Case 1:20-cv-00393-LO-TCB Document 555 Filed 04/14/21 Page 1 of 32 PageID# 12326
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`RAI STRATEGIC HOLDINGS, INC. and
`R.J. REYNOLDS VAPOR COMPANY,
`
`Plaintiffs and Counterclaim Defendants,
`
`v.
`
`ALTRIA CLIENT SERVICES LLC; PHILIP
`MORRIS USA INC.; and PHILIP MORRIS
`PRODUCTS S.A.,
`
`Defendants and Counterclaim Plaintiffs.
`
`Case No. 1:20-cv-00393-LO-TCB
`
`REDACTED
`
`PLAINTIFFS’ OPPOSITION TO DEFENDANTS’ MOTION TO COMPEL REYNOLDS’S
`30(b)(6) DEPOSITION ON TOPICS 28, 54, AND 78
`
`

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`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION ....................................................................................................................................... 1
`
`LEGAL STANDARD .................................................................................................................................. 3
`
`ARGUMENT ............................................................................................................................................... 4
`
`1.
`
`AN ADDITIONAL DEPOSIIION OF REYNOLDS ON TOPIC 28 IS NOT
`WARRANTED ............................................................................................................................... 4
`
`A.
`
`DEFENDANTS CANNOT EXPLAIN HOW AN ADDITIONAL DEPOSITION ON
`TOPIC 28 WOULD PRODUCE ANY RELEVANT INFORMATION ................................. 4
`
`1. Both Parties‘ Dama es ExpertsRelied—‘................................................................................................... 5
`& ................ 8
`
`of the Settlement Ne otiations is Not A [0 riate Because
`
`2. Discove
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`A. MR. GILLEY WAS SUFFICIENTLY PREPARED ON ALL RELEVANT
`ASSESSSS— ------------------------------- w
`DEFENDANTS‘ OWN FAILURE TO ADEQUATELY PREPARE FOR
`MR. GILLEY‘S DEPOSITION IS AN INSUFFICIENT BASIS TO COMPEL A
`SECOND DEPOSITION OF MR. GILLEY ................................................................................ 13
`
`DEFENDANTS' REQUEST CONCERNING TOPIC 54 SEEKS PURELY EXPERT
`TESTIMONY ............................................................................................................................... 1 7
`
`H.
`
`III.
`
`IV.
`
`DEFENDANTS CANNOT SHOW THAT TESTIMONY ON TOPIC 78 IS RELEVANT ....... 20
`
`A.
`
`B.
`
`NONE OF DEFENDANTS‘ BASES WARRANT A WITNESS ON TOPIC 78 ................. 23
`
`CONCLUSION .......................................................................................................................................... 26
`
`

`

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`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`ASUS Computer Int’l v. Round Rock Rsch., LLC,
`No. 12-cv-2099, 2014 WL 1463609 (N.D. Cal. Apr. 11, 2014) .......................................................... 17
`
`Avocent Redmond Corp. v. Rose Elecs.,
`No. C06-1711, 2012 WL 4903272 (W.D. Wash. 2012) ......................................................................... 8
`
`Banks v. Office of the Senate Sergeant-At-Arms,
`241 F.R.D. 370 (D.D.C. 2007) ............................................................................................................... 3
`
`Dixon Lumber Co. v. Austinville Limestone Co.,
`256 F. Supp. 3d 658 (W.D. Va. 2017) .............................................................................................. 3, 11
`
`Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prod. Grp., LLC,
`No. 8:10-cv-187, 2015 WL 1004359 (D. Neb. Mar. 5, 2015) .......................................................... 4, 17
`
`Georgia-Pacific Corp. v. United States Plywood Corp.,
`318 F. Supp. 1116 (S.D.N.Y. 1970) ....................................................................................................... 6
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) ......................................................................................................................... 25
`
`Helios Software, LLC v. SpectorSoft Corp.,
`No. 12-cv-81, 2014 WL 3611321 (D. Del. July 18, 2014) ................................................................... 17
`
`Humanscale Corp. V. CompX Int’l, Inc.,
`No. 3:09-cv-86, 2009 WL 5091648 (E.D. Va. Dec. 24, 2009)............................................................. 10
`
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) .............................................................................................................. 23
`
`In re MSTG, Inc.,
`675 F.3d 1337 (Fed. Cir. 2012) .............................................................................................................. 8
`
`Jaguar Land Rover Ltd. v. Bentley Motors Ltd.,
`No. 18-cv-320, 2020 WL 6387380 (E.D. Va. Mar. 24, 2020) ......................................................... 3, 11
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009) ............................................................................................................ 23
`
`MP NexLevel, Ltd. Liabl. Co. v. Codale Elec. Supply, Inc.,
`No. 8-cv-727, 2012 WL 2368138 (D. Utah June 20, 2012) ................................................................. 20
`
`
`
`ii
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`

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`
`NewMarket Corp. v. Innospec Inc.,
`No. 3:10-cv-503, 2011 WL 1306008 (E.D. Va. Apr. 1, 2011) ............................................................. 10
`
`Prometheus Labs., Inc. v. Roxane Labs., Inc.,
`805 F.3d 1092 (Fed. Cir. 2015) ............................................................................................................ 23
`
`Sanofi-Aventis U.S. v. Genentech, Inc.,
`No. CV 15-5685, 2016 WL 7444676 (C.D. Cal. Mar. 30, 2016) ....................................................... 8, 9
`
`TC Tech. LLC v. Sprint Corp.,
`No. 16-cv-153, 2019 WL 2515779 (D. Del. 2019) ................................................................................ 9
`
`Wellman v. Bobcat Oil & Gas, Inc.,
`No. 10-cv-00147, 2011 WL 13161415 (S.D.W. Va. Dec. 1, 2011) ....................................................... 3
`
`STATUTES
`
`35 U.S.C. § 287 ........................................................................................................................................... 21
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 26(b)(2)(C)(ii) .......................................................................................................... 4, 13, 17
`
`Fed. R. Civ. P. 30 .................................................................................................................................... 4, 17
`
`Fed. R. Civ. P. 30(a)(2)(ii) ............................................................................................................................ 3
`
`Fed. R. Civ. P. 30(a)(2)(A)(ii) .................................................................................................................... 13
`
`Fed. R. Evid. 408(b) ...................................................................................................................................... 8
`
`
`
`iii
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`INTRODUCTION
`
`Defendants’ Motion raises four separate issues. For each, Defendants seek discovery to
`
`which they are not entitled, whether because it is irrelevant, a belated request without any good
`
`cause for the delay, or directed to the wrong type of witness (a fact Witness rather than the expert).
`
`Each of Defendants’ requests should be denied.
`
`First, Defendants seek additional testimony 011 Topic 28 concerning the negotiations
`
`——
`
`—is a comparable license to be taken
`
`into accormt in the hypothetical negotiation between Defendants and Reynolds for damages
`
`purposes for certain of the patents asserted here. Both sides’ damages experts rely on the four
`
`square comers of that agreement—not the negotiations leading to it. Indeed,—
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`— not relevant to any issue in this case. Defendants did not
`
`even attempt to articulate any pruported claim of relevance until after their own expert, as well as
`
`Reynolds’s expert, had submitted their reports on damages. And even now, while Defendants
`
`offer a laundry list of information they seek about the negotiations (Dkt. 547 at 9), they do not
`
`even attempt to explain why any of that information is relevant to the reasonable royalty analysis.
`
`Because the— are not relevant, Defendants’ request for a deposition on
`
`the topic should be denied.
`
`Second, Defendants seek to compel a second deposition of Mr. Gilley,—
`
`—, on the ground that, after Defendants deposed Mr. Gilley, he
`
`discussed with Reynolds’s damages expert Dr. Sullivan—
`
`—. But a fact witness’s subsequent conversation with an
`
`expert is not good cause for re-deposing the fact witness—if it were, Reynolds should be permitted
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`to depose many of Defendants’ witnesses again. In any event, Defendants had this document at
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`

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`least a month before Mr. Gilley’s deposition. Contrary to Defendants’ assertions, it wasn’t buried.
`
`Instead,i—~ aner. Gilleywas
`
`designated as a Rule 30(b)(6) witness to address_ exactly like this docrnnent.
`
`Defendants also knew before Mr. Gilley’s deposition that Reynolds was contemplating converting
`
`— Defendants either chose not to ask Mr. Gilley about
`
`this document or neglected to do so; either way, their failure does not provide good cause for a
`
`second deposition.
`
`Third, Defendants seek a fact witness on Topic 54, relating to non-infringing alternatives
`
`to the ’556 patent. But there are no facts to discover from Reynolds fact witnesses regarding this
`
`Topic—only litigation facts within the province of the lawyers and experts. Reynolds’s expert
`
`Mr. Kodama merely responded— for the ’556 patent put forth
`
`by Defendants’ experts, and Defendants will be able to explore Mr. Kodama’s opinion fully in his
`
`expert deposition.
`
`Fourth, Defendants seek fact witness testimony on Topic 78, regarding-
`
`—made by Nu Mark, Defendants’ corporate affiliate, and
`
`JUUL, Defendants’ licensee. Much like with Topics 28 and 54, the parties’ experts have already
`
`analyzed and agreed upon the relevant, available facts within Topic 78—namely,—
`
`- To the extent Defendants seek information on other N11 Mark products, -
`
`— Besides, N11 Mark is Defendants’ own corporate sibling. Ifthey wished to
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`demonstrate that those products were covered by their patent, it was their burden to produce the
`
`

`

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`relevant documents for expert analysis. Defendants’ Motion is a veiled attempt to cover up for
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`their own discovery shortcomings.
`
`LEGAL STANDARD
`
` As relevant to Sections I and III-IV below, Federal Rule of Civil Procedure 30(b)(6) allows
`
`a corporate party to designate individuals to testify on its behalf and requires those designated
`
`individuals to testify about information “known or reasonably available to the organization.” Fed.
`
`R. Civ. P. 30(b)(6). Although those individuals must be educated to respond on behalf of the
`
`entity, “the duty to prepare does not require the designee to have a ready answer for every question
`
`posed or a document to shore up every subjective belief and opinion.” Wellman v. Bobcat Oil &
`
`Gas, Inc., No. 10-cv-00147, 2011 WL 13161415, at *2 (S.D.W. Va. Dec. 1, 2011).
`
`
`
`Indeed, in the case of corporate depositions “a rule of reason applies. There is no obligation
`
`to produce witnesses who know every single fact, only those that are relevant and material to the
`
`incident or incidents that underlie the suit.” Wellman, 2011 WL 13161415, at *2 (citation omitted);
`
`see Banks v. Office of the Senate Sergeant-At-Arms, 241 F.R.D. 370, 373 (D.D.C. 2007) (rejecting
`
`the argument that Rule 30(b)(6) requires a corporation to prepare on “any fact potentially relevant
`
`to the described topic known by any employee of the corporation”).
`
`
`
`In determining whether a corporate deponent has satisfied its Rule 30(b)(6) obligations,
`
`courts consider whether the corporation has “put forth a thorough, good faith effort to prepare its
`
`designee.” Jaguar Land Rover Ltd. v. Bentley Motors Ltd., No. 18-cv-320, 2020 WL 6387380, at
`
`*2 (E.D. Va. Mar. 24, 2020) (Leonard, J.) (quoting Dixon Lumber Co. v. Austinville Limestone
`
`Co., 256 F. Supp. 3d 658, 667 (W.D. Va. 2017)).
`
` As relevant to Section II below, a party may not depose a person without leave of court if
`
`“the deponent has already been deposed in the case.” Fed. R. Civ. P. 30(a)(2)(ii). “The party
`
`seeking a court order to extend the examination, or otherwise alter the limitations, is expected to
`
`
`
`3
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`

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`show good cause to justify such an order.” Exmark Mfg. Co. Inc. v. Briggs & Stratton Power
`
`Prod. Grp., LLC, No. 8:10-cv-187, 2015 WL 1004359, at *2 (D. Neb. Mar. 5, 2015) (quoting Fed.
`
`R. Civ. P. 30 advisory committee’s note, 2000 Amend., Sub. (d)). “[T]he court must limit the
`
`frequency or extent of discovery … if it determines that … the party seeking discovery has had
`
`ample opportunity to obtain the information by discovery in the action.” Fed. R. Civ. P.
`
`26(b)(2)(C)(ii).
`
`ARGUMENT
`
`I.
`
`
`
`AN ADDITIONAL DEPOSITION OF REYNOLDS ON TOPIC 28 IS NOT
`WARRANTED
`
`The Court should not compel an additional deposition for Topic 28 because: (A) the
`
`information that Defendants seek related to the
`
` is not relevant
`
`and (B) Mr. Gilley was adequately prepared for and already testified on the relevant scope of Topic
`
`28. See Fed. R. Civ. P. 26(b)(2)(C)(ii) (limiting discovery where “the party seeking discovery has
`
`had ample opportunity to obtain the information by discovery in the action”).
`
`A.
`
`Defendants Cannot Explain How an Additional Deposition on Topic 28
`Would Produce Any Relevant Information.
`
`
`
`Defendants seek an additional deposition on Topic 28 claiming that
`
`
`
`relevant—but what Defendants seek is testimony concerning a laundry list of issues regarding the
`
` (Dkt. 547 at 7.) True—the agreement is
`
`negotiations leading up
`
`negotiations are not relevant.
`
`. (Dkt. 547 at 9.) Those
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`
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`For months, Reynolds asked Defendants to explain why additional information beyond the
`
`terms of the
`
` would be relevant. When Defendants first raised
`
`this issue in December, Reynolds asked Defendants to explain why additional testimony about the
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` would be relevant. (Ex. 1 [Dec. 10, 2020 Email from T. Vitt] at 1.) In
`
`
`
`4
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`response, silence. Defendants raised this issue again in late February, but only after submitting
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`their opening damages report. (Dkt. 547, Ex. 6 [Feb. 26, 2021 Letter from J. Koh] at 1.) In a
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`March 3 meet and confer, Reynolds explained that Defendants’ expert had relied on the terms of
`
`the agreement, and again asked Defendants to explain why additional testimony would be relevant.
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`Again, silence, this time for almost a month until after Reynolds served its expert damages report.
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`(Dkt. 547, Ex.7 [Mar. 30, 2021 Email from J. Koh] at 1.) Only on the eve of this Motion did
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`Defendants try to explain what additional information they wanted, but even now have still not
`
`articulated why further testimony on the negotiations would be relevant, given that both parties’
`
`damages experts merely relied on the terms of the
`
`. (See Ex.
`
`2 [Apr. 1, 2021 Email from T. Vitt] at 1; Dkt. 547, Ex. 12 [Apr. 6, 2021 Email from T. Vitt] at 1.)
`
`1.
`
`Both Parties’ Damages Experts Relied on the Terms
`
`
`
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`Paul Meyer (Defendants’ damages expert) and Ryan Sullivan, Ph.D. (Reynolds’s damages
`
`expert) agree that the
`
` are economically relevant to the
`
`
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`hypothetical negotiation of a reasonable royalty in this case. (See, e.g., Ex. 3 [Meyer Report] at
`
`¶ 191; Ex. 4 [Sullivan Report] at ¶ 145.) Mr. Meyer opined that,
`
`
`
`
`
`
`
`
`
`(Ex. 3 [Meyer
`
`Report] at ¶ 193.)
`
`
`1 See Dkt. 547 at 2 n.1 (“Nu Mark is a former e-vapor operating company of Altria Group, Inc.,
`the parent company of Counterclaim Plaintiffs Philip Morris USA Inc. and Altria Client Services
`LLC.”).
`
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`5
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`
`
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`Both parties’ damages experts considered the
`
` in assessing a reasonable
`
`royalty rate under the multi-factor test explained in Georgia-Pacific Corp. v. United States
`
`Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970). Georgia-Pacific factor 2 allows an
`
`expert to consider “rates paid by the licensee for the use of other patents comparable to the patent-
`
`in-suit.” Id. To be useful, a license of other patents needs to be both economically and technically
`
`comparable to the hypothetical negotiation concerning the patents-in-suit.
`
`
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`Mr. Meyer analyzed the terms of the
`
` and opined that
`
`the agreement was “economically comparable” to the license that would have resulted from the
`
`hypothetical negotiation between Defendants and Reynolds. (Ex. 3 [Meyer Report] ¶ 213.) He
`
`acknowledged
`
`
`
`
`
`. (Id. ¶¶ 214-15.)
`
`
`
`the
`
`Mr. Meyer chose not to rely primarily
`
`. Instead, he used
`
` to derive the baseline royalty for his analysis for three
`
`of the asserted patents—the ’545, the ’911, and the ’265 patents.
`
`
`
`
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`In evaluating the
`
`, Mr. Meyer similarly relied on
`
`the terms of the agreement in determining a baseline royalty rate for the three patents. (Id. ¶¶ 241-
`
`52; 256-63.) Specifically, he focused on the agreement’s language
`
`
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`6
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`Dr. Sullivan served a rebuttal report responding to Mr. Meyer’s analysis
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`. Dr. Sullivan disagreed with Mr. Meyer’s decision to use
`
` to set the baseline royalty because
`
`
`
`
`
`
`
`
`
`
`
` (Ex. 4 [Sullivan Report] at ¶128.) Dr. Sullivan
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`relied on the terms
`
` to determine an appropriate royalty rate.
`
`
`
`Relying on the technical experts’ agreement
`
` to derive a royalty rate for those patents. Dr. Sullivan also used the
`
`, Dr. Sullivan used the
`
`
`
`
`
`
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`to derive a royalty rate for the ’374 patent, relying on Reynolds’s technical expert’s
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`assessment
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`
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`
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`Notably, Dr. Sullivan used the same apportionment factors that Mr. Meyer used—each
`
`used the apportionment values that Defendants’ expert Mr. McAlexander attributed
`
`
`
`
`
`.
`
`
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`In sum, the parties’ damages experts agree that the
`
` are relevant to the
`
`hypothetical negotiation in this case. They apportion the value of the
`
` to
`
`derive a royalty rate for the Defendants’ asserted patents using the same apportionment factors.
`
`They have a core disagreement over which agreement to use to quantify reasonable royalties, with
`
`Reynolds’s expert contending that the
`
` is the appropriate comparable
`
`license, and Defendants’ expert championing the
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` But regardless of
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`7
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`that dispute, both experts rely on the terms of the
`
`.
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`2.
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`Discovery of the Settlement Negotiations is Not Appropriate Because
`Dr. Sullivan
`
`
`
`
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`Evidence of settlement negotiations and offers are not admissible unless the negotiations
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`and offers are admitted to prove a “witness’s bias or prejudice, [or] negating a contention of undue
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`delay … .” Fed. R. Evid. 408(b). Although the Federal Circuit has “not yet decided the extent to
`
`which evidence of settlement negotiations would be admissible under Rule 408,” it has emphasized
`
`that “the district court has discretion to limit discovery of material that is not itself admissible and
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`that was not utilized by the opposing party to protect settlement confidentiality.” In re MSTG,
`
`Inc., 675 F.3d 1337, 1346 n.4, 1347 (Fed. Cir. 2012)
`
`
`
`The negotiations leading up to the
`
` are not relevant to
`
`any issue in this case. See Sanofi-Aventis U.S. v. Genentech, Inc., No. CV 15-5685, 2016 WL
`
`7444676, at *3 (C.D. Cal. Mar. 30, 2016) (denying motion to compel Rule 30(b)(6) witness to
`
`testify about the negotiation of settlement agreements where there was “no showing of need to go
`
`beyond the four corners of the settlement agreements”). In Sanofi-Aventis, the court denied the
`
`plaintiffs’ motion to compel the defendants to designate a witness pursuant to Rule 30(b)(6) to
`
`testify about the negotiations of a settlement agreement and license where the defendants’ expert
`
`did not rely upon the negotiations. Id. at *3.
`
`
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`Where the party opposing the motion to compel has not relied upon settlement negotiations
`
`or offers, “the district court has discretion to limit discovery of material that is not itself admissible
`
`and that was not utilized by the opposing party to protect settlement confidentiality.” In re MSTG,
`
`Inc., 675 F.3d at 1347. Reynolds’s damages expert Dr. Sullivan relied exclusively on the terms
`
`of the
`
`; he did not consider or rely upon any information
`
`regarding the negotiation of the agreement. See Avocent Redmond Corp. v. Rose Elecs., No. C06-
`
`
`
`8
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`1711, 2012 WL 4903272, *2-*3 (W.D. Wash. 2012) (granting protective order to patentee to bar
`
`accused infringer from taking a 30(b)(6) deposition on aspects of a patentee’s prior settlement
`
`negotiations where the patentee had already produced the agreements); see also TC Tech. LLC v.
`
`Sprint Corp., No. 16-cv-153, 2019 WL 2515779, *8-*9 (D. Del. 2019) (excluding patentee’s
`
`damages expert’s opinions where the expert based the royalty on an “opening offer in a
`
`negotiation” without showing it was “a reliable measure of a rate resulting from the hypothetical
`
`negotiation”).
`
`
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`Defendants argue that their damages expert Mr. Meyer “relies on much more than the
`
`‘terms’
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` (Dkt. 547 at 9.) This statement is totally irrelevant
`
`for this Motion, because he does not rely on the negotiations leading to the agreement. See Sanofi-
`
`Aventis, 2016 WL 7444676, at *3 (“[T]here is no showing of need to go beyond the four corners
`
`of the settlement agreements. Plaintiffs motion to compel is therefore denied.”). Nor have
`
`Defendants made any attempt to explain why the information they seek is relevant to the
`
`hypothetical negotiation. Indeed, Reynolds’s damages expert likewise did not rely on the
`
`negotiations leading to the
`
`.
`
`
`
`
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`Notably, Defendants do not explain in their Motion why the negotiations of the
`
`or the related items they list in their memorandum are relevant to the
`
`hypothetical negotiation in this case; nor could they. The terms of the agreement are crystal clear.
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`Defendants’ damages expert concedes this. (See Ex. 3 [Meyer Report] at ¶ 193
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`9
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`
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`The exemplary testimony Defendants’ cite on page 8 of their memorandum highlights the
`
`
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`lack of relevance of the testimony they seek. (Dkt. 547 at 8.) Defendants complain that Mr. Gilley
`
`was unprepared to discuss
`
`
`
`the
`
` for purposes of the hypothetical negotiation; further testimony on
`
`. But the parties’ experts agree on how to apportion
`
`this issue is not relevant.
`
`
`
`Because additional testimony on Topic 28 is not relevant to any issue in this case,
`
`Defendants’ Motion should be denied.
`
`A. Mr. Gilley was Sufficiently Prepared on All Relevant Aspects of
`
`
`
`
`Mr. Gilley was deposed on December 3, 2020. (Ex. 5 [Gilley Dep. Tr.] at 9:23.) Reynolds
`
`designated Mr. Gilley on numerous 30(b)(6) topics, including Topic 28. (Id. at 10:21-11:9.) Topic
`
`28 concerns
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` (Dkt. 547, Ex. 3 at 12) Reynolds objected to Topic 28,
`
`, as follows:
`
`
`
`
`
`
`
`
`2 Defendants’ cases are inapposite. See NewMarket Corp. v. Innospec Inc., No. 3:10-cv-503, 2011
`WL 1306008, at *6 n.4 (E.D. Va. Apr. 1, 2011) (noting that the 30(b)(6) topics related to
`“fundamental issues identified in the pleadings”); Humanscale Corp. V. CompX Int’l, Inc., No.
`3:09-cv-86, 2009 WL 5091648, at *5 (E.D. Va. Dec. 24, 2009) (where the 30(b)(6) witness
`“claimed ‘facts’ related to the topics were protected by the attorney client privilege and was
`unfamiliar with the documents in the case”). Here, in contrast, Mr. Gilley adequately answered
`each question within the scope of the topic and never claimed he could not or would not answer
`due to attorney-client privilege. Moreover, Defendants never made clear that the negotiations
`leading up to the
` were “fundamental issues” nor was this made known
`in the pleadings. It took Defendants months to even try to articulate the relevance of the
`negotiations, let alone the importance.
`
`
`
`10
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`Case 1:20-cv-00393-LO-TCB Document 555 Filed 04/14/21 Page 15 of 32 PageID# 12340
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`
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`Mr. Gilley was fully prepared to testify. and did in fact testify. 011 all relevant aspects of
`
`Topic 28. See Jaguar. 2020 WL 6387380. at *2 (explaining that courts consider whether the
`
`corporation has “put f01th a thorough, good faith effort to prepare its designee” in determining
`
`whether a corporate deponent has satisfied its Rule 30(b)(6) obligations (quoting Dixon. 256 F.
`
`Supp. 3d at 667)).
`
`)—A
`
`)—A
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`

`

`Case 1:20-cv-00393-LO-TCB Document 555 Filed 04/14/21 Page 16 of 32 PageID# 12341
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`Defendants’ statement that Mr. Gilley “didn’t review
`
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`Mr. Gilley was prepared. Besides. Defendants are not seeking another deposition 011 Topic
`
`28 because Mr. Gilley was unprepared; Defendants want another deposition on Topic 28 to elicit
`
`12
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`

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`Case 1:20-cv-00393-LO-TCB Document 555 Filed 04/14/21 Page 17 of 32 PageID# 12342
`Case 1:20-cv-00393-LO-TCB Document 555 Filed 04/14/21 Page 17 of 32 Page|D# 12342
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`testimony about the negotiations— which are irrelevant
`
`to any issue in this case.
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`Reynolds respectfully requests that the Court reject Defendants’ request for an additional
`
`deposition on Topic 28.
`
`II.
`
`DEFENDANTS’ OWN FAILURE TO ADEQUATELY PREPARE FOR
`MR. GILLEY’S DEPOSITION IS AN INSUFFICIENT BASIS TO CONIPEL A
`
`SECOND DEPOSITION OF MR. GILLEY
`
`Defendants seek a second deposition with Mr. Gilley because he discussed a single
`
`eeeeeeem.—
`
`—I Defendants new
`
`leave to
`
`depose Mr. Gilley a second time so that Defendants can remedy their own failure to ask Mr. Gilley
`
`about a document that was available to them over a month before Mr. Gilley’s deposition. See
`
`Fed. R. Civ. P. 30(a)(2)(A)(ii) (explaining that “[a] party must obtain leave of court .
`
`.
`
`. if the
`
`parties have not stipulated to the deposition and .
`
`.
`
`. the deponent has already been deposed in the
`
`case.”). Because Defendants have “had ample opportunity to obtain the information” that they
`
`now seek “by discovery in the action,” Defendants should not be permitted to subject Mr. Gilley
`
`to another deposition. Fed. R. Civ. P. 26(b)(2)(C)(ii). This is especially tlue here where the parties
`
`agreed in advance that depositions would presumptively be limited to only one day. (Dkt. 97 at 9
`
`(“[D]epositions . .. will presumptively be limited to one day
`
`.”).)
`
`Defendants’ claim that they did not have “an opportunity to explore the basis for such
`
`factual input” (Dkt. 547 at 10) is clearly belied by the facts, and Defendants cannot meet their
`
`burden to show otherwise. The document was available to Defendants prior to Mr. Gilley’s
`
`produced with Bates number RJREDVA 00154308]. A
`3 The document is an
`PDF version capturing t e re evantportion— asExhibit 7.
`
`l3
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 555 Filed 04/14/21 Page 18 of 32 PageID# 12343
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`
`deposition; Mr. Gilley was designated and prepared to testify regarding
`
`Defendants were on notice
`
`
`
`; and
`
`
`
`
`
`First, the
`
` was produced by Reynolds in October 2020—well over a month
`
`before Mr. Gilley’s December 3, 2020, deposition;
`
`
`
`
`
` Anyone preparing
`
`for Mr. Gilley’s deposition would have readily found this document.
`
`
`
`Second, Mr. Gilley was designated and prepared to testify regarding the relevant
`
`information,
`
`, at his deposition.4
`
`
`
` Mr. Gilley was designated to testify on
`
`Reynolds’s behalf with respect to, among other topics, Topics 51 and 52 related
`
`
`
`
`
`
`
`
`
`(Ex. 8 [Defendants’ Notice of 30(b)(6) Topics 51 and 52]
`at 17.) Defendants’ Motion does not even allege that Mr. Gilley was unprepared on those topics—
`
`he was prepared on them. The document in question—
`
`—falls squarely within
`
`those topics regarding
`
` Defendants’ failure to question Mr. Gilley about something is
`
`no justification to unreasonably force Mr. Gilley and Reynolds to prepare for and defend a second
`
`
`4 For clarity, and although not directly relevant to this pending dispute, Reynolds has produced
`many document
`
` Regardless, it is certainly not Reynolds’s obligation to identify documents for
`Defendants to question Reynolds’s witnesses about; nor is it Reynolds’s obligation to identify
`every document upon which its expert will rely in advance of that expert’s report.
`
`
`
`14
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`

`

`Case 1:20-cv-00393-LO-TCB Document 555 Filed 04/14/21 Page 19 of 32 PageID# 12344
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`
`deposition.
`
`
`
`Third, Defendants were aware of Reynolds’s damages contentions and the potential
`
`relevance
`
` at the time of Mr. Gilley’s deposition. Defendants seek to absolve their
`
`failure to address the
`
` at Mr. Gilley’s deposition by pointing to the use of this
`
`document by Reynolds’s expert in his expert report that was served after Mr. Gilley’s deposition.
`
`(Dkt. 547 at 10.) Defendants’ complaint that “Reynolds [sic] damages contentions preceding
`
`Mr. Gilley’s prior deposition include no reference
`
`
`
`
`
`(Dkt. 547 at 11) is untenable for two reasons:
`
`
`
`(a) As early as November 9, 2020, Reynolds included in its relevant interrogatory response
`
`that the amount of the reasonable royalty may be informed by the
`
`
`
`
`
` (Ex. 9 [Reynolds’s Nov. 9,
`
`2020, Supp. Resp. to Interrogatory No. 4] at 4-6.) It is common in patent litigation that,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` (quoting Sidak, Gregory J. (2016), “Converting Royalty Payment
`
`Structures for Patent Licenses,” The Criterion Journal on Innovation, 1:901-914, at 905)).)5 Thus,
`
`
`5 Attached as Ex. 10.
`
`
`
`15
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`Defendants were on notice that the information in this document would be relevant.
`
`In fact,
`
`Defendants admitted this information was relevant when they served their Rule 30(b)(6) deposition
`
`notice topics on October 20, 2020. (Ex. ## [Defendants’ Notice of 30(b)(6)—
`
`(b) Defendants’ complaint that Reynolds did not provide “any underlying analysis or
`
`assumptions— relied upon by Reynolds’ damages expert,” 03kt. 547 at 11) is a
`
`clear request for premature expert testimony. This Court agreed when it denied Defendants’
`
`Motion to Compel requesting the Court to compel Reynolds to provide “the underlying facts
`
`supporting Reynolds’s theory of damages” and “the factual bases for the methodology and form
`
`of damages that they intend to pursue for each asserted patent.” (Dkt. 357 at 2', see also Dkt. 444
`
`[Motions Hearing Tr.] at 10:22-11:2 (“THE COURT: I think that their [interrogatory response on
`
`damages], and, frankly, are adequate at this point. . .. And as far as the other details are concerned,
`
`the expert reports are due soon . . . .”); Dkt. 426 at 1.) It would have been improper, and impossible,
`
`for Reynolds to provide this information to Defendants before Mr. Gilley’s deposition. Defendants
`
`scheduled Mr. Gilley’s deposition before the parties were due to exchange expert reports.6
`
`Accordingly, because Defendants possessed the relevant document well in advance of a
`
`deposition for which Mr. Gilley was specifically designated on the relevant topic, Defendants’
`
`6 In preparing their reports. both pa