Case 2:15-cv-01366-JRG-RSP Document 490 Filed 02/23/21 Page 1 of 9 PageID #: 32193
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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` Case No. 2:15-cv-01366-JRG-RSP
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`§§§§§§§§§§§§
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`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC,
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`Plaintiff,
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`v.
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`APPLE, INC.,
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`Defendant.
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`MEMORANDUM ORDER
`Before the Court is Plaintiff Personalized Media Communications, LLC’s (“PMC”)
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`Motion to Preclude Mr. Wechselberger from Testifying as a Fact Witness. (Dkt. No. 267.) In the
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`Motion, PMC moves the Court to preclude Defendant Apple, Inc.’s technical expert Mr. Anthony
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`Wechselberger from testifying as a fact witness regarding prior art. Having considered the Motion,
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`the related briefing, and the relevant authority, the Court finds that the Motion should be DENIED.
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`I.
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`BACKGROUND
`On October 14, 2015, PMC filed its First Amended Complaint in the above-captioned case,
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`asserting infringement of U.S. Patent No. 8,191,091 (the “’091 Patent”).1 (Dkt. No. 18.) On
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`December 28, 2015, the Court issued a Discovery Order, as proposed by the Parties. (Dkt. No. 56.)
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`The Discovery Order states that “by January 5, 2016, each party shall disclose to every other
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`party . . . the name, address, and telephone number of persons having knowledge of relevant facts,
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`1 PMC also asserted claims of infringement of other United States Patents; however, only U.S. Patent
`No. 8,191,091 is currently set for trial. (See Dkt. No. 373.) Accordingly, the Court only addresses the
`’091 Patent herein.
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`a brief statement of each identified person’s connection with the case, and a brief, fair summary of
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`the substance of the information known by any such person.” (Id. ¶ 1(d).)
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`Mr. Wechselberger was not included in Apple’s initial disclosures, timely served on
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`January 5, 2016. (Dkt. No. 269-2.) Apple served six subsequent sets of supplemental and
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`additional disclosures,2 before finally disclosing Mr. Wechselberger as a person with
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`“[k]nowledge relating to prior art of the Asserted Patents” on September 30, 2016, in its Seventh
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`Supplemental Initial and Additional Disclosures. (Dkt. No. 269-15.) Fact discovery closed on
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`October 6, 2016.
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`On October 10, 2016, Apple served Mr. Wechselberger’s opening expert report, opining
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`that the Oak ORION system, the Oak Cable Sigma system, and the VideoCypher system
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`(collectively, the “Prior Art Systems”) render certain claims of the ’091 Patent invalid. (Dkt.
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`No. 269-17.) Mr. Wechselberger relies on his own personal knowledge to establish that the Prior
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`Art Systems were publicly known prior to the priority date of the ’091 Patent. (Id. ¶¶ 206—250,
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`251—294, 295—337; Dkt. No. 269-18 at 111:21—112:5.) These Prior Art Systems had also been
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`identified as invalidating the asserted claims in Apple’s Invalidity Contentions, timely served on
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`February 2, 2016. (Dkt. No. 295-2.)
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`On November 9, 2016, PMC deposed Mr. Wechselberger. (Dkt. No. 295-5.)
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`PMC now moves to preclude Mr. Wechselberger from testifying as a fact witness as to the
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`Prior Art Systems.
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`II.
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`LEGAL STANDARDS
`“Courts have inherent power to manage their dockets.” Ethicon, Inc. v. Quigg, 849 F.2d
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`1422, 1426—27 (Fed. Cir. 1988); see also Landis v. N. Am. Co., 299 U.S. 248, 254 (1936).
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`2 See Dkt. Nos. 269-3; 269-4; 269-5; 269-6; 269-7; 269-8.
`2
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`Pursuant to Federal Rule of Civil Procedure 16, this Court manages its docket via the use of a
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`Docket Control Order (Dkt. No. 56) and a Discovery Order (Dkt. No. 56), both of which were
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`entered according to joint agreement by PMC and Apple. (See Dkt. Nos. 51, 52.) Accordingly,
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`the timelines for disclosure in the present case are governed by the Docket Control Order, the
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`Discovery Order, the Federal Rules of Civil Procedure, and the Local Rules.
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`A “person[] having knowledge of relevant facts” was timely disclosed in this case if the
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`party offering the fact witness disclosed their “name, address, and telephone number,” as well as
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`brief statements of the “person’s connection with the case” and “the substance of the information
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`known” by the person by January 5, 2016. (Dkt. No. 56 ¶ 1(d).) Pursuant to Rule 26, a disclosing
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`party is obligated to “supplement or correct its disclosures immediately if the party obtains
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`information on the basis of which it knows that the information disclosed was either incomplete . . .
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`or is no longer complete . . . .” Fed. R. Civ. P. 26(e)(1).
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`The court has inherent power to enforce its scheduling orders and to impose sanctions for
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`violations thereof. Fed. R. Civ. P. 16(f). In determining whether to exclude evidence based on a
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`party’s failure to timely comply with the Local Patent Rules, courts in this district consider (i) the
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`danger of unfair prejudice to the nonmovant; (ii) the length of the delay and its potential impact
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`on judicial proceedings; (iii) the reason for the delay, including whether it was within the
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`reasonable control of the movant; (iv) the importance of the particular matter, including the
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`adequacy of lesser sanctions; and (v) whether the offending party was diligent in seeking an
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`extension of time, or in supplementing discovery when required. Tyco Healthcare Grp. LP v.
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`Applied Med. Res. Corp., No. 9:06-cv-00151, 2009 WL 5842062, at *2 (E.D Tex. Mar. 30, 2009).
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`III.
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`ANALYSIS
`PMC argues that Mr. Wechselberger should be precluded from testifying as a fact witness
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`pursuant to Rule 37 because the substance of his testimony was not timely disclosed pursuant to
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`the requirements of Rule 26 and the Court’s Discovery Order. PMC asserts that this failure is not
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`substantially justified or harmless because (1) Apple’s untimely and conclusory disclosure of Mr.
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`Wechselberger as a fact witness is evidence of the peripheral significance of his testimony as a
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`fact witness; (2) PMC has been prejudiced by Apple’s late disclosure, which prevented PMC from
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`having a full and informed opportunity to seek discovery from Apple or third parties concerning
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`Mr. Wechselberger’s testimony or the Prior Art Systems; (3) a continuance would reward Apple’s
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`tactical decision and would not cure the prejudice to PMC; and (4) Apple provides no explanation
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`or excuse for its failure to disclose.
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`Apple counters that Mr. Wechselberger should not be precluded from testifying as a fact
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`witness because (1) Apple’s disclosures met all procedural deadlines, identifying Mr.
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`Wechselberger during fact discovery as having relevant factual knowledge of prior art systems and
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`providing PMC the opportunity to depose him regarding such knowledge; (2) PMC chose not to
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`take discovery on the prior art systems, and any alleged gap in discovery or prejudice was the
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`result of PMC’s choice not to seek third party discovery nor to ask questions about the Prior Art
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`Systems during Mr. Wechselberger’s deposition; and (3) even if some aspect of Apple’s disclosure
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`was untimely, the circumstances do not warrant exclusion of any testimony or opinion because the
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`alleged error is substantially harmless. Apple argues harmlessness as Mr. Wechselberger’s
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`experience with the Prior Art Systems is important to Apple’s invalidity defenses, which would
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`dispose of liability in this case; PMC has not been prejudiced because it had ample opportunity to
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`explore the Prior Art Systems during fact discovery, after their disclosure in Apple’s Invalidity
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`Contentions, and/or during Mr. Wechselberger’s deposition; neither party identifies a need for a
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`continuance; and Apple explains the timing of its disclosure (i.e., as fully compliant with the
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`disclosure deadlines).
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`As a threshold matter, Courts only consider the factors for sanctions if a party failed to
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`abide by the Court’s scheduling order. O2 Micro Intern. Ltd. v. Monolithic Pwr. Sys., Inc., 467
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`F.3d 1355, 1363 (Fed. Cir. 2006) (“The court may impose any ‘just’ sanction for the failure to
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`obey a scheduling order, including ‘refusing to allow the disobedient party to support or oppose
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`designated claims or defenses, or prohibiting that party from introducing designated matters in
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`evidence.’” (quoting Fed. R. Civ. P. 16(f); Fed. R. Civ. P. 37(b)(2)(B)); see also Tyco, 2009 WL
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`5842062, at *2 (“When determining whether to exclude evidence based on a party’s failure to
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`comply with the Patent Rules, a non-exclusive list of factors considered by courts includes . . .”
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`(emphasis added).)
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`It is undisputed that Apple disclosed Mr. Wechselberger to PMC as having knowledge of
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`the Prior Art Systems on several occasions:
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`• On April 5, 2016, Apple disclosed that it may rely upon Mr. Wechselberger to provide
`testimony to support Apple’s claim construction positions (Dkt. No. 126-2; Dkt.
`No. 267 at 5);
`• On September 30, 2016, Apple disclosed Mr. Wechselberger in its Seventh
`Supplemental Initial and Additional Disclosures as person with “[k]knowledge relating
`to prior art of the Asserted Patents” (Dkt. No. 269-15 at 7); and
`• On October 10, 2016, Apple served the opening expert report of Mr. Wechselberger,
`including his opinions that the Prior Art Systems render certain claims of the
`’091 Patent invalid, and his detailed explanation that he was personally familiar with
`the Prior Art Systems through his employment with Oak (Dkt. No. 269-17 ¶¶ 206, 251,
`295).
`Without even addressing the other instances of Mr. Wechselberger’s disclosure, or whether
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`his factual testimony is properly within the ambit of the Federal Rules of Evidence,3 the Court is
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`persuaded the Apple’s disclosure of Mr. Wechselberger in its Seventh Supplemental Initial and
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`3 Federal Rule of Evidence 703 permits an expert to base his opinions “on facts or data in the case that the expert has
`been made aware of or personally observed.” The Notes of the Advisory Committee state that such expert opinions
`may be based on the “firsthand observation of the witness, with opinions based thereon traditionally allowed.” Fed.
`R. Evid. 703, Committee Notes.
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`Additional Disclosures on September 30, 2016 is adequate to render him a timely-disclosed fact
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`witness.
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`The initial deadline to disclose “persons having knowledge of relevant facts” was
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`January 5, 2016. (Dkt. No. 56 at 1.) Apple abided by this deadline, and informed the Court that
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`it had complied with its obligations regarding initial and additional disclosures. (Dkt. No. 62.)
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`Subsequent to that deadline, Apple was obligated to “supplement or correct its disclosures
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`immediately if the party obtains information on the basis of which it knows that the information
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`disclosed was either incomplete . . . or is no longer complete . . . .” Fed. R. Civ. P. 26(e)(1). Apple
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`timely complied with this obligation, including serving seven successive supplemental and
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`amended disclosures upon PMC. (See Dkt. Nos. 269-3; 269-4; 269-5; 269-6; 269-7; 269-8;
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`269-15.) Each of these disclosures was timely made before the deadline to complete fact discovery
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`on November 18, 2016. (Dkt. No. 242 at 3.)
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`PMC takes issue with the adequacy of Apple’s disclosure of Mr. Wechselberger, arguing
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`that Apple’s disclosure of Mr. Wechselberger was “conclusory” and did not include a “fair
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`summary of his knowledge.” (Dkt. No. 267 at 8, 11.) Indeed, Apple’s disclosure was brief,
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`reciting merely:
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`Anthony Wechselberger
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`Contact through Apple’s counsel
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`Knowledge relating to prior art of the
`Asserted Patents.
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`(Dkt. No. 269-15 at 7.) Nevertheless, the requirements of the disclosure of “persons having
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`knowledge of relevant facts” are commensurate in brevity, requiring merely “the name, address,
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`and telephone number” of the person alongside “a brief statement of [the person’s] connection
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`with the case” and “a brief, fair summary of the substance of the information known” by the
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`witness. (Dkt. No. 56 ¶ 1(d); see also Fed. R. Civ. P. 26(a)(1)(A) (requiring disclosure of “the
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`name and, if known, the address and telephone number of each individual likely to have
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`discoverable information—along with the subjects of that information—that the disclosing party
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`may use to support its claims or defenses, unless the use would be solely for impeachment”).)
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`Apple’s disclosure of Mr. Wechselberger comported with the letter and the spirit of
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`disclosures. Apple provided the name (“Anthony Wechselberger”) and contact information
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`(“Contact through Apple’s counsel,” whose addresses and telephone number were listed in the
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`signature block) of Mr. Wechselberger. Apple further provided a brief statement of Mr.
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`Wechselberger’s connection to the case and a fair summary of the information he provided
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`(“Knowledge relating to prior art of the Asserted Patents”). All of this information was disclosed
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`prior to the end of fact discovery, and prior to PMC’s deposition of Mr. Wechselberger, at which
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`it was free to inquire as to such knowledge. Further information on the substance of Mr.
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`Wechselberger’s knowledge as to the Prior Art Systems was disclosed throughout Apple’s
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`Invalidity Contentions (Dkt. No. 295-2) and later through Mr. Wechselberger’s report. (Dkt. No.
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`295-3.)
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`PMC argues that it has been prejudiced by Apple’s disclosure of Mr. Wechselberger as a
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`fact witness on the eve of the end of fact discovery. (Dkt. No. 267 at 11—12.) Specifically, PMC
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`alleges that such disclosure deprived PMC of a full and informed opportunity to seek discovery
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`from Apple or third parties concerning Mr. Wechselberger’s personal knowledge. (Id. at 12.)
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`However, any deprivation of a fulsome investigation into Mr. Wechselberger’s personal
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`knowledge is PMC’s own making. Mr. Wechselberger’s report provided an extremely detailed
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`roadmap of his personal knowledge and experience with the Prior Art Systems, including
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`background on his employment, his involvement with the systems, and citations to documents
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`supporting the same. His report was served a month before his deposition. PMC therefore had a
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`month to prepare and optimize any questions to Mr. Wechselberger regarding his personal
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`knowledge on the Prior Art Systems, but failed to do so. Such formulation of questions as to the
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`Prior Art Systems and Mr. Wechselberger’s knowledge thereon would have been particularly easy
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`in light of the background of Mr. Wechselberger’s experience provided in his report combined
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`with Apple’s detailed invalidity positions based on the Prior Art Systems provided in its Invalidity
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`Contentions.
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`PMC further contends that Apple deliberately withheld disclosing Mr. Wechselberger as a
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`fact witness. (Dkt. No. 305 at 2.) According to PMC, because Apple has worked with
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`Mr. Wechselberger on the present case at least since claim construction, Apple had knowledge that
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`Mr. Wechselberger would provide testimony as a fact witness, and purposefully withheld his
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`disclosure to blindside PMC. (Id. at 2–3; see also Dkt. No. 267 at 1–2.) Specifically, PMC
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`contends that Apple knew it would rely on the Prior Art Systems as early as service of its invalidity
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`contentions, and argues that therefore it should have therefore known concurrently that it would
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`rely on Mr. Wechselberger’s knowledge and experience therewith. However, there is no evidence
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`in this record that Apple deliberately withheld disclosure of Mr. Wechselberger until the end of
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`fact discovery. The Court has been presented with no evidence that Apple purposefully delayed
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`disclosing Mr. Wechselberger as a “person with knowledge” until it was too late for PMC to
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`thoroughly investigate his knowledge. There is nothing in the record to refute that Apple provided
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`Mr. Wechselberger’s name and summary of the information he knew as soon as it knew it would
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`be relying on Mr. Wechselberger’s personal knowledge of the Prior Art Systems—two weeks
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`before serving his report and six weeks before his deposition.
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`IV.
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`CONCLUSION
`For the reasons stated herein, PMC’s Motion to Preclude Mr. Wechselberger from
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`Testifying as a Fact Witness (Dkt. No. 267) is DENIED.
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`9
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 23rd day of February, 2021.
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