Case 1:16-cv-00455-RGA Document 418 Filed 04/04/18 Page 1 of 7 PageID #: 31384
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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` C.A. No. 16-453 (RGA)
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` C.A. No. 16-454 (RGA)
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` C.A. No. 16-455 (RGA)
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`ACCELERATION BAY LLC.
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` Plaintiff,
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`v.
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`ACTIVISION BLIZZARD, INC.,
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` Defendant.
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`ACCELERATION BAY LLC,
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` Plaintiff,
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`v.
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`ELECTRONIC ARTS INC.,
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` Defendant.
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`ACCELERATION BAY LLC,
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` Plaintiff.
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`v.
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`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC. and 2K
`SPORTS, INC.,
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` Defendants.
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`SPECIAL MASTER ORDER NO. 15
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`On March 19, 2018 Defendants filed their Motion, Brief and proposed Order to Enforce
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`Special Master Order No. 13 [‘Defendants’ Enforcement Motion’]. Pursuant to an agreed upon
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`schedule, Plaintiff filed its Answering Brief to this Motion on March 26. Also, on March 26,
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`Case 1:16-cv-00455-RGA Document 418 Filed 04/04/18 Page 2 of 7 PageID #: 31385
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`non-party Boeing Company filed a brief in opposition to Defendants’ Motion to Grant In-House
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`Counsel Access to the 2006 Boeing/Sony License Agreement [the ‘Boeing Motion’]. Finally,
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`Defendants requested a ruling as to the “parameters of the deposition of Dr. Bims in the EA
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`case” [the ‘Dr. Bims Motion’].
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`A hearing was held on March 30 regarding these three Motions. Following the Hearing,
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`additional filings were made in light of specifics raised in the Hearing. This the Special Master’s
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`Ruling on the Motions presented on March 30, 2018. My discussions of the Motions, issues, law
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`and evidence will be brief, as one of these cases is scheduled to go to trial later this month.
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`Defendants’ Enforcement Motion:
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`Defendants’ Motion is premised on their belief that Plaintiff has not conducted a proper
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`search for documents it ‘provided in writing to Hamilton Capital’ [as required by Special Master
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`Order No. 13], refuses to produce documents that Defendants believe to exist, and prevented
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`Defendants from questioning Plaintiff’s expert, Dr. Medvidovic, as to such documents and his
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`pre-filing involvement in this case. Defendants assert that such withheld documents would
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`demonstrate inconsistencies with the expert’s current opinions.
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`Plaintiff’s brief categorically states that “Dr. Medvidovic never prepared a written pre-
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`filing analysis; rather his pre-filing analysis was provided orally to Acceleration Bay’s counsel.”
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`Plaintiff’s brief also flatly states that it “...already produced to Defendants all documents it
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`provided to Reed Smith...”. As the Hearing Transcript demonstrates, there is some question as to
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`whether all of Plaintiff’s counsel emails with Reed Smith were produced. Plaintiff apparently
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`only produced ‘substantive’ e mail with Reed Smith. [Transcript of Hearing, pp. 40-59]. My
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`prior Order did not permit Plaintiff to so limit production of its communications with Reed Smith
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`regarding possible funding of this litigation.
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`Case 1:16-cv-00455-RGA Document 418 Filed 04/04/18 Page 3 of 7 PageID #: 31386
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`Much of Plaintiff’s defense is based on the parties’ Protective Order dated February 22,
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`2017, which it interprets as the sole guidance on discovery regarding a testifying expert. I read
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`paragraph 15 of the Protective Order more narrowly than Plaintiff does. Plaintiff points out that
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`Dr. Medvidovic’s report and his deposition identified the documents that he relied upon for his
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`expert opinion submitted in this litigation. Those documents have been produced. Thus, Plaintiff
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`seems to argue that a testifying expert’s deposition should be limited to what his report says and
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`the documents upon which he relies for his report.
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`However, I do not read this Protective Order as precluding discovery permitted by
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`applicable procedural rules into whatever pre filing evaluation or opinions Dr. Medvidovic may
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`have reached, irregardless of whether he relied upon them for his expert report submitted in this
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`case. The Federal Rules for discovery as to an expert’s opinion allows discovery as to how, when
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`and upon what basis he might have reached his initial views of the matter upon which he
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`ultimately delivered his expert opinion. Such discovery provides a possible avenue for cross
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`examination of the expert, which is fair game at trial. Thus, Defendants are entitled to have a
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`further deposition of Dr. Medvidovic as to his analysis of these patents prior to the filing of the
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`litigation. To the extent that he prepared drafts of his expert report or communicated with
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`Plaintiff’s counsel about the substance of that report, those communications would be entitled to
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`work product protection.
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`Defendants seek production of documents given or shown to Reed Smith. This request
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`doesn’t appear to involve Dr. Medvidovic, but relates to efforts by Plaintiff’s counsel to secure
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`funding tor potential litigation over these patents. With respect to his involvement with Hamilton
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`Capital’s funding of Plaintiff, “...Dr. Medvidovic never met with or otherwise spoke with
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`anyone at Reed Smith or Hamilton Capital in connection with obtaining funding for these cases”,
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`Case 1:16-cv-00455-RGA Document 418 Filed 04/04/18 Page 4 of 7 PageID #: 31387
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`according to Plaintiff’s brief. To the extent that he may have participated in discussions with
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`Reed Smith as to his technical views, there is no evidence that he gave them written documents
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`or has relied on such views in preparing his expert opinion for use at trial which is scheduled in
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`the near future.
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`Plaintiff’s counsel apparently prepared the claims chart discussed with Reed Smith in
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`connection with the firm’s efforts to obtain funding for possible litigation involving the patents
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`in this litigation. [Transcript of Hearing, pp. 34-39]. Plaintiff contends that this claims chart is
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`the work product of Plaintiff’s counsel; that Plaintiff’s law firm made a conscious effort to
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`protect it as work product; that it was the subject of a non-disclosure agreement with Reed
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`Smith; and that it was never given to or left in Reed Smith’ s possession. I am relying on
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`Plaintiff’s counsel as to these facts. If so, I treat the claims chart created by counsel as work
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`product that was not inadvertently waived in meeting with Reed Smith.
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`However, all written communications between Reed Smith and Plaintiff’s counsel
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`regarding possible funding for litigation or evaluation of the patents prior to a signed funding
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`agreement between Plaintiff and Hamilton Capital should be produced. It may be that all such
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`emails and documents have been produced, but Plaintiff needs to affirm that in writing or
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`promptly do so in light of the pending trial. I am not ruling on how Plaintiff should conduct a
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`proper search as its counsel are knowledgeable as to their responsibilities in this regard. In so
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`ruling, I reach no conclusion as to Plaintiff’s conduct in discovery to date. Any consideration of
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`fees or sanctions should be deferred.
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`ORDER: The Defendants’ Motion is GRANTED to the extent that [a] Plaintiff shall
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`produce all documents and communications between it and/or its counsel and Reed Smith
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`relating to possible funding of this litigation and/or the patents in this litigation; up and until the
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`Case 1:16-cv-00455-RGA Document 418 Filed 04/04/18 Page 5 of 7 PageID #: 31388
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`signing of a funding agreement,; and [b] Dr. Medvidovic can be deposed for four hours on any
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`subjects; other than his communications with counsel; and drafts of his expert report that he
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`submitted in the litigation need not be produced.
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`The Boeing Motion:
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`With respect to non-party Boeing Company’s Opposition to Defendants’ Motion to Grant
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`In-House Counsel Access to the 2006 Boeing/Sony License Agreement [the ‘Boeing Motion’],
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`the Plaintiff insists that the issue is governed by the parties Protective Order under which Boeing
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`designated this Agreement as “Confidential - Outside Counsel Only’. This designation prevents
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`in-house counsel from seeing such documents because of such documents’ ‘competitive value’.
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`The documents can be shown to in-house counsel only if they were “improperly designated” by
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`Boeing. Boeing’s brief argues that its licensing of its extensive library of patents is a significant
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`business, which Boeing strives to protect from competitive misuse.
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`Defendants counter that there is no basis for this designation by Boeing, Boeing will
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`suffer no competitive disadvantage by disclosure to Defendants’ in house counsel, the document
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`will be disclosed in any event at trial, and the document is extremely important to Defendants’
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`in-houses counsel in evaluating the damages claim and advising their clients.
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`It is difficult to see how Boeing, a major aeronautical company, will suffer competitive
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`harm by disclosure of this 2006 licensing agreement to in-house counsel of companies involved
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`in the video game industry. I note, without criticizing anyone, that I have no Boeing Affidavit as
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`to any competitive harm it might suffer if this Motion is granted. It is reasonable for in-house
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`counsel to know the amount of the license and the scope of the agreement in advising their
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`clients as trial nears.
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`ORDER: The Defendants’ Boeing Motion is GRANTED.
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`Case 1:16-cv-00455-RGA Document 418 Filed 04/04/18 Page 6 of 7 PageID #: 31389
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`The Dr. Bims Motion:
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`Defendants have requested that the Special Master rule as to the parameters of Dr. Bims’
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`deposition in the EA case. On March 29th, Plaintiff submitted Dr. Bims’ prior deposition, his
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`expert reports in two cases, and a comparison of them. Plaintiff’s letter explains that the issue
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`before me is whether Dr. Bims’ deposition in the EA case should be limited to what is different
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`or omitted from his reply report in the EA case, as compared to his report in the Activision case,
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`as to which he has already been deposed. Plaintiff’s red line comparison of his expert reports is
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`helpful and it does appear that most of the reply report does not raise new issues.
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`In their letter Defendants responded that it is difficult to limit the scope or subject matter
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`of the requested Dr. Bims’ deposition. There are differences between the Activision and EA
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`cases, due to separate games and arguably other differences; so that a separate deposition is
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`required in light of his reply report in the EA case . Defendants want a full 7 hours to depose Dr.
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`Bims in the EA case, while Plaintiff urges that this is an unreasonable amount of time due to his
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`prior depositions and the limited nature of expert reply report in the EA case.
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`While I am sympathetic to Plaintiff’s argument at this late stage of the litigation and in
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`light of the busy schedule for counsel and their witnesses, I find a further deposition of Dr. Bims
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`to be important and useful in understanding the basis for Plaintiff’s damages claims. It is obvious
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`that Dr. Bims is critical to the damages issues in this litigation. Defendants complain as to Dr.
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`Bims’ use of Activision survey data for purposes of determining the damages multiplier for the
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`EA and Take-Two cases. I am also reluctant to try to restrict the scope of his further deposition,
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`because it is likely that counsel will not agree during the deposition as to what is or isn’t proper
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`questioning. Perhaps a more practical approach is to limit the time of his deposition with the
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`expectation that it will reduce the possibility of questioning into areas already covered in his
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`Case 1:16-cv-00455-RGA Document 418 Filed 04/04/18 Page 7 of 7 PageID #: 31390
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`prior deposition. I note that the EA case is not scheduled until well after April 30th so his
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`deposition need not be taken soon.
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`ORDER: Dr. Bims’ deposition in the EA case will be limited to 4 hours, but no specific
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`restriction will be imposed on the scope of his deposition.
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`/s/ Allen M. Terrell, Jr.
`Allen M. Terrell, Jr., Special Master
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`Dated: April 4, 2018
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