The opinion of the court was delivered by: Martin C. Ashman Magistrate Judge
Before the Court is Defendant AT&T Mobility LLC's ("AT&T") Motion for Reconsideration of this Court's January 20, 2011 order. See MSTG, Inc. v. AT&T Mobility LLC, No. 08 C 7411, 2011 WL 221771 (N.D. Ill. Jan. 20, 2011). AT&T asks the Court to reconsider that portion of its order denying AT&T's motion to compel Plaintiff MSTG, Inc. ("MSTG") to produce documents reflecting communications, including settlement negotiations, it had with third-party licensees with whom it entered license agreements concerning the patents at issue in this case.*fn1 Based on a careful review of the parties' briefs, the Court finds that AT&T's motion should be granted.
A motion for reconsideration is narrowly designed "to correct manifest errors of law or fact or to present newly discovered evidence." Publishers Resource, Inc. v. Walker-Davis Publications, Inc., 762 F.2d 557, 561 (7th Cir. 1985). AT&T contends that is the case here because a report by MSTG's damages expert, Frank Bernatowicz, became available after the parties submitted their original briefs. MSTG claims that AT&T received the report on January 10, 2011, ten days before the Court's order was issued, and that it should have filed a supplemental brief based on the expert report instead of waiting to file the instant motion. Although supplemental briefing would have been more economical for the parties and the Court, the time period between AT&T's receipt of the report and the Court's order was not unduly lengthy. In light of the importance of the expert report, the Court accepts it as new evidence that warrants the filing of a motion for reconsideration.
The parties once again address the issue of whether settlement negotiations should be produced pursuant to the Federal Circuit's decision in ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010). The Court's prior order noted the split in judicial opinions applying ResQNet to such negotiations and held that the case "does not require the discovery of settlement negotiations, although its exceptionally broad language may permit it under some circumstances." MSTG, 2011 WL 221771, at *13. The Court did not order MSTG to do so, however, because AT&T did not identify the negotiations it sought to produce and failed to show why settlement negotiations related to the licenses were relevant to a reasonable royalty calculation.*fn2
AT&T does not dispute the Court's interpretation of ResQNet, arguing
instead that Bernatowicz's report provides a new ground for producing
documents related to the settlement negotiations. AT&T notes that
Bernatowicz considered six license agreements that involve the '551
and '113 patents as part his reasonable royalty analysis and argues
that this fact makes both the agreements and the negotiations related
to those licenses relevant to a hypothetical negotiation.*fn3
MSTG counters this argument by first claiming that
Bernatowicz did not rely on the license agreements in his analysis.
The report, however, suggests otherwise. Bernatowicz states that the
license agreements are not comparable to negotiations between AT&T and
MSTG on the '551 and '113 patents, but he reached that conclusion only
by carefully analyzing the licences and stating, "I have reviewed
these six agreements and taken them into consideration in my
reasonable royalty analysis[.]" (Def's. Mot., Ex. A at 16.) In this
sense, at least, Bernatowicz "relied" on the licenses to find that
they cannot be used as the basis for a hypothetical negotiation
MSTG also argues that, because Bernatowicz reached his conclusions based on the four corners of the licenses themselves and did not review any settlement negotiations, those negotiations are not discoverable. In support, the company claims that the Court's prior order acknowledged that it was possible to determine whether the licenses are the most reliable agreements on which to base a reasonable royalty without considering the underlying settlement negotiations. See ResQNet, 594 F.3d at 872-73 (discussing the reliability of licenses to demonstrate a reasonable royalty). The Court, however, did not reach such a conclusion, nor did it discuss the sufficiency or insufficiency of the license agreements, standing alone, to show a reasonable royalty. Instead, the Court addressed the narrower issue of whether AT&T had carried its burden to compel discovery and noted that AT&T had not argued that the settlement negotiations would add to the information it already had in light of the licenses themselves.
Based on the new evidence before the Court, AT&T now claims that the negotiation documents could do so because they might contain information showing that the grounds Bernatowicz relied on to reach his conclusion are erroneous. Bernatowicz, for example, found that the royalty rates in the prior licenses should be discounted by 75 percent compared to the rates applicable to AT&T and that MSTG is entitled to royalties ranging from $26.4 million to $35.3 million. By contrast, Bernatowicz concluded, the combined royalties under all the prior licenses amounted to $24.4 million, even though they involve more patents than those at issue here. (Def's. Mot., Ex. A at 16, 45.) AT&T argues that the settlement negotiations could show whether this steep discount is warranted or what reasons might have led the parties to reach the terms evidenced in the third-party licenses. Moreover, such information could also shed light on the alleged "absurdity" of Bernatowicz's conclusion on the appropriate royalty figure in this case. (Id. at 5.)
The Court agrees with this analysis. Presumably, MSTG will argue at trial that Bernatowicz's report precludes any reliance on its third-party agreements involving the patents-in-suit to calculate a reasonable royalty, and AT&T will want to proffer its own expert testimony showing why that argument is incorrect. "To be admissible, expert testimony opining on a reasonable royalty rate must 'carefully tie proof of damages to the claimed invention's footprint in the market place.'" Uniloc USA, Inc. v. Microsoft, Corp., Nos. 2010-1035, 2010-1055, - F.3d - , 2011 WL 9738, at *21 (Fed. Cir. Jan. 4, 2011) (citing ResQNet, 594 F.3d at 869)). The evidence AT&T seeks to discover may distinguish the '551 and '113 patents from the other patents in the third-party licenses and may allow AT&T to show that some or all of Bernatowicz's conclusions about the six license agreements are incorrect. As such, the information could be relevant to disputing Bernatowicz's report or to forming a basis for AT&T's expert to conclude that the third-party agreements do show the market footprints of the patents-in-suit. See Fed. R. Evid. 401 ("'Relevant evidence' means evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence.").
Bernatowicz, for example, based the 75 percent discount noted above on independent studies that analyze the success rates of patent litigation, not on evidence concerning what actually occurred between MSTG and the third-party licensees. (Def's. Mot., Ex. A at 17.) Documents related to negotiations could shed light on why the parties reached their royalty agreements and could provide guidance on whether some or all of the licenses could be considered a basis for calculating a reasonable royalty between AT&T and MSTG. As ResQNet itself noted, the most reliable agreements for such a calculation can, in some cases, arise out of litigation. ResQNet, 594 F.3d at 872 ("This court observes as well that the most reliable license in this record arose out of litigation.").
Federal Rule of Civil Procedure 26(b)(1) permits discovery "of any matter that is relevant to the claim or defense of any party . . . and is not privileged." Fed. R. Civ. P. 26(b)(1). As this Court has explained, the question of whether settlement negotiations are privileged is not always easily answered. Pfizer, Inc. v. Apotex, Inc., 731 F. Supp.2d 754, 763-64 (N.D. Ill. 2010); see also In re General Motors Corp., 594 F.2d 1106, 1124 n.20 (7th Cir. 1979) (stating that "the existence of such privileges is best determined in the context of particular demands for discovery" and permitting discovery of negotiations to show the fairness of a settlement). Here, however, MSTG has not argued in its response to the instant motion that any privilege applies to its settlement negotiations.*fn4 Discovery requests are relevant "if there is any possibility that the information sought may be relevant to the subject matter of the action." Rubin v. Islamic Republic of Iran, 349 F. Supp.2d 1108, 1111 (N.D. Ill. 2004). Under this standard, the Court finds that the information AT&T seeks is discoverable because it could provide grounds for deciding if MSTG's prior licenses are -- or are not -- sufficiently comparable to the patents-in-suit to be used in calculating a reasonable royalty.
The Federal Circuit has characterized hypothetical negotiations as involving both "fantasy and flexibility." Fromson v. Western Litho Plate and Supply Co., 853 F.2d 1568, 1575 (Fed. Cir. 1988). Based on the lack of rigidity implied by this standard, as well as the facts presented, the Court joins those courts that have relied on ResQNet to allow the discovery of settlement negotiations when, as here, they are relevant to demonstrating what such a process would have resulted in. See, e.g., Tyco Healthcare Group LP v. E-Z-EM, Inc., No. 2:08-CV-262, 2010 WL 774878, at *2 (E.D. Tex. March 2, 2010). The Court notes, however, that its decision is limited to these facts involving hypothetical negotiations. As such, the Court does not question the traditional reluctance of courts, including this Court's own ruling in Pfizer, to order the discovery of settlement negotiations, and its decision does not extend beyond the specific facts at issue between the parties in this case.
For these reasons, AT&T's Motion for Reconsideration (Dckt. # 326) is granted. Within fourteen days of the entry of this order, MSTG shall produce documents reflecting communications, including settlement negotiations, it had with the six companies referenced in AT&T's motion, including Nokia, Motorola, Sanyo Electric, RPX, and ...