Eastcott v. Hasselblad A/S

892 F. Supp. 2d 587, 83 Fed. R. Serv. 3d 863, 2012 WL 4372884, 2012 U.S. Dist. LEXIS 138297
CourtDistrict Court, S.D. New York
DecidedSeptember 25, 2012
DocketNo. 11 Civ. 5383 (JSR)
StatusPublished
Cited by1 cases

This text of 892 F. Supp. 2d 587 (Eastcott v. Hasselblad A/S) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Eastcott v. Hasselblad A/S, 892 F. Supp. 2d 587, 83 Fed. R. Serv. 3d 863, 2012 WL 4372884, 2012 U.S. Dist. LEXIS 138297 (S.D.N.Y. 2012).

Opinion

MEMORANDUM ORDER

JED S. RAKOFF, District Judge.

Contrary to the apparent view of plaintiff and his counsel, a legal forum is not the place to play a shell game.

The opportunity for such shenanigans arose when, during the course of this patent infringement lawsuit, plaintiff John Eastcott, a professional photographer, deposed the expert witnesses of defendants Hasselblad A/S, Hasselblad USA Inc. (collectively “Hasselblad”), and B & H Photo & Electronics Corp (“B & H”). Pursuant to Federal Rule of Civil Procedure 26(b)(4)(E), defendants subsequently requested reimbursement in the amount of $13,552.50 for the time their expert witnesses spent preparing for and attending those depositions. Eastcott and his counsel, Douglas C. Wyatt, Esq., ignored the requests for two months and then raised dubious objections to the requests that they later withdrew. But when defendants threatened further action to obtain payment, Eastcott and his counsel sent defendants an invoice that purported to bill defendants $17,000 for the depositions of Eastcott and his wife, also a photographer. The invoice was such an obvious sham that defendants, after attempting to resolve the matter directly with Eastcott, filed a motion seeking (1) to compel Eastcott to pay $18,770.53 for defendants’ expert depositions; (2) to require Eastcott to reimburse defendants’ attorney’s fees for the expenses associated with having to secure this payment through the Court; and (3) to impose sanctions against Eastcott [589]*589and his counsel for “fabricating the charges on the ‘invoice.’ ” Defendants’ Motion for Payment of Expert Fees dated May 11, 2012 (“Defs.’ Mot.”) at 1-2.

After reviewing full briefing and oral argument, the Court hereby grants defendants’ motion, as follows: (i) Eastcott is ordered to promptly reimburse defendants $18,520.53 for the depositions of defendants’ expert witnesses; (ii) defendants are not required to pay Eastcott for any of the fees associated with Eastcott’s purported invoice; (iii) sanctions in the amount of $12,815.20 are imposed on Eastcott and his counsel, jointly and severally, for creating, submitting, and continuing to rely on the sham invoice; and (iv) the portion of the sanctions equal to defendants’ attorney fees in securing this relief shall be paid to them, and the rest to the Clerk of the Court.

The aforementioned relief is warranted by the following findings of fact and conclusions of law: On August 2, 2011, Eastcott brought this patent suit against defendants, alleging that Hasselblad had infringed his patent on a tilt-shift lens adapter and that B & H had marketed the infringing product.1 In response to interrogatories, Eastcott listed himself and his wife, Yva Momatiuk, as the two persons with factual knowledge of the infringement. Defendants’ Reply Brief dated May 23, 2012 (“Defs.’ Rep. Br.”) at 3. Accordingly, defendants’ counsel, Mark Johnson, Esq., contacted Easteott’s counsel, Douglas C. Wyatt, Esq., to arrange depositions. . Declaration of Mark C. Johnson in Support of Motion for Payment of Expert Fees dated May 23, 2012 (“Johnson Decl.”) ¶ 11. After Johnson determined by phone that Wyatt’s New York City office appeared to be Eastcott’s preferred location for his deposition, defendants noticed the deposition of Eastcott for December 20, 2011 at Wyatt’s office. Id. ¶ 12.

In pretrial discussions between the parties, Eastcott indicated that he planned to submit an “expert” report on damages. On December 5, 2011, Eastcott served this report, which he had authored himself. On December 15, this Court granted Eastcott permission to supplement this report by December 16, which he did. Id. ¶¶ 13-14. On December 17, defendants sent Eastcott a Second Supplemental Notice of Deposition. Id. The notice asked Eastcott to bring to his December 20 deposition a copy of the documents upon which he relied to form the opinions in the supplemented expert report. Id.; Plaintiffs Response Brief dated May 17, 2012 (“PL’s Resp. Br.”) Ex. 5.

During Eastcott’s deposition, he asserted that he was qualified to testify as an expert on patent infringement damages. PL’s Resp. Br. Ex. 6 at 9:8. Although Eastcott acknowledged that he would have been unqualified to testify as an expert a year earlier, he alleged that since that time he had learned about licensing agreements and reasonable royalties. Defs.’ Rep. Br. Ex. J, Deposition of John Eastcott, Dec. 20, 2011 (“Eastcott Dep.”) at 25. Still, Eastcott could not identify any “authoritative literature” on the subject, PL’s Resp. Br. Ex. 7 at 53-54, nor could Eastcott identify any relevant case law on damages, Eastcott Dep. at 15-19. Moreover, Eastcott did not bring to the deposition any of the documents requested by defendants’ [590]*590Second Supplemental Notice. Id. at 30-32.

JOHNSON: I requested that you be here with paper. Is there a reason why you haven’t?
WYATT: Objection. Mark, we received this [Second Supplemental Notice] yesterday. ... [Y]ou’re asking for a litany of documents — sorry. This is too late. JOHNSON: I received the expert report on Friday. Two days later, I supplemented the notice....
WYATT: Mr. Eastcott is not prepared to go through the documents that you requested yesterday.

Id.

In fact, Eastcott was not prepared to testify at all regarding how he formed the opinions of his supplemented expert report. Rather, as his counsel stated in response to this Court’s later questions about why Eastcott did not answer questions about the expert report at his December 20th deposition, ‘Tour Honor, we understood that Mr. Eastcott was testifying that day as a fact witness.” Transcript of Oral Argument, Feb. 21, 2012 (“2/21/12 Tr.”) at 19.

Defendants also deposed Eastcott’s wife, Yva Momatiuk. Defendants served a subpoena on Momatiuk on December 27, 2011. Pl.’s Resp. Br. Ex. 9. Although the subpoena requested an in-person deposition for Momatiuk, the parties subsequently agreed that the deposition would be taken by telephone. Johnson Deck ¶ 17. Nevertheless, Momatiuk traveled to plaintiffs counsel’s office in New York for the deposition. Id. The deposition lasted less than one hour. Defs.’ Mot. at 2. In response to questions about her knowledge of patent law, Momatiuk stated that she was not able to provide an expert opinion. PL’s Resp. Br. Ex. 10, Deposition of Yva Momatiuk, Jan. 10, 2012 (“Momatiuk Dep.”) at 19-22. She stated that she did not know why she was identified as a person with knowledge of the alleged infringement, but stated, “I think because I am married to John.” Id. at 21-22.

Meanwhile, in January 2012, Eastcott deposed two of defendants’ expert witnesses: Andrew D. Finger and Anders Poulsen. Finger subsequently billed defendants $395 per hour for his 12 hours of preparation, deposition testimony, and travel to and from New York City. Defs.’ Mot. Ex. A. Poulsen billed defendants $250 per hour plus expenses for 35.25 hours of preparation, deposition testimony, and travel. Id. On January 9, defendants sent Finger’s invoice to Eastcott, and on January 29, defendants sent Poulsen’s invoice to Eastcott. The invoices totaled $13,552.50 because defendants sought reimbursement only for their experts’ time and did not seek reimbursement for travel costs and expenses. Id.

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Related

Eastcott v. Hasselblad USA, Inc.
564 F. App'x 590 (Federal Circuit, 2014)

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Bluebook (online)
892 F. Supp. 2d 587, 83 Fed. R. Serv. 3d 863, 2012 WL 4372884, 2012 U.S. Dist. LEXIS 138297, Counsel Stack Legal Research, https://law.counselstack.com/opinion/eastcott-v-hasselblad-as-nysd-2012.