Case 6:12-cv-00799-JRG Document 314 Filed 02/23/15 Page 1 of 5 PageID #: 9803
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-799-LED
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`JURY TRIAL DEMANDED
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`§§
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`§
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`INVENSYS SYSTEMS, INC.,
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`v.
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`Plaintiff,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants.
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`PLAINTIFF INVENSYS SYSTEMS, INC.’S REPLY IN SUPPORT OF ITS MOTION TO
`COMPEL DEFENDANTS TO COMPLY WITH ¶ 3 OF THE DISCOVERY ORDER
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`Case 6:12-cv-00799-JRG Document 314 Filed 02/23/15 Page 2 of 5 PageID #: 9804
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`The only issue relevant
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`to the disposition of Plaintiff
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`Invensys Systems,
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`Inc.’s
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`(“Invensys”) Motion to Compel Defendants to Comply with ¶ 3 of the Discovery Order, ECF
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`No. 259, (the “Motion to Compel”) is whether Defendants can designate more expert witnesses
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`than the Discovery Order permits and then decide at trial which five experts they will call to
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`testify. See Discovery Order, ECF No. 53. Defendants’ interpretation of the Discovery Order
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`encourages sandbagging, would upset settled practice in this district and waste the time of both
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`litigants and judges (as it has already done in this case).
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`Defendants’ claim that Invensys is improperly relying on undisclosed expert witnesses is
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`irrelevant (and untrue). Whether a particular witness’s testimony falls under the ambit of Rule of
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`Evidence 701 or 702 can be decided at trial or in a motion in limine. The Court need not decide
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`this issue to determine whether Defendants should be now required to comply with the five
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`expert witness limit in ¶ 3 of the Discovery Order.
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`I.
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`The Discovery Order Is Not Intended to Allow Parties to Designate an Unlimited
`Number of Expert Witnesses.
`As its name suggests, the Discovery Order is intended to control the scope of discovery.
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`But Defendants insist that the limits on the number of experts in the Discovery Order do not
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`come into play until the time of trial, well after expert discovery is complete. On its face,
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`Defendants’ position is indefensible.
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`Defendants’ argument is also inconsistent with the plain language of the Discovery Order
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`itself. Paragraph 4 of the Discovery Order is titled “Discovery Limitations” and states that
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`“discovery is limited in this cause to the disclosures described in Paragraphs 1 – 3” (second
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`emphasis added).
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`Defendants’ reliance on the Docket Control Order is similarly misplaced. Paragraph 3 of
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`the Discovery Orders states that: “Each side is limited to five testifying expert witnesses. ‘Side’
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`means a party or group of parties with a common interest. By the date provided in the Docket
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`Control Order, each side shall disclose to the other side” various information about its five
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`testifying experts (e.g., expert reports). The natural reading of this paragraph (especially in light
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`1
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`Case 6:12-cv-00799-JRG Document 314 Filed 02/23/15 Page 3 of 5 PageID #: 9805
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`of ¶ 4 and the purpose of the Discovery Order) is that the limitation on the number of experts is
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`intended to apply at the time expert reports are due under the Docket Control Order, not at the
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`time of trial. In contrast, Defendants’ reading of ¶ 3 divorces the first sentence from the last.
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`Defendants’ claims of prejudice are also baseless.
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`Invensys was able to limit itself to
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`four expert witnesses and to distinguish between witnesses who will be offering lay opinions
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`under Rule 701 and expert opinions under Rule 702 by the deadline for filing expert reports.
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`There is no reason Defendants could not have done the same.
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`In addition, Invensys already
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`made concessions to Defendants regarding the number of experts by agreeing to increase the
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`number of experts from two (the default number in Judge Davis’s form Discovery Order) to five.
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`Finally, limiting the number of expert witnesses is standard practice in both patent and
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`non-patent cases in this district. See, e.g., U.S. District Court for the Eastern District of Texas
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`homepage, http://www.txed.uscourts.gov/index.shtml
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`(click “Judges” and select “Rodney
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`Gilstrap,” then select “Discovery Order” under “Sample Forms” or “Sample Patent Forms;” click
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`“Judges” and select “Leonard Davis,” then select “Discovery Order Form” under “Sample Patent
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`Forms”).
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`In fact, the Discovery Order in this case is very similar to this Court’s form order.
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`Defendants’ interpretation of the standard Discovery Order that is widely used in this district
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`would completely negate these benefits and upset this Court’s settled practice.
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`II. Whether a Particular Witness Will Provide Lay or Expert Opinion Is Irrelevant to
`Defendants’ Failure to Comply with the Discovery Order.
`Defendants essentially concede that the Court does not need to decide at this time
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`whether a particular witness’s testimony is covered by Rule 701 or 702. See Defs.’ Opp’n to
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`Pl.’s Mot. to Compel Defs. to Comply with ¶ 3 of the Disc. Order at 4 n.2, ECF No. __ (stating
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`that Defendants are not waiving their objection to Invensys’s use of non-disclosed Rule 702
`witnesses at trial and “intend to raise this issue at the appropriate time”).1 Defendants should
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`1 Invensys does not agree with Defendants’ assertion that some of the employee witnesses on
`which Invensys’s damages expert, Christopher Bakewell relies, should have been disclosed
`under Rule of Civil Procedure 26(a)(2)(C). First, many of the statements about which
`Defendants have complained are factual, not opinion testimony. Second, Rule of Civil
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`2
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`Case 6:12-cv-00799-JRG Document 314 Filed 02/23/15 Page 4 of 5 PageID #: 9806
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`comply with the Discovery Order and choose their five Rule 702 experts now, just as Invensys
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`did when it filed its expert reports.
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`CONCLUSION
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`For the foregoing reasons, and the reasons set forth in Invensys’s Motion to Compel, the
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`Court should compel Defendants to comply with the five-expert limit in ¶ 3 of the Discovery
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`Order and withdraw the last three expert witnesses they have offered or otherwise immediately
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`designate their five testifying expert witnesses.
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`Dated: February 23, 2015
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`Respectfully submitted,
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`Dawn M. Jenkins
`State Bar No. 24074484
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`Dawn.Jenkins@dlapiper.com
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`Procedure 26(a)(2)(C) only applies to witnesses offering expert testimony under Rule of
`Evidence 702, not Rule 701.
`In the Fifth Circuit, a lay opinion must “be based on personal
`perception, must be one that a normal person would form from those perceptions, and must be
`helpful to the jury.” Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 693
`(Fed. Cir. 2001) (quotations omitted). Applying this standard,
`the Federal Circuit has
`permitted lay witnesses to offer opinions about enablement, rejecting an argument that those
`witnesses should have been disclosed under Rule of Civil Procedure 26(a)(2)(C). See id. at
`692-93. Likewise, “an officer or employee of a corporation may testify to industry practices
`and pricing without qualifying as an expert.” Tex. A&M Research Found. v. Magna Transp.,
`Inc., 338 F.3d 394, 403 (5th Cir. 2003). To the extent Invensys’s employees are offering
`opinions at all, those opinions are based on their personal perception and are the types of
`opinions they would normally provide as part of their regular job duties. Thus, they qualify as
`lay opinions under Fifth Circuit law.
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`3
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`Case 6:12-cv-00799-JRG Document 314 Filed 02/23/15 Page 5 of 5 PageID #: 9807
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`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
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`Courtney Stewart
`State Bar No. 24042039
`Todd S. Patterson
`State Bar No. 24060396
`DLA PIPER LLP
`401 Congress Ave., Suite 2500
`Austin, TX 78701-3799
`Telephone: 512.457.7017
`Facsimile: 512.721.2217
`courtney.stewart@dlapiper.com
`todd.patterson@dlapiper.com
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`J. Mark Mann
`State Bar No. 12926150
`MANN | TINDEL | THOMPSON
`300 W. Main Street
`Henderson, TX 75652
`Telephone: 903.657.8540
`Fax: 903.657.6003
`mark@themannfirm.com
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`ATTORNEYS FOR PLAINTIFF
`INVENSYS SYSTEMS, INC.
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`CERTIFICATE OF SERVICE
`The undersigned certifies that on February 23, 2015, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be
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`served by facsimile transmission and/or first class mail.
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
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`4