In a patent infringement suit, the defendant asked the judge to compel the production of all documents that it subpoenaed from the plaintiff’s damages expert witness, and that such production be made at least four days prior to submission of Defendant‘s rebuttal damages report. Defendant also sought an order that the expert appear for two full day depositions.
The suit was over the ’571 patent entitled “Electronically Alterable Non-Volatile Memory with N-Bits PER Cell.” The patent generally relates to non-volatile memory devices. In particular, the ’571 patent concerns an apparatus and method for programming multi-level memory cells that may be programmed to multiple states and reliable ways to program and correctly read cells for multiple programmed states.
Defendant asserted that the individual in question was both an expert witness for Plaintiff on the issue of licensing (and relatedly, damages) as well as a percipient witness “to facts and circumstances relating to Defendant‘s newly-added counterclaims for breach of the parties’ 2013 Agreement.” Defendant stated that the expert was previously Plaintiff‘s licensing counsel, and that “[y]ears ago, he pursued a license from Defendant on behalf of Plaintiff up to and after the execution of the 2013 Agreement.” On February 8, 2019, Plaintiff submitted an expert report on behalf of the expert.
According to Defendant, the report “recounts facts of the expert‘s licensing negotiations with Defendant, and he also proffers various views and opinions relating to ‘hundreds’ of alleged ‘real world’ licensing negotiations that he suggests could increase the amount of a damages award, including a negotiation ‘model’ of his own creation.” Defendant asserted that it required one full day to depose the expert on his expert report, and that it would need at least a partial second day to question him about the 2013 NDA.
Defendant also stated that Plaintiff and the expert had refused to produce any documents listed in the subpoena, including the facts or data that the expert relied upon in forming his expert opinions. Defendant also accused Plaintiff and the expert of waiting until the last day of fact discovery to respond to a different subpoena that had been issued in 2016, and thus Defendant argued that it “could not have meaningfully deposed the expert during fact discovery on documents he chose to produce hours before the close of fact discovery, not least because Defendant was unaware that Plaintiff planned to proffer the expert as an alleged expert witness on the documents and related case issues.”
United States District Judge Susan Illston wrote in her opinion, “[a]s is often this case in this litigation, Plaintiff responds with a wildly different version of the facts.” She noted that Plaintiff stated, “What Defendant misleadingly leaves out is that [the expert] produced over 29,000 pages of documents in response to the  subpoena, not on the last day of discovery — as Defendant falsely contends — but between July 28-August 15, 2016, well over two years before close of fact discovery.” [emphasis in original]. Plaintiff asserted that the December 2018 production that Defendant “presumably refers to was less than 250 pages and it was made voluntarily.”
Plaintiff contended that the expert had “in fact already completed his production of documents related to the 2013 NDA,” and Plaintiff accused Defendant of destroying those same communications. Plaintiff further accused Defendant of “attempting to serve the subpoena on the expert‘s personal residence in the middle of the night” and of seeking irrelevant evidence from the expert (such as “[a]ll receipts for any travel you have made to the State of Idaho, including without limitation all tickets and/or receipts for any airplane flights”).
Plaintiff responded that contrary to Defendant‘s representations, it had agreed to produce the documents relied upon in the expert‘s report. Further, Plaintiff argued that Defendant was improperly attempting to conduct fact discovery after the deadline for fact discovery had passed, and that to the extent Defendant was seeking expert discovery from the expert, Defendant should do so under the schedule set for expert discovery and pursuant to Rule 26, not Rule 45.
Judge Illston concluded that Defendant was entitled to use a Rule 45 subpoena to seek relevant documents from the individual in his capacity as an expert witness. She noted that provided Plaintiff argued that Defendant had long known about the expert because of his involvement in the licensing negotiations, Defendant didn’t know that Plaintiff was designating him as licensing expert until February 2019 when Plaintiff produced his expert report. Further, Judge Illston permitted a limited reopening of fact discovery regarding Defendant‘s newly-added counterclaims for breach of the NDA. Thus, the judge wasn’t persuaded by Plaintiff’s arguments that Defendant should have sought to depose the expert earlier, or that Defendant was improperly seeking to extend fact discovery.
Accordingly, Judge Illston granted Defendant‘s motion to compel the expert to produce documents in response to the subpoena, except for specific categories for which Defendant failed to make any showing of relevance. Further, because the expert was both an expert and percipient witness, the judge found that Defendant was entitled to depose the expert for one full day regarding the expert‘s expert opinions and also for a partial day of no more than three hours regarding his percipient knowledge related to Defendant‘s counterclaims for breach of the 2013 NDA.