Regents of the University of Minnesota v. AT&T Mobility LLC

Background

The opinion addresses four related patent actions brought by Regents of the University of Minnesota against AT&T Mobility LLC, Sprint Solutions, Inc. and Sprint Spectrum L.P., T-Mobile USA, Inc., and Cellco Partnership d/b/a Verizon Wireless. Ericsson, Inc., Nokia of America Corp., Nokia Solutions and Networks US LLC, and Alcatel-Lucent USA Inc. were identified as intervenor-defendants in the captions. The defendants appealed Magistrate Judge Tony N. Leung’s November 17, 2023 order denying motions to strike portions of Dr. Jonathan Wells’s expert report and all of Dr. Lynde’s supplemental report.

Standard of Review

Because the challenged order concerned nondispositive pretrial matters, the district court could reverse it only if it was clearly erroneous or contrary to law. The court explained that a finding is clearly erroneous when the reviewing court is firmly convinced that a mistake was made, and a decision is contrary to law when it fails to apply or misapplies relevant law or procedural rules. The court also stated that arguments not presented first to the magistrate judge generally could not be raised for the first time on appeal.

Dr. Wells’s Report

Regents had sought to amend its infringement contentions before the close of expert discovery. The magistrate judge denied that request because Regents had not been diligent. Defendants later moved to strike portions of Dr. Wells’s report concerning the scrambling and mapping steps in two patents, arguing that those opinions were precluded by the order denying amendment.

The magistrate judge concluded that the earlier amendment order addressed timeliness and did not decide whether Regents’ existing infringement contentions gave defendants adequate notice of its theories. Because defendants’ motion to strike relied on preclusion as the basis for challenging the opinions, the magistrate judge denied that part of the motion. On appeal, defendants argued that the magistrate judge should also have addressed arguments from the earlier amendment proceedings. The district court rejected that argument, finding that defendants had not raised those arguments in the motion to strike and that the magistrate judge did not clearly err by declining to address them.

Dr. Lynde’s Supplemental Report

Regents served an interrogatory asking defendants to identify agreements conveying patent rights involving wireless communication technology or technologies related to LTE networks. Sprint did not identify its license agreement with General Access Solutions, Ltd., although Regents received a copy of that agreement in November 2021. After Dr. Lynde issued a damages report that did not address the agreement, Sprint alerted Regents to the omission. Dr. Lynde then prepared a supplemental report addressing the agreement approximately two weeks after the expert-disclosure deadline.

AT&T and Verizon moved to strike the supplemental report as untimely and based on information not produced during discovery. The magistrate judge denied the motion, finding that the late production was substantially justified and harmless. The magistrate judge noted that Sprint should have identified the agreement, but also that Regents had received a copy in 2021. The magistrate judge further found that AT&T and Verizon were not significantly harmed because Ericsson had access to the agreement and the unredacted report, Ericsson and Nokia were leading the defense and had agreed to indemnify AT&T, Verizon, and Sprint, and all defendants relied on the same damages expert. By the time of the ruling, AT&T and Verizon also had access to the agreement and unredacted report.

The district court agreed that the magistrate judge properly considered the relevant factors. It rejected defendants’ concern that they could not compel Sprint to appear at trial as unrelated to the timeliness and discovery issues raised by the motion. It also concluded that Ericsson and the defendants’ shared damages expert sufficiently represented AT&T and Verizon’s interests, making exclusion of the supplemental report unnecessary. The court did not decide the merits of any hypothetical future trial motions.

Disposition

Judge John R. Tunheim denied Defendants’ Appeal/Objection of the Magistrate Judge’s Decision dated November 17, 2023 and affirmed the magistrate judge’s order. The ruling concerned pretrial expert-report and discovery issues; it did not decide the underlying patent-infringement claims.