United States District Court, D. Delaware
for the moon, but remember that if you miss, you will be
floating off into the inky blackness of space with no hope of
survival or rescue." AVM shot for the moon, and, in my
opinion, missed. The question now is whether it can survive.
I think the answer is yes.
proffers a variety of sources from which a jury could find a
reasonable royalty. I believe that AVM can put evidence into
the record from which a jury could find a reasonable royalty.
Such evidence includes historical facts, such as how much AVM
paid for the patent, what its licensing approach was, and
what sorts of offers Mr. Tran made to Intel in the past to
license the patent. There may be problems at the margins in
terms of when testimony becomes expert testimony or when it
is hypothetical (see Civ. Act. No. 10-630, D.I. 283
at 9-14), but AVM can certainly put on fact testimony giving
the jury some basis for finding a reasonable royalty. And, as
I decide below, AVM can call Julie Davis as a witness and put
on her expert testimony should it decide to do so.
Intel's argument is that AVM has violated the rules. The
disclosures and interrogatory answers may be inadequate, but,
under a Pennypack analysis, I will permit AVM to
proceed. Under Pennypack, factors to consider when
determining whether to exclude evidence include:
(1) the prejudice or surprise in fact of the party against
whom the excluded witnesses would have testified, (2) the
ability of that party to cure the prejudice, (3) the extent
to which [allowing the late-offered testimony] would disrupt
the orderly and efficient trial of the case or of other cases
in the court, and (4) bad faith or willfulness in failing to
comply with the court's order.
Meyers v. Pennypack Woods Home Ownership Assn., 559
F.2d 894, 904-05 (3d Cir. 1977).
do not think AVM acted willfully or in bad faith here, the
fourth factor weighs in favor of allowing the testimony.
Since I am only allowing testimony that has already been
disclosed during discovery, and because trial will proceed as
scheduled, the third factor also weighs in favor of allowing
the testimony. As to prejudice, I am not persuaded that there
is incurable prejudice to Intel by allowing Mr. Tran to
testify to the facts I discussed above. Intel has deposed Mr.
Tran extensively on these subjects and there is nothing that
AVM is proposing to present at trial (or that I will allow to
be presented) that was not already disclosed. The proposed
testimony and evidence are not new to Intel. On the whole,
the Pennypack factors weigh in favor of admitting
AVM calling Julie Davis to testify if Intel does not call
her, it is within my discretion to allow AVM to call
Intel's expert witness to testify even if Intel chooses
not to call her. Peterson v. Willie, 81 F.3d 1033,
1037-38 & n.4 (11th Cir. 1996). In making this
discretionary decision, courts weigh the interests of the
party seeking to call the expert and of the court in reaching
an informed resolution of the case against the possible
prejudice to the party who originally retained the expert.
N5 Techs. LLC v. Capital One N.A., 56 F.Supp.3d 755,
766 (E.D. Va. 2014). Here, I am hard pressed to see the
prejudice to Intel. Intel designated Ms. Davis as an expert
witness, she was deposed, and Intel presumably is quite
knowledgeable about the testimony she has offered. In
contrast, to preclude AVM from eliciting her testimony once
it has been disclosed through the expert report and
deposition process would inhibit AVM's ability to proceed
with the case. AVM is in a corner, and the bits of historical
fact that it can produce are a thin reed on which to obtain a
reasonable royalty that would withstand appellate review
(assuming it satisfies the jury and me). On the other hand,
Ms. Davis's opinions would likely provide a sound basis
for a damages award. If there is liability here, the court
and the jury would benefit from hearing Ms. Davis's
opinions in reaching an informed resolution. Thus, I think it
is fair to allow AVM to call Ms. Davis as a witness in its
case if it chooses to do so. If AVM does not call Ms. Davis,
Intel will have complete freedom, just as it would anyway, to
call her or not to call her. This does not mean, however,
that AVM has free reign to explore any topics with her that
it wishes. Ms. Davis's testimony must be limited to what
was disclosed in her expert report. Perm Nat. Ins. v. HNI
Corp., 245 F.R.D. 190, 194-95 (M.D. Pa. 2007). Further,
of course, at AVM's request, I have excluded some of her
does not call her, and if Intel does not call her, her report
is inadmissible hearsay that does not fall within one of the
exceptions to the hearsay rule. N5 Technologies, 56
F.Supp.3d at 765.
is directed to ensure Ms. Davis is present at trial if
necessary. If AVM wants to call her as a witness, AVM needs
to make that decision and advise Intel of its decision by
11:00 p.m. tonight. If AVM decides that it will call her as a
witness by 11:00 p.m. tonight, it is responsible to reimburse
Intel for all of Ms. Davis's contractual obligations
effective beginning tomorrow. AVM can, of course, change its
mind during the trial about calling Ms. Davis, but it will
still be obligated to reimburse Intel through to the point
where AVM releases her.
this being said, if AVM does not put on an expert computation
of damages, AVM cannot make arguments based on non-expert
testimony that it could not make based on expert testimony.
I am not sure of the source of this,
but it is not original ...