Can a Damages Expert also be a Percipient Witness?

In a patent infringement suit, the defendant asked the judge to compel the production of all documents that it subpoenaed from the plaintiff’s damages expert witness, and that such production be made at least four days prior to submission of Defendant‘s rebuttal damages report. Defendant also sought an order that the expert appear for two full day depositions. 

The suit was over the ’571 patent entitled “Electronically Alterable Non-Volatile Memory with N-Bits PER Cell.” The patent generally relates to non-volatile memory devices.  In particular, the ’571 patent concerns an apparatus and method for programming multi-level memory cells that may be programmed to multiple states and reliable ways to program and correctly read cells for multiple programmed states. 

Defendant asserted that the individual in question was both an expert witness for Plaintiff on the issue of licensing (and relatedly, damages) as well as a percipient witness “to facts and circumstances relating to Defendant‘s newly-added counterclaims for breach of the parties’ 2013 Agreement.” Defendant stated that the expert was previously Plaintiff‘s licensing counsel, and that “[y]ears ago, he pursued a license from Defendant on behalf of Plaintiff up to and after the execution of the 2013 Agreement.” On February 8, 2019, Plaintiff submitted an expert report on behalf of the expert.