The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONAL AUDIO, LLC,
Plaintiff,
V. Civil Action No. 17-1751-CFC-CJB
GOOGLE, INC.,
Defendant.
MEMORANDUM ORDER
In this patent infringement case, Plaintiff Personal Audio, LLC filed a
motion to strike certain information disclosed in Defendant Google Inc.’s
Supplemental Mandatory Disclosures. D.I. 355. The motion was referred to the
Magistrate Judge, who issued a memorandum order denying the motion. D.I. 375.
Personal Audio has filed objections to that memorandum order. D.I. 378. Google
has responded to the objections. D.I. 383.
I BACKGROUND
On April 27, 2017, Google served its Mandatory Disclosures under Federal
Rule of Civil Procedure 26(a)(1), and on December 14, 2018, Google served
Supplemental Mandatory Disclosures. D.I. 375 at 2. In those supplemental
disclosures, Google identified “additional names of persons having knowledge of
facts relevant to the claim or defense of any party.” D.I. 375 at 2 (citation and
alterations omitted). Personal Audio sought to strike those “newly-identified
witnesses” that fell into three categories: “(1) nine individually-named witnesses
with alleged knowledge relevant to ‘prior art’; (2) Samsung Electronics Co., Ltd.
and LG Electronics Inc. . .. which have alleged knowledge relevant to use of
Samsung/LG components in the accused devices; and (3) ‘all manufacturers and
sellers of accused devices other than the Pixel C.’” D.I. 375 at 2 (citation and
alterations omitted). The Magistrate Judge denied Personal Audio’s motion to
strike all three categories of witnesses. D.I. 375 at 4—7.
Il. LEGAL STANDARDS
The Magistrate Judge had the authority to issue his order under 28 U.S.C. §
636(b)(1)(A). Because his ruling is non-dispositive, it “should only be set aside if
clearly erroneous or contrary to law.” Leader Techs., Inc. v. Facebook, Inc., 719 F.
Supp. 2d 373, 375 (D. Del. 2010); see also § 636(b)(1)(A). “A finding is clearly
erroneous if the determination ‘(1) is completely devoid of minimum evidentiary
support displaying some hue of credibility, or (2) bears no rational relationship to
the supportive evidentiary data.’” Leader Techs., 719 F. Supp. 2d at 375 (citing
Haines v. Liggett Group Inc., 975 F.2d 81, 92 (3d Cir. 1992)). “A magistrate
judge’s decision is contrary to law when the magistrate judge has misinterpreted or
misapplied the applicable law.” Smith Int’l Inc. v. Baker Hughes Inc., 2016 WL
6122927, at *1 (D. Del. Oct. 19, 2016) (internal quotation marks and citation
omitted).
When considering whether to strike evidence relating to an untimely or
otherwise improper disclosure, the Third Circuit has directed courts to weigh the
five Pennypack factors:
(1) the prejudice or surprise in fact of the party against
whom the excluded witnesses would have testified, (2)
the ability of that party to cure the prejudice, (3) the
extent to which waiver of the rule against calling unlisted
witnesses would disrupt the orderly and efficient trial of
the case or of other cases in the court, and (4) bad faith or
willfulness in failing to comply with the court’s order.
Meyers v. Pennypack Woods Home Ownership Assn., 559 F.2d 894, 904-05 (3d
Cir. 1977). “The exclusion of critical evidence is an extreme sanction, not
normally to be imposed absent a showing of willful deception or flagrant disregard
of a court order by the proponent of the evidence.” Jn re Paoli R.R. Yard PCB
Litig., 35 F.3d 717, 791-92 (3d Cir. 1994) (internal quotation marks, alterations,
and citations omitted).
Il. DISCUSSION
Personal Audio objects to the Magistrate Judge’s ruling regarding all three
categories of witnesses. D.I. 378 at 1-4.
A. Objection 1 — nine individually-named witnesses with alleged
knowledge relevant to “prior art”
As to the first category of witnesses, the Magistrate Judge applied the Third
Circuit’s Pennypack factors and found that they weighed against the “extreme
sanction” that Personal Audio’s motion called for. The Magistrate Judge found
that, although Google’s supplemental disclosures were untimely and the first factor
weighs in Personal Audio’s favor, the remaining four factors weigh in Google’s
favor. D.I. 375 at 3—5. Under the second factor, he found that “any prejudice to
[Personal Audio] could be cured” because “Google has repeatedly made clear to
[Personal Audio] that it would stipulate to an extension of the discovery deadline
for the additional purpose of allowing [Personal Audio] to conduct discovery of the
third parties that Google included in its supplemental disclosure.” DI. 375 at 5
(citation and alterations omitted). Under the third factor, he held that the delayed
disclosure will have “little impact on the orderly and efficient trial of this case,
because there is no trial date set, and the deadlines for expert discovery and
dispositive motions have been vacated pending additional rulings regarding claim
construction.” D.I. 375 at 5 (citations omitted). And, under the fourth factor, he
found that the evidence does not show that Google’s delay “was the result of a
willful intent to sandbag [Personal Audio] (as opposed to a mere oversight).” D.lI.
375 at 5 (citation omitted).
Personal Audio objects to the Magistrate Judge’s analysis arguing that (1)
Google did not have an adequate explanation for its untimely disclosure, (2) the
prejudice to Personal Audio cannot be cured because Google’s delayed disclosures
“deprived [Personal Audio] of its opportunity to conduct the many months of
discovery with full knowledge of the prior art Google holds relevant,” and (3)
Google willfully delayed its disclosure because Google knew or should have
known of the information long before its submission of the supplemental
disclosures. D.I. 378 at 1-2.
Those objections in no way establish that the Magistrate Judge’s ruling was
“completely devoid of minimum evidentiary support displaying some hue of
credibility, or . . . bears no rational relationship to the supportive evidentiary data,”
or was contrary to law. Leader Techs., 719 F. Supp. 2d at 375. First, as to the
timeliness issue, the Magistrate Judge agreed with Personal Audio that Google’s
disclosures were untimely and thus Personal Audio’s objections to that finding are
irrelevant. Second, Personal Audio has not established that, contrary to the .
Magistrate Judge’s finding, it cannot cure any prejudice resulting from Google’s
untimely disclosure; Personal Audio has not pointed to any facts showing that it
cannot conduct adequate discovery before the extended discovery deadline agreed
to by Google. Finally, I agree with the Magistrate Judge that the record—
including the information provided in Personal Audio’s objections—does not
establish that Google acted with willful intent.
Personal Audio also objects on the grounds that the Magistrate Judge should
not have considered, or should have given little weight to, the third Pennypack
factor—‘the extent to which waiver of the rule against calling unlisted witnesses
would disrupt the orderly and efficient trial of the case or of other cases in the
court.” D.I. 378 at 2; Pennypack, 559 F.2d at 904. But Personal Audio cites no
precedent for removing that factor from the Third Circuit’s framework. Plus, even
if the Magistrate Judge had removed the third factor from his analysis, the factors
would still have weighed in Google’s favor: three factors would have weighed in
favor of Google and only one would have weighed in favor of Personal Audio.
I will thus overrule Personal Audio’s objections to the Magistrate Judge’s
refusal to strike the first category of witnesses.
B. Objection 2 — generic identification of Samsung and LG and
generic manufacturers of accused devices.
With respect to the remaining two categories of witnesses, Personal Audio
objects to the Magistrate Judge’s denial of its motion to strike on the grounds that
Google “generically identifie[d]’ in its supplemental disclosures corporate entities
rather than “specific individuals.” D.I. 378 at 4. But that objection is directed to
Google’s disclosures, not the Magistrate Judge’s order, because Personal Audio
did not argue in its briefing on its motion to strike that Google’s identification of
corporate entities rather than individuals was improper. To the extent Personal
Audio raised that issue at all, it did so only in passing during a teleconference
regarding the motion. Tr. 8:19—9:1. “[A]rguments raised in passing . . ., but not
squarely argued, are considered waived.” John Wyeth & Bro. Ltd. v. CIGNA
Intern. Corp., 119 F.3d 1070, 1076 n.6 (3d Cir. 1997), Because Personal Audio
has not provided any reasons why the Magistrate Judge’s finding as to the
remaining two categories of witnesses was clearly erroneous or contrary to law, I
will overrule Personal Audio’s objections.
For the foregoing reasons, this Eighteenth day of February 2020, IT IS
HEREBY ORDERED that Plaintiff's Objections to the Magistrate Judge’s March
19, 2019 Memorandum Order (D.I. 378) are OVERRULED.
UNITED STATES DISTRICT JUDGE