposed for a total of 8.5 hours, then defendants will be afforded 8.5 hours
of deposition time with plaintiffs’ new expert.
Second, plaintiffs seek an order compelling defendants’ employee, Aaron Argyros, to
sit for a second deposition in light of information received in Winge’s supplemental report.
As discussed with the parties during the telephonic conference, while Argyros was not
expressly disclosed as a person with information relevant to noninfringing alternatives,
defendants did disclose their theory of noninfringing alternatives and produced documents
tying defendants’ related experimentation to Argyros in advance of his deposition. While
plaintiffs explored whether defendant had pursued a design around strategy with Argyros
during his deposition -- a topic related to noninfringing alternatives -- they stopped short
of asking him questions about the two, disclosed strains and the documents within his

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control concerning testing of those strains that were specifically identified as related to
those alternatives.
On this record, in considering the Rule 26(b)(2)(C) factors, the court cannot find
that a second deposition is warranted. Instead, plaintiffs may explore with Dr. Winge in
his second deposition the substance of his conversations with Argyros. If that deposition
provides further support for a second brief telephonic deposition of Argyros, plaintiffs may
renew their motion, but for now, that part of plaintiffs’ motion is denied without prejudice.
Accordingly, IT IS ORDERED that plaintiffs’ motion to compel (dkt. #122) is
GRANTED IN PART AND DENIED IN PART as set forth above.
Entered this 12th day of January, 2018.
BY THE COURT:
/s/
__________________________________
WILLIAM M. CONLEY
District Judge

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