United States District Court, W.D. Pennsylvania
KONINKLIJKE PHILIPS ELECTRONICS N.V. and PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Plaintiffs,
ZOLL LIFECOR CORPORATION, Defendant.
Barry Fischer United States District Judge
pending before the Court is Defendant ZOLL LifeCor's
(“ZOLL”) Motion for Show Cause Order Regarding
Post-Daubert Damages and supporting attachments,
filed on September 5, 2017. (Docket No. 724). Plaintiff
Koninklijke Philips (“Philips”) filed a response
and supporting attachments on September 20, 2017. (Docket No.
738). On September 27, 2017, ZOLL filed a reply brief and
supporting attachments. (Docket No. 742). Philips filed a
sur-reply on September 29, 2017, to which ZOLL filed a
sur-reply on October 2, 2017. (Docket Nos. 745, 748). Upon
Philips's request, the Court held oral argument on
October 13, 2017. (Docket Nos. 750, 751). Because the parties
will conclude their current settlement negotiations by
November 3, 2017, the Court issued its Order immediately
after oral argument on October 13, 2017, noting that a
written opinion would follow. (Docket No. 752). Specifically,
the Court granted ZOLL's motion, ordering Philips to
identify the amount and evidentiary basis of record, and/or
whether the record requires supplementation, for any damages
claim that Philips believes may have survived this
Court's Memorandum Order and Opinion regarding the
parties' Daubert Motions, on or before October
20, 2017, at 5:00 p.m. (Id.). In support of its
Order, the Court's analysis follows.
and Procedural History
brings this civil action against ZOLL for patent infringement
under 35 U.S.C. § 271. The patents in suit are U.S.
Patent Nos. 5, 593, 427; 5, 607, 454; 5, 735, 879; 5, 749,
904; 5, 749, 905; 5, 803, 927; 5, 836, 978, and 6, 047, 212
(the “Patents-in-Suit”). These patents are
directed at electrotherapy methods for defibrillators,
allegedly including ZOLL's LifeVest wearable
defibrillator. ZOLL denies that it infringes any claim of the
Patents-in-Suit. ZOLL has also asserted affirmative defenses
for non-infringement and invalidity. (Docket No. 24).
pending before the Court is ZOLL's Motion for Show Cause
Order Regarding Post-Daubert Damages. In its motion,
ZOLL requests that Philips be required to identify the amount
and evidentiary basis for any damages claim that may have
survived the Court's Daubert Order dated July
25, 2017. (Docket No. 718). In its Daubert Order,
the Court granted, in part, and denied, in part, ZOLL's
motion to exclude the testimony of Mr. John Jarosz,
Philips's damages expert. (Id. at 12-13).
Specifically, the Court excluded the following: (1) Mr.
Jarosz's discussion of an alleged reduction in the cost
of the accused products; (2) the 50% apportionment rate as
expressed in footnote 359 of Mr. Jarosz's report; and (3)
the discussion of the importance of the patents-at-issue, Mr.
Jarosz's conversation with Dr. Patrick Wolf, and the
patented features being a “significant driver” of
the “majority of” the value of the WCD 3000.
(Id.). The Report and Recommendation of Special
Master Gale R. Peterson, (Docket No. 688), was otherwise
adopted as the Court's opinion. (Id. at 13). As
noted above, ZOLL's motion has been fully briefed, and
the Court heard oral argument at Philips's request on
October 13, 2017. (Docket Nos. 750, 751). The Court granted
ZOLL's motion after argument, ordering Philips to comply
with the Court's Order by October 20, 2017, at 5:00 p.m.
(Docket No. 752). The Court now turns to the analysis of its
Order granting ZOLL's motion.
this matter is a patent case, it is governed by the law
applicable in the United States Court of Appeals for the
Third Circuit. To this end, Federal Rules of Civil Procedure
16 and 26 are applicable. Rule 16 provides, in relevant part,
that a case management order may “modify the timing of
disclosures under Rules 26(a) and 26(e)(1).”
Fed.R.Civ.P. 16(b)(3)(B)(i). In pertinent part, Rule 26
(a) Required Disclosures.
(1) Initial Disclosure.
(A) In General. Except as exempted by Rule 26(a)(1)(B) or as
otherwise stipulated or ordered by the court, a party must,
without awaiting a discovery request, provide to the other
(iii) a computation of each category of damages claimed by
the disclosing party-who must also make available for
inspection and copying as under Rule 34 the documents or
other evidentiary material, unless privileged or protected
from disclosure, on which each computation is based,
including materials bearing on the nature and extent of
Fed. R. Civ. P. 26(a)(1)(A)(iii). In applying Rule 26, courts
have understood “computation” to require “a
specific computation of a plaintiff's damages, ”
which includes “a disclosure of evidentiary material
upon which the category of damages is based.”
Stemrich v. Zabiyaka, No. 1:12-CV-1409, 2013 U.S.
Dist. LEXIS 113674, at *3 (M.D. Pa. Aug. 13, 2013) (internal
quotations omitted). The computation “requires at least
some analysis, ” and “simply reciting a dollar
figure clearly is not enough.” Id. at *3-4.
However, the rule “does not place a great burden on the
plaintiff” because “the plaintiff needs only to
disclose what those damages are and how they were
calculated.” Id. at *4-5. “The plaintiff
must merely disclose the best information available
concerning the claim, however limited and potentially
changing it may be.” Id. at *5 (internal
respect to the supplementation of disclosures and responses,
Rule 26 provides that
(1) In General. A party who has made a disclosure under Rule
26(a)-or who has responded to an interrogatory, request for
production, or request for admission- must supplement or
correct its disclosure or response:
(A) in a timely manner if the party learns that in some
material respect the disclosure or response is incomplete or
incorrect, and if the additional or corrective information
has not otherwise been made known to the other parties during
the discovery process or in writing; or
(B) as ordered by the court.
Fed. R. Civ. P. 26(e)(1)(A)-(B). As to expert witnesses, Rule
26 provides that “[f]or an expert whose report must be
disclosed under Rule 26(a)(2)(B), the party's duty to
supplement extends both to information included in the report
and to information given during the expert's
deposition.” Fed.R.Civ.P. 26(e)(2). To satisfy Rule
26(e)(2), a plaintiff “must disclose a computation of
each category of damages using the ‘best information
available' at the ...