Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-CV-11272-RGS
`EXPEDITED CONSIDERATION
`REQUESTED PURSUANT TO
`LOCAL RULE 5.1(c)
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`Civil Action No. 1:19-CV-11278-RGS
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`DEFENDANTS’ EMERGENCY MOTION
`TO STRIKE IMPROPER REBUTTAL EXPERT DECLARATION AND
`TESTIMONY OF PLAINTIFF’S CLAIM CONSTRUCTION EXPERT
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`UNILOC 2017 LLC,
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`Plaintiff,
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`vs.
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`PAYCHEX, INC.,
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`Defendant.
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`UNILOC 2017 LLC,
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`Plaintiff,
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`vs.
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`ATHENAHEALTH, INC.,
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`Defendant.
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 2 of 9
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`I.
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`INTRODUCTION
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`Plaintiff has attempted an end-run around L.R. 16.6(e)(3), which prohibits rebuttal
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`expert testimony without good cause. The improper expert testimony should be struck.
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`Because the parties’ responsive claim construction briefs are due on February 20,
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`Defendants request expedited briefing.1
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`On February 10, 2020, after the Defendants concluded their cross examination of
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`Plaintiff’s claim construction expert, whose declaration was submitted with Plaintiff’s
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`opening claim construction brief on January 23, 2020, Plaintiff improperly: 1) introduced
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`over 11 pages of single-spaced rebuttal opinions as “evidence”; and 2) conducted a direct
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`examination concerning those previously-undisclosed rebuttal opinions formed after
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`Defendants served their opening claim construction brief (and that naturally went beyond
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`the scope of cross-examination, given Defendants had no notice of these opinions). The
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`newly disclosed opinions accounted for 22 pages of the deposition transcript (out of a total
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`of approximately 120 pages).
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`The testimony concerning the newly disclosed rebuttal opinions was guided by 11
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`pages of a typed witness statement—a witness statement that was not disclosed until
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`Plaintiff began its redirect.
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`1 Pursuant to Local Rule 5.1(c), Defendants respectfully request that this motion be given
`emergency consideration. The February 20, 2020 deadline for responsive claim
`construction briefs is quickly approaching, and Defendants requests final resolution of this
`issue. The Defendants only learned of Plaintiff’s improper intended rebuttal testimony on
`February 10, 2020, while Plaintiff has had Defendants’ claim construction brief since
`January 23, 2020, and more than enough opportunity to move for leave to submit the
`rebuttal opinions. Accordingly, Defendants request that, if Plaintiff intends to submit an
`opposition, the time period for that submission be limited to three calendar days, to
`February 17, 2020.
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`1
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 3 of 9
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`Plaintiff’s actions were in direct violation of the local rules for patent cases.
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`Plaintiff provided no advance notice to Defendants of the new rebuttal opinions. If Plaintiff
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`sought to introduce a rebuttal declaration and testimony, then it needed to move for leave
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`and establish good cause. Plaintiff did not, and cannot, do so. The local rules provide for
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`the orderly presentation of claim construction arguments. If the rebuttal opinions are not
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`stricken, Defendants will be prejudiced by not having received fair notice of the alleged
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`“evidence” supporting Plaintiff’s positions.
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`Defendants request expedited consideration because the parties’ rebuttal claim
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`construction briefs are due on February 20, 2020, and Defendants are seeking relief that
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`will impact that briefing.
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`II.
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`RELIEF REQUESTED
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`Defendants move the Court to strike: 1) the direct examination by Plaintiff’s
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`counsel, Mr. Foster, beginning on page 99 of the rough transcript (the final is not ready at
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`the time of the filing of this motion) and continuing to the end of the transcript; and 2)
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`exhibits 11 through 16 introduced by Mr. Foster, which amount to an improper expert
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`witness statement disclosed out of time
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`Defendants further request that the Court instruct Plaintiff to refrain from filing the
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`stricken testimony and exhibits with the Court or relying upon them in any way in support
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`of claim construction.
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`III. ARGUMENT
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`Plaintiff Violated the Local Rules
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`Local Rule 16.6(e)(3) provides:
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`Expert Testimony. Any party seeking to rely on expert testimony to
`support claim construction must include with its opening brief an expert
`declaration. The offering party must make the expert available for
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`2
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 4 of 9
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`deposition not later than 21 days before the responsive due date. Either party
`may cite to the expert deposition testimony in its responsive brief. Other
`than the initial declaration and deposition testimony, no further expert
`testimony shall be permitted unless the court requests further testimony
`or for good cause shown.
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`L.R. 16.6(e)(3) (emphasis added).
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`Plaintiff submitted a declaration of its expert, Dr. Shamos, with its opening claim
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`construction brief on January 23, 2020, and Defendants deposed Dr. Shamos on February
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`10, 2020.
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`Plaintiff never sought leave of Court to submit additional expert opinions, and at
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`no time before the deposition did Plaintiff inform Defendants of its intent to introduce
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`additional expert opinions. Instead, Plaintiff prepared a series of exhibits constituting a
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`rebuttal expert witness statement and then attempted to sneak them in as “deposition
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`testimony” in an attempted end-run around the local rules. Without advance notice,
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`Plaintiff chose to spring the improper opinions in redirect during the deposition.
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`More specifically, after the conclusion of Defendants’ cross-examination, Plaintiff
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`introduced six exhibits of written expert testimony, created by Dr. Shamos in rebuttal to
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`Defendants’ claim construction briefing:
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`[For Plaintiff] BY MR. FOSTER:
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`Q. Dr. Shamos, you understand you’re still under oath?
`A. Yes, I do.
`Q. All right. You have in front of you your computer with a number of
`documents that have been filed in court; is that right?
`A. Yes.
`Q. Would you open up on the computer the document entitled defendant’s joint
`opening brief on claim construction and indefiniteness.
`A. Yes, I have that. I have a flash drive, if you want to look at these documents.
`***
`BY MR. FOSTER:
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`3
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 5 of 9
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`Q. Have you read that document?
`A. Yes.
`Q. Have you formed any opinions on statements that are contained in that
`document?
`A. I have rebuttal argument to some of the points made in the brief.
`***
`MR. FOSTER: Ask the reporter to mark as Exhibit 11 this document.
`A. I'm ready.
`BY MR FOSTER:
`Q. Okay. Who prepared this document?
`A. I did.
`Q. And what was the purpose of your preparing it?
`A. I was asked to look at defendant’s Markman brief and see if I disagreed
`with anything in there.
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`Ex. 1, Shamos Dep. (Rough) at 99:19-101:12 (attorney colloquy and objections omitted;
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`emphasis added).
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`Plaintiff has no valid excuse for not including the entirety of Dr. Shamos’ opinions
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`with Plaintiff’s opening claim construction brief. Under the claim construction procedures
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`dictated by the local rules, Defendants disclosed their claim construction positions well
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`before the parties filed their opening claim construction briefs. Thus, there were no
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`surprises in Defendants’ opening claim construction brief—Plaintiff already knew what
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`Defendants’ positions were.
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`Moreover, Plaintiff has no excuse for waiting until after the cross examination of
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`its expert at deposition to disclose these newly minted opinions. Given Plaintiff’s conduct,
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`Plaintiff cannot establish good cause. See Gouin v. Nolan Assocs., LLC, 325 F.R.D. 521,
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`523 (D. Mass. 2017) (In FRCP 16 context, “In evaluating whether a party has shown good
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`cause, courts consider 1) ‘the diligence of the party seeking the amendment’ and 2) whether
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 6 of 9
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`the opposing party would be prejudiced if modification were allowed. ‘[I]ndifference by
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`the moving party’ weighs against a showing of good cause.” (citations omitted; alteration
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`in original; emphasis added)).
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`The Opinions Could Have Been Provided Earlier
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`The rebuttal opinions fall into two categories: (1) opinions responding to
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`Defendants’ claim construction positions (exhibits 11-15), and (2) opinions responding to
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`Defendants’ indefiniteness positions based on lack of antecedent basis (exhibit 16). As to
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`the new expert opinions concerning claim construction, these opinions could have been
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`provided in conjunction with Plaintiff’s opening claim construction brief, given that they
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`respond to claim construction positions disclosed to Plaintiff before the filing of the
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`opening claim construction briefs. Significantly, Defendants did not submit an expert
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`declaration and thus there was no competing expert opinions that Dr. Shamos may have
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`wanted to take issue with. Under the Massachusetts local rules, expert witnesses do not
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`offer rebuttal testimony to attorney argument during claim construction proceedings.
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`As to the rebuttal to Defendant’s indefiniteness positions, Plaintiff had Defendants’
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`positions on indefiniteness long before the opening briefs were due. Defendants’ identified
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`the phrases in the claims that it contends lacked antecedent basis in both their invalidity
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`contentions and their Rule 16.6(e)(1) disclosures. See e.g. Ex. 2, Defendants’ 16.6(e)(1)
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`Disclosure (stating, “To the extent the court is willing to take up indefiniteness as part of
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`claim construction proceedings, Defendants maintain that the following claims are
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`indefinite for the following reasons: . . .”). On motion from the Defendants, the Court
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`ordered the parties to brief indefiniteness as part of the claim construction proceedings.
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 7 of 9
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`D.I. 31, Electronic Order (granting motion to brief indefiniteness).2 Therefore, Plaintiff
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`was obligated to provide any expert testimony in connection with indefiniteness with its
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`opening briefing. L.R. 16.6(e)(3).
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`Defendants are prejudiced by the late disclosure because (1) the orderly claim
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`construction process pursuant to the local rules do not allow for rebuttal expert testimony
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`absent good cause, and there is no good cause here, (2) Defendants prepared their claim
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`construction briefing assuming the local rules would be followed by Plaintiff, (3) Plaintiff’s
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`conduct was specifically calculated to provide Defendants no notice of the rebuttal
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`testimony and thus deprived Defendants an opportunity to meaningfully respond or cross-
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`examine, (4) Plaintiff’s conduct and belated disclosure of opinion testimony is needlessly
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`running up Defendants’ costs.
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`IV. CONCLUSION
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`For the foregoing reasons, the Defendants respectfully request that the Court strike
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`the direct examination of Plaintiff’s expert by Plaintiff’s counsel, Mr. Foster (beginning on
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`page 99 of the rough draft and continuing to the end), strike deposition exhibits 11 through
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`16 to that examination, and instruct Plaintiff to refrain from filing the stricken testimony
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`and exhibits with the Court.
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`2 Defendants also raised the issue in the L.R. 16.6(e)(1)(b) conference on December 18,
`2019.
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 8 of 9
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`Dated: February 12, 2020
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`Respectfully submitted,
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`/s/James Sebel
`James Sebel (BBO #693531)
`sebel@fr.com
`Steven R. Katz (BBO #642732)
`katz@fr.com
`Matthew C. Berntsen (BBO #678533)
`berntsen@fr.com
`Christopher R. Dillon (BBO #640896)
`dillon@fr.com
`Andrew G. Pearson (BBO #688709)
`pearson@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
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`Attorneys for Defendant
`athenahealth, Inc.
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`/s/Andrea L. Martin
`Peter J. Chassman (pro hac vice)
`Email: pchassman@reedsmith.com
`Michael J. Forbes (pro hac vice)
`Email: mforbes@reedsmith.com
`REED SMITH LLP
`811 Main Street, Suite 1700
`Houston, TX 77002-6110
`PJC Telephone:
`(713) 469-3885
`MJF Telephone:
`(713) 469-3864
`Facsimile:
`(713) 469-3899
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`Andrea L. Martin (BBO #666117)
`Burns & Levinson LLP
`125 High Street
`Boston, MA 02110
`Telephone:
` (617) 345-3869
`Facsimile:
` (617) 345-3299
`Email: amartin@burnslev.com
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`Attorneys for Defendant
`PAYCHEX, INC.
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`Case 1:19-cv-11278-RGS Document 35 Filed 02/12/20 Page 9 of 9
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`LOCAL RULE 5.1(C) REQUEST FOR EMERGENCY CONSIDERATION
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`Pursuant to Local Rule 5.1(c), Defendants respectfully request that this motion be
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`given emergency consideration. The February 20, 2020, deadline for responsive claim
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`construction briefs is quickly approaching, and Defendants requests final resolution of this
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`issue. The Defendants only learned of Plaintiff’s intended rebuttal testimony on February
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`10, while Plaintiff has been in possession of Defendants’ claim construction briefs since
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`January 23, 2020. Accordingly, Defendants request that, if Plaintiff intends to submit an
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`opposition, the time period for that submission be limited to three calendar days, to
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`February 17, 2020.
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`LOCAL RULE 7.1(A)(2) CERTIFICATION
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`Counsel for Defendants certify that counsel for Defendants, Peter J. Chassman for
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`Paychex and James Sebel for athenahealth, conferred with counsel Plaintiff, James Foster,
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`by telephone on February 12, 2020 regarding the issues encompassed by this motion and
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`in good faith attempted to resolve or narrow the outstanding issues. The parties were not
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`able to resolve these issues.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing instrument was served
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`on all counsel of record via ECF on this twelfth day of February, 2020.
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`By: /s/ James Sebel
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`James Sebel
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`8
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