Plaintiff,
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`Defendant.
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`Plaintiff,
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`UNILOC 2017 LLC,
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`v.
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`PAYCHEX, INC.,
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`UNILOC 2017 LLC,
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`v.
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`ATHENAHEALTH, INC.,
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`
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`Case 1:19-cv-11278-RGS Document 40 Filed 02/18/20 Page 1 of 7
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-cv-11272-RGS
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`Civil Action No. 1:19-cv-11278-RGS
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`Defendant.
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`OPPOSITION OF UNILOC TO MOTION TO STRIKE REBUTTAL EXPERT
`DECLARATION AND TESTIMONY
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`1.
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`There is no rebuttal expert declaration.
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`The motion is somewhat misnamed, as there is no “rebuttal expert declaration.” Uniloc
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`followed Local Rule 16.6(e)(3) to the letter by including with its Opening Brief, Dkt. No. 261, an
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`expert declaration of Dr. Michael Shamos, Dkt. No. 26-1, and then making Dr. Shamos available
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`for deposition. (“The offering party must make the expert available for deposition.”) Defendants
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`then opted to take his deposition. At the deposition, Defendants examined Dr. Shamos for three
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`hours on the myriad technical issues the patents in this case present. Uniloc then cross-examined
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`1 Docket numbers are to the filings in 1:19-CV-11272-RGS
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`1
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`Case 1:19-cv-11278-RGS Document 40 Filed 02/18/20 Page 2 of 7
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`the witness for approximately one half hour. There was, and there is, no rebuttal expert
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`declaration.
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`As there was no rebuttal expert declaration, the Motion is simply one to strike (i.e., not
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`allow citation to) Dr. Shamos’s deposition testimony. The Local Rules, however, do not require
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`a showing of good cause for either party to cite deposition testimony in a responsive brief, nor is
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`there any reason why they should.
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`a. Local Rule 16.6(e)(3) does not require a showing of good cause for either
`party to cite expert deposition testimony in a responsive brief.
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`Local Rule 16.6(e)(3) does not impose a good cause requirement for either party to cite
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`expert deposition testimony in a responsive brief:
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`The offering party must make the expert available for deposition …. 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 … for good cause shown.
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`(Emphasis added). Defendants fail to discuss the portion of the rule emphasized above.
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`Defendants rely upon a portion of the above sentence in Local Rule 16.6(e)(3) that states
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`“no further expert testimony shall be permitted unless … for good cause shown.” But the
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`complete sentence, which begins with the phrase “[o]ther than … deposition testimony,”
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`explicitly carves out deposition testimony from the good cause requirement.
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`An adverse party is not obligated to take an expert deposition. An adverse party that
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`wants to limit the record can do so by forgoing taking the expert deposition. By contrast, opting
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`to take the expert deposition creates the risk the expert, at his deposition, may give testimony
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`unfavorable to the adverse party. Local Rule 16.6(e)(3) clearly warns of this risk by pointing out:
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`“Either party may cite to the expert deposition testimony in its responsive brief.” (Emphasis
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`2
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`Case 1:19-cv-11278-RGS Document 40 Filed 02/18/20 Page 3 of 7
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`added). Here, Defendants would have known of this risk, and nevertheless opted to depose the
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`witness. Their motion asks the Court to allow only one party to cite to the expert deposition
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`testimony, which would ignore this provision of Local Rule 16.6(e)(3).
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`Where the adverse party opts to take the expert’s deposition, Local Rule 16.6(e)(3) thus
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`specifically allows either party to cite the deposition testimony of an expert in its responsive
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`brief, without requiring a showing of good cause. Nor does the rule make a distinction based on
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`which party elicits the cited testimony.
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`Defendants appear to have overlooked this foundational issue, as their entire Motion
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`consists of argument that Uniloc has not shown good cause. It seems Defendants did not realize
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`the Rule limits the requirement to show good cause to only expert declarations. The Rule excepts
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`expert deposition testimony from that requirement.
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`b. Local Rule 16.6(e)(3)’s allowing either party to cite deposition testimony
`in a responsive brief without a showing of good cause rests on sound
`policy.
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`There is a reason why the rule allows either party to cite deposition testimony, while
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`otherwise barring “further expert testimony,” i.e., declarations. Because a declaration cannot
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`itself be cross-examined, allowing a declaration into evidence must allow for the witness to then
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`be deposed. And both parties were represented at the deposition, free to ask whatever questions
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`they wished. Rule 16.6(e)(3) thus requires all expert declarations to be served with the opening
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`briefs so each party can decide at that point whether to take the adverse expert’s deposition, in
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`order to use that deposition to develop factual support for its own rebuttal arguments.
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`Rule 16.6(e)(3) thus provisionally bars “further [non-deposition] expert testimony”
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`because allowing rebuttal declarations would frustrate that design. Thus, Rule 16.6(e)(3)
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`expressly imposes a showing of good cause for rebuttal declarations.
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`3
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`Case 1:19-cv-11278-RGS Document 40 Filed 02/18/20 Page 4 of 7
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`But that reasoning does not apply to deposition testimony taken under this rule. Because
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`the deposition has already been taken, allowing citation to the testimony will not lead to further
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`depositions. Rule 16.6(e)(3) thus expressly allows citation to deposition testimony without
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`showing good cause, because there would seem to be no reason to exclude it.
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`And there is much to be said for allowing citation to deposition testimony, without
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`showing good cause. Depositions taken under Rule 16.6(e)(3) provide additional evidence for the
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`Court and elucidate the parties’ arguments. And, unlike a declaration, at a deposition the witness’
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`testimony can be tested by vigorous cross-examination.
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`Adding to the Local Rule a requirement that good cause be shown for
`2.
`citation of deposition testimony by either party in a responsive brief will accomplish
`nothing, and lead to less informed judicial decisions.
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`As discussed above, in their Motion, Defendants did not discuss whether Local Rule
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`16.6(e)(3) actually required a showing of good faith for citation of expert deposition testimony
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`by either party in a responsive brief. They simply assumed that was the case, even though it was
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`not. If they were to now submit a reply brief, they would presumably urge the Court to read into
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`Local Rule 16.6(e)(3) a requirement on the retaining party to show good cause to cite expert
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`deposition testimony in a responsive brief. But upon close examination, that argument would
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`make no sense.
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`As a general rule, courts will always allow the introduction of potentially helpful
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`evidence, in the absence of some reason to exclude it. If citation to deposition testimony helps a
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`court to make a more informed decision, citation should be allowed. As explained above, there is
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`a reason for requiring a showing of good cause for citation to rebuttal declarations, namely, to
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`enable early identification of the need for depositions. But where an adverse party makes a
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`strategic decision to take an expert’s deposition, allowing citation to his testimony by only one
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`Case 1:19-cv-11278-RGS Document 40 Filed 02/18/20 Page 5 of 7
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`party would only serve to arbitrarily deprive the court of useful information, without any
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`corresponding benefit that would justify exclusion.
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`Further, at a deposition, an expert is commonly asked questions not only about his
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`declaration, but also about any aspects of the technology of interest to the questioner. The
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`attorney for the adverse party is not confined to asking questions about the expert’s declaration.
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`Rather, the attorney frequently will ask questions to elicit testimony to support its own position
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`and arguments. And whatever the question, an expert may give an expansive answer that not
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`only explicates portions of his declaration, but adds new facts, theories, observations, etc. And
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`those questions could come from counsel for either party. It would be unfair to allow only one
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`party to a deposition to cite the testimony of the expert, which may be why Rule 16.6(e)(3)
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`explicitly allows either party to cite the testimony.
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`But the most powerful reason for not reading in such a requirement is that it
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`accomplishes nothing. It would seem a court could only benefit by having this deposition
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`testimony cited to it, particularly as both parties were able to question the witness. Nowhere in
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`their Motion do Defendants identify any harm that would result from this Court’s receiving the
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`witness’s deposition testimony. They thus they make no effort to justify extending to deposition
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`testimony a requirement to show good cause.
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`3.
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`If required, good cause can be shown here.
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`As discussed above, Defendants apparently did not realize Local Rule 16.6(e)(3) does not
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`require good cause be shown for either party to cite to expert deposition testimony in a
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`responsive brief. So they spent their entire Motion arguing Uniloc has not shown good cause,
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`5
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`Case 1:19-cv-11278-RGS Document 40 Filed 02/18/20 Page 6 of 7
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`rather than address whether the requirement exists for deposition testimony. Nevertheless, this
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`response will discuss the good cause issue, on the assumption a showing were required.
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`Perhaps the most obvious examples of a showing of good cause would be as to cross
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`examination that responds to direct examination of the witness by the Defendants. The
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`accompanying Foster declaration cites to three specific areas where Dr. Shamos was questioned
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`extensively by Defendants, and where his cross-examination responded directly to that
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`examination. It would obviously be unfair to allow Defendants to question extensively on a
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`subject, while not allowing Uniloc to cite testimony it elicited effectively rebutting or
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`neutralizing the testimony on which Defendants would rely.
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`Another example of where good cause could be shown would be as to the testimony of
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`Dr. Shamos with respect to indefiniteness. See dep. testimony at 119-20, summarized in Foster
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`Decl., Ex. 16. As will be discussed in upcoming claim construction briefing, Defendants have to
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`show indefiniteness by clear and convincing evidence. A defendant arguing indefiniteness would
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`normally file a motion explaining its argument in detail, and submit supporting evidence, if it
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`had any. The patent owner would then file an answer to the motion, supported by a rebuttal
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`declaration responding, as appropriate, to the various details of the adeptness argument.
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`But that did not happen here, because Defendants asked the Court to consider
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`indefiniteness as part of the Markman process, and asked for 10 extra pages in their opening
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`brief, ostensibly to allow them to argue the issue in detail. Dkt. No. 23. But prior to briefing,
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`Defendants did not provide a detailed explanation of their indefiniteness theory. They only
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`stated, tersely, and incompletely
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`“Claims, 6, 8, 20, 22, 24, 35, 37, and 39 were previously held indefinite in Uniloc USA, Inc.et al.
`v. AVG Techs. USA, Inc., No. 2:16-cv-393, Dkt. 210, pp. 51-55 (E.D. Tex., Aug. 16, 2017). Each
`of those claims is indefinite for at least the reasons that they were held indefinite in that case.”
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`6
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`Case 1:19-cv-11278-RGS Document 40 Filed 02/18/20 Page 7 of 7
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`(Emphasis added.) That was it. Because of this noncommunicative exposition, Uniloc (and thus
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`Dr. Shamos) were forced to wait for Defendants’ opening brief to know what to respond to. To the
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`extent that Dr. Shamos’ deposition testimony on this subject was new, for the above reason that
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`was unavoidable.
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`Dated: February 18, 2020
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`/s/ James J. Foster
`Paul J. Hayes
`James J. Foster
`Kevin Gannon
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`Email: phayes@princelobel.com
`Email: jfoster@princelobel.com
`Email: kgannon@princelobel.com
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`ATTORNEYS FOR THE PLAINTIFF
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
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`served with a copy of this document via the Court’s CM/ECF system.
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`/s/ James J. Foster
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`7
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