UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION

ECOFACTOR, INC. 

Plaintiff, 

v. 

GOOGLE LLC, 

Defendant. 

Case No. 6:20-cv-00075-ADA

MOTION TO EXCLUDE EXPERT OPINIONS OF TODD SCHOETTELKOTTE 

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TABLE OF CONTENTS 

I. INTRODUCTION ............................................................................................................... 1

II. ARGUMENT ....................................................................................................................... 1 

A. MR. SCHOETTELKOTTE IMPROPERLY RELIES ON AN ECONOMICALLY NONCOMPARABLE ASSET PURCHASE AGREEMENT, NON-COMPARABLE VALUATIONS, AND 

NON-COMPARABLE INTERNAL DOCUMENTS THAT WERE NOT PRODUCED IN THIS CASE. . 1 

1. The Trane Asset Purchase Agreement and Related Trane Internal Email ................... 1

2. “Assumed” Rate ............................ 7

3. Company Valuations Based on Comparisons to High-Level Financials of Other 

Companies ............................................................................................................................. 8

B. THE INTERNAL TRANE DOCUMENTS ON WHICH MR. SCHOETTELKOTTE RELIES ARE 

NOT PROPERLY IN THE RECORD FOR THIS CASE. .................................................................. 9 

C. MR. SCHOETTELKOTTE SHOULD NOT BE PERMITTED TO RELY ON USAGE DATA 

THAT WAS WITHHELD UNTIL AFTER THE CLOSE OF FACT DISCOVERY AND OPENING 

REPORTS, AND OF WHICH EVEN HE HAS NO UNDERSTANDING ......................................... 13 

III. CONCLUSION .............................................................................................................. 17

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TABLE OF AUTHORITIES 

Cases

CSIRO v. Cisco, 

809 F.3d 1295 (Fed. Cir. 2015) ................................................................................................. 7 

Finjan, Inc. v. Secure Computing Corp., 

626 F.3d 1197 (Fed. Cir. 2010) ................................................................................................. 1 

General Electric Co. v. Joiner, 

522 U.S. 136 (1997) .................................................................................................................. 6 

LaserDynamics, Inc. v. Quanta Computer, Inc., 

694 F.3d 51 (Fed. Cir. 2012) ..................................................................................................... 2 

Lucent Techs., Inc. v. Gateway, Inc., 

580 F.3d 1301 (Fed. Cir. 2009) ............................................................................................. 2, 5 

Mformation Techs., Inc. v. Rsch. in Motion Ltd., 

No. C 08-04990 JW, 2012 WL 2339762 (N.D. Cal. June 7, 2012) .......................................... 8 

Oracle Am., Inc. v. Google Inc., 

798 F. Supp. 2d 1111 (N.D. Cal. 2011) ..................................................................................... 7 

ProTradeNet, LLC v. Predictive Profiles, Inc., 

No. 6:18-CV-00038-ADA, 2019 WL 6499488 (W.D. Tex. Oct. 11, 2019) ............................. 6 

Summit 6, LLC v. Samsung Elecs. Co., 

802 F.3d 1283 (Fed. Cir. 2015) ................................................................................................. 6 

Trustees of Bos. Univ. v. Everlight Elecs. Co., 

141 F. Supp. 3d 147 (D. Mass. 2015) ...................................................................................... 17 

Uniloc U.S.A. v. Microsoft Corp., 

632 F.3d 1292 (Fed. Cir. 2011) ................................................................................................. 1 

United States v. Brownlee, 

744 F.3d 479 (7th Cir. 2014) ................................................................................................... 17 

Rules

Fed. R. Civ. P. 26 ................................................................................................................. passim 

Fed. R. Civ. P. 37 ................................................................................................................. passim 

Federal Rule of Evidence 702 ........................................................................................... 6, 14, 16 

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I. INTRODUCTION 

Plaintiff EcoFactor, Inc. (“EcoFactor”) hereby respectfully moves to strike certain 

opinions from the rebuttal expert report of Google’s damages expert, Mr. Schoettelkotte. The first 

set of opinions relate to an economically non-comparable asset purchase agreement, noncomparable internal documents, and non-comparable valuations. These opinions should be 

excluded, not only because their non-comparability is well established under Federal Circuit law, 

but also because Google failed to disclose its intention to rely on this information in response to 

numerous discovery requests by EcoFactor, and in fact, much of the information at issue was 

never even produced in this case. The second set of opinions relate to usage data produced for the 

first time with Google’s rebuttal expert report, despite the fact that the information was responsive 

to numerous discovery requests. Google should be precluded from relying on this usage 

information, as EcoFactor was never provided the opportunity to take discovery on it, and Mr. 

Schoettelkotte himself did nothing to ascertain the reliability of the document. 

II. ARGUMENT 

A. Mr. Schoettelkotte Improperly Relies On An Economically NonComparable Asset Purchase Agreement, Non-Comparable Valuations, And 

Non-Comparable Internal Documents That Were Not Produced In This 

Case. 

1. The Trane Asset Purchase Agreement and Related Trane 

Internal Email 

For a damages expert, such as Mr. Schoettelkotte, to present evidence of an agreement as 

part of his damages opinion, the Federal Circuit requires that “there must be a basis in fact to 

associate the royalty rates used in prior licenses to the particular hypothetical negotiation at issue 

in the case.” Uniloc U.S.A. v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011); see also 

Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1211 (Fed. Cir. 2010) (“[U]se of past 

patent licenses under factors 1 and 2 must account for differences in the ... economic 

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circumstances of the contracting parties.”). It is Mr. Schoettelkotte’s (and Google’s) burden to 

establish the economic comparability of the agreements on which he relies. Lucent Techs., Inc. v. 

Gateway, Inc., 580 F.3d 1301, 1329 (Fed. Cir. 2009). Moreover, “[w]hen relying on licenses to 

prove a reasonable royalty, alleging a loose or vague comparability ... does not suffice.” 

LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012). 

Mr. Schoettelkotte relies on an Asset Purchase Agreement between Trane U.S., Inc. 

(“Trane”) and EcoFactor. In the conclusion of his analysis of Georgia Pacific Factor 1, he states: 

Of all the agreements considered under this factor, the transaction with Trane is the most 

relevant. As an initial matter, the transaction with Trane was outside the context of 

litigation. In addition, the rights to EcoFactor’s patent portfolio were compensated in a 

 structure and includes two of the patents at issue (and would have 

provided rights to the third patent at issue when it issued in January 2020). 

Ex. A, Expert Report of W. Todd Schoettelkotte Relating to EcoFactor’s Damages, October 22, 

2021 (“Schoettelkotte Rpt.”) ¶ 141.1

 

This opinion should be excluded for two reasons. First, the Trane transaction itself is 

clearly not comparable to the hypothetical negotiation. Second, the in that 

transaction was expressly not related to any patent rights. 

In the Asset Purchase Agreement, Trane purchased 

 Schoettelkotte Rpt. ¶ 118. Trane paid EcoFactor for the purchased 

assets. Id. As part of this transaction, EcoFactor also granted Trane a license and covenant not to 

sue to its patent portfolio. Id. ¶¶ 119-120. 

 

1 Unless indicated otherwise, all citations to exhibits herein are to the Declaration of Reza Mirzaie 

in support of this motion. 

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The patent license itself is an exhibit to the Asset Purchase Agreement, and it confirms 

the patent license is a sub-part of the larger agreement, 

 

. And, consistent with the Agreement, the patent 

license does not disclose of any kind for patent rights. 

Because the Trane Asset Purchase Agreement and its subsidiary patent license do not 

provide and in fact expressly excludes

patents from the in consideration that Trane paid under the agreement, Mr. 

Schoettelkotte goes outside of the Agreement and relies on an internal Trane E-mail 

 to assert a theory that, contrary to the express terms in the Agreement and in the patent 

license, the does include a payment for patent rights. Mr. Schoettelkotte’s theory 

relies on a single line from an internal Trane Email 

. 

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 This figure does not appear in the Trane 

Agreement, or anywhere else in the contemporaneous record. There is no evidence that Trane 

ever shared this email, or any of the numbers in it, with EcoFactor. Id. at 70:21-25. 

This figure underlies Mr. Schoettelkotte’s entire analysis of the Trane 

transaction. In his Factor 15 discussion concluding his reasonable royalty analysis, Mr. 

Schoettelkotte states: 

As discussed under Factor 1, EcoFactor executed an Asset Purchase Agreement in 

February 2019 with Trane that included rights to EcoFactor’s patent portfolio valued at 

 This transaction would provide the parties with a data point to consider in 

which EcoFactor willingly licensed another party within the HVAC industry for 

 as well as providing a reference point in terms of the value of EcoFactor’s patents. . 

. . given that EcoFactor licensed its patents to Trane at a value of to Trane 

(outside the context of litigation), this would effectively serve as the recognized lower 

end of the range of values the parties would consider. 

Schoettelkotte Rpt. ¶ 186. 

See also id. ¶ 187 (relying on the figure to calculate the “deduction” from any acquisition 

price EcoFactor would be willing to accept for a mere non-exclusive license). Mr. Schoettelkotte 

also criticizes EcoFactor’s damages expert David Kennedy for not relying on the 

figure. See id. ¶ 109 (claiming “a patent license from EcoFactor—outside the context of 

litigation—indicates that EcoFactor’s patents were valued at no more than .”). 

The Trane Asset Purchase Agreement is not comparable to the hypothetical negotiation. 

It is an asset purchase agreement, and all 

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 Ex C, EF_0665732-EF_0666057 at EF_0665737-738. The patent 

license entered into as a sub-part of this agreement is also not comparable. Unlike the Trane 

Agreement, the license at issue in the hypothetical negotiation is not a small part of a much bigger 

deal – it is the deal. See Schoettelkotte Dep. 60:22-61:20. Thus, a patent license like the one 

granted to Trane, which was “directed to a large collaboration far more complicated than the 

patent,” is not comparable to a hypothetical negotiation involving only “the patent covering the 

infringing ... tool at issue.” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1329, n.7 (Fed. 

Cir. 2009). Mr. Schoettelkotte’s reliance on this non-comparable agreement should therefore be 

excluded. And to the degree Trane’s is, as Mr. Schoettelkotte claims, part 

of the Trane transaction,2 royalties or other payments made pursuant to a non-comparable 

agreement are not relevant to the determination of a reasonable royalty. 

Moreover, Mr. Schoettelkotte’s opinion that the figure from the 

email means that Trane valued EcoFactor’s patents at is not supported by the 

evidence – when in fact, this theory cannot be correct in light of the evidence. This Court has held 

that in ruling on whether an expert opinion is admissible under Rule 702, “the Court must also 

consider whether, for a given conclusion, ‘there is simply too great an analytical gap between the 

data and the opinion proffered.’” ProTradeNet, LLC v. Predictive Profiles, Inc., No. 6:18-CV00038-ADA, 2019 WL 6499488, at *2 (W.D. Tex. Oct. 11, 2019), quoting General Electric Co. 

v. Joiner, 522 U.S. 136, 146 (1997). Thus, “’a district court may exclude evidence . . . where the 

reasoning or methodology is not sufficiently tied to the facts of the case.’” Id., quoting Summit 6, 

LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1295 (Fed. Cir. 2015). And here, Mr. 

2 69:14-16 (the “clearly this was something that -- that was part of the 

 agreement the parties entered into, as discussed here.”). 

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Schoettelkotte’s assertion throughout his report that a portion of the Trane paid was 

for a patent license is contradicted 

 The fact that Trane may have 

 does not change that fact. 

Moreover, the email on which he relies does not relate to the actual transaction, as even the email 

states, like the Agreement, that all of the paid by Trane was for the purchased assets. 

The referred to in that email was therefore directed to about a 

transaction that never happened, which would include 

which was not the transaction Trane and EcoFactor ultimately agreed to. 

Because the Trane E-mail is , Mr. Schoettelkotte 

has failed to provide any evidence to support his theory that it represents what Trane would have 

offered EcoFactor for a patent license or patent acquisition. Perhaps the facts would be different 

if Trane had ever proposed as payment for a patent license, but that is not what 

happened here. Hypothetical royalty rates proposed in offers to license patents can, in some 

circumstances, be relevant. In CSIRO v. Cisco, 809 F.3d 1295, 1303-04 (Fed. Cir. 2015), for 

example, the Federal Circuit found no methodological fault with the use of CSIRO’s “Rate Card” 

as part of the hypothetical negotiation analysis despite the fact that “CSIRO did not execute any 

licenses under the Rate Card terms” because the negotiators were the parties to the hypothetical 

negotiation, negotiating about just the patent in suit. See also Oracle Am., Inc. v. Google Inc., 798 

F. Supp. 2d 1111, 1121 (N.D. Cal. 2011) (basing a real-world “offer” of the patents-in-suit “as 

the starting point” for the hypothetical negotiation). But such offers are relevant as an indication 

of a market price acceptable to the offeror. By contrast, 

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. There is no evidence it was ever shared with EcoFactor or that it represents 

what Trane would offer or what EcoFactor would accept. 

2. “Assumed” Rate 

 

Mr. Schoettelkotte also relies on a Trane document 

 which he states “is related to the EcoFactor transaction,” 

 

Schoettelkotte Rpt. ¶ 125. See also id. ¶ 85 (

. Mr. Schoettelkotte does not know the source of 

 Schoettelkotte Dep. 75:6-15 (“I don't have awareness 

of that specifically. ”). There is no evidence this document was 

provided to EcoFactor, or any other document or that 

Trane otherwise proposed this rate to EcoFactor. Id. at 75:16-24. 

Like his reliance on the internal email, Mr. Schoettelkotte’s 

reliance on an internal Trane document regarding 

 is improper and unconnected to the facts of the case. The actual 

transaction to which this document relates is non-comparable to the hypothetical negotiation, and 

the hypothetical rate in this document is merely assumed 

 There is no evidence that Trane regarded this 

to be a reasonable rate for the patents-in-suit, and certainly no evidence that it ever communicated, 

let alone proposed, this rate to EcoFactor. 

Mr. Schoettelkotte’s report discloses no analysis of these differences and no evidence that 

they are immaterial. Instead, he simply assumes that anything written down in an internal Trane 

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document is proof of how Trane valued EcoFactor’s patents, and then he assumes that these 

 are comparable without evidentiary support. Because Mr. 

Schoettelkotte’s assumptions are contrary to the facts of the case, they should be excluded. 

3. Company Valuations Based on Comparisons to High-Level 

Financials of Other Companies 

Mr. Schoettelkotte also relies on “409A” valuations of EcoFactor’s common stock dating 

from 2017 and 2020, and he criticizes Mr. Kennedy for a failure to rely on these documents, 

opining : 

[A] June 2017 valuation concludes EcoFactor’s value at approximately , and 

an October 2020 valuation concludes EcoFactor’s value at approximately . 

Given that these valuations are based on EcoFactor’s fair market value (which includes 

intangible assets), these conclusions suggest the value of EcoFactor’s patent portfolio 

could be no more than (in 2017) and (in 2020). 

Schoettelkotte Rpt. ¶ 106. However, reliance on valuation of a company as a whole is not an 

acceptable method of valuing that companies’ patents. See Mformation Techs., Inc. v. Rsch. in 

Motion Ltd., No. C 08-04990 JW, 2012 WL 2339762, at *5 (N.D. Cal. June 7, 2012) (valuation 

of possible target for acquisition not admissible insofar as they speak not to the value of the 

particular patent at issue, but rather to the possible valuation of the company as a whole). It is 

particularly problematic in this case, as the valuations on which Mr. Schoettelkotte relies 

expressly state that they do not account for EcoFactor’s assets or income. 

 They are instead based on the high-level financial results of “comparable” companies. 

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Id. There is no evidence that these results are related to these companies’ patent holdings, or that 

these companies’ patent holdings are in any way comparable to EcoFactor’s. Id. at 111:14-115:15. 

There is therefore no basis whatsoever for Mr. Schoettelkotte’s reliance on these 409A valuations 

to cap the value of EcoFactor’s patents. 

B. The Internal Trane Documents on Which Mr. Schoettelkotte Relies Are Not 

Properly In the Record for This Case. 

The purported “valuation” and rate discussed above were both in 

documents produced by Trane. But there is no record of these documents being produced in this 

case by Trane or by Google, and Google never disclosed its intention to rely upon them in 

response to EcoFactor’s discovery requests specifically asking Google to identify any licenses or 

transactions that Google contends are comparable to a hypothetical negotiation. As a result, 

EcoFactor’s experts could not and did not consider the documents. EcoFactor therefore 

respectfully moves to strike Mr. Schoettelkotte’s reliance on these internal Trane documents 

under Federal Rule of Civil Procedure Rule 26 & 37. The portions of Mr. Schoettelkotte’s report 

at issue are those that relate to the alleged comparability of 

 internal Trane documents, at paragraphs 33, 85, 109, 

121, 124, and in certain portions of paragraphs 175, 184-191. 

Trane’s documents were produced on September 20, 20213 in response to a subpoena 

served by Google and ecobee, Inc. in a different matter, namely, Certain Smart Thermostat 

Systems, Smart HVAC Systems, Smart HVAC Control Systems, and Components Thereof, Inv. 

No. 337-TA-1258. As there is no record of the Trane documents being produced in this case, 

Google is contending that Trane’s production in the 1258 Investigation operated as a production 

3 Notably, Trane not only produced the documents for a different case, but also produced them 

after the close of fact discovery in this matter on September 1, 2021, and after the extended 

deadline of September 17 agreed to accommodate certain party witnesses (See Dkt. No. 92). 

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in this case. But Trane’s production in the 1258 Investigation under a particular protective order 

did not automatically grant carte-blanche authority for the parties to the 1258 Investigation to use 

Trane’s confidential business information in other proceedings. In fact, that is expressly 

prohibited by the 1258 Investigation’s Protective Order. Ex. F (Protective Order) at 3 (Section 4, 

which requires each party to whom confidential business information is disclosed to agree to be 

bound by the terms of the protective order and “to utilize such confidential business information 

solely for purposes of this investigation.”). 

The record shows that Trane elected to produce the documents only in the 1258 

Investigation. Trane produced the documents in an email with the subject line “337-TA-1258; 

Trane Production – CONTAINS CONFIDENTIAL BUSINESS INFORMATION” addressed 

only to ITC counsel. Ex. G, Email dated 9/20/21. The case number and confidentiality 

designation in the subject line are both specific to the 1258 Investigation. Id. Trane’s email also 

contains in the body an express statement that the documents are produced “pursuant to the 

Subpoenas served by Respondents ecobee and Google” (emphasis added). Id. The body uses the 

same confidentiality designation particular to the 1258 Investigation. Id. Accordingly, under the 

terms of the applicable protective order in the 1258 Investigation, EcoFactor was not permitted 

to use the Trane documents, and did not use them, in this case. 

Google contends that nevertheless, the internal Trane documents were produced in this 

case. But that understanding is apparently based on communications between Google, its fellow 

respondent ecobee, Inc. and counsel for Trane that did not involve EcoFactor. EcoFactor has 

learned that counsel for ecobee, understanding that the production by Trane was on its face clearly 

limited to the 1258 Investigation, sought Trane’s permission to treat the production as “Attorneys’ 

Eyes Only” under the protective order in this case. 

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 Obviously, ecobee would not have sought this permission 

if the Trane documents had already been produced in this case. But EcoFactor was not copied 

on this correspondence. It was provided only after Mr. Shoettelkotte’s report was served, when 

EcoFactor asked ecobee and Google to explain why their experts were relying on documents not 

produced in this case and the use of which is prohibited under the protective order in the 1258 

Investigation. Ex. I (e-mail exchange between counsel for EcoFactor and counsel for Google). 

That Google knew the Trane documents had not been produced in this case is further 

demonstrated by the fact that Google did not supplement its disclosures and discovery responses 

in this case to identify these documents, which independently provides grounds for exclusion 

under Federal Rules of Civil Procedure 26 and 37. The Trane documents were produced in the

1258 Investigation on September 20, 2021. On the same day, Google supplemented its initial 

disclosures to disclose its intention to rely on materials from other third-parties, such as “Bidgely” 

and “Nevada Energy.” Ex. J, Google’s Fifth Supplemental Initial Disclosures dated Sept. 20, 

2021 at 4. Google’s supplemental disclosures specified Mr. Shayan Habib (EcoFactor’s CEO) or 

Mr. James Maccoun (Google’s in-house patent counsel) possess knowledge relevant to licensing. 

Id. 2-4. But Google never identified Trane or Trane witnesses. Id. 

Google also has never supplemented its response to EcoFactor’s Interrogatory No. 13 to 

identify the Trane transaction, even though the Interrogatory requires Google to identify all 

“license agreements, royalty agreements, covenants-not-to-sue, and/or similar agreements that 

[Google] contend[s] are comparable to a license for the Asserted Patent that would be 

contemplated by the Georgia Pacific damages analysis in this case.” Ex. E, 08/24/21 Google 

First Supp. Responses to EcoFactor’s First Set of Interrogatories, at 24-25. In fact, Google never 

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identified the Trane Asset Purchase Agreement in response to this interrogatory, although the 

Trane agreement, including the patent license that was part of the transaction, was produced by 

EcoFactor in April 2021. 

Google scheduled a deposition of a Trane witness, on October 4, 2021, which 

EcoFactor attended subject to its objection to the deposition as untimely. This was scheduled for 

one week after the deadline for the exchange of opening expert reports, on September 27, 2021. 

Setting aside the untimeliness and prejudice to EcoFactor from Google’s determination to 

schedule a third-party deposition after the exchange of opening reports, Google still never 

supplemented its discovery responses or Rule 26 disclosures to identify Trane witnesses, even 

after this deposition. Google’s latest supplement of September 20, 2021 never mentions Trane, 

and it did not supplement its Rule 26 disclosures again. Ex. J, Google’s Fifth Supplemental Initial 

Disclosures dated Sept. 20, 2021 at 4. 

Finally, there is yet another discovery request that Google failed to supplement under Rule 

26. EcoFactor’s Request for Production No. 24 asks Google to produce all documents received 

from third parties related to this case, including documents received pursuant to subpoenas. Ex. 

K, Google’s Responses to EcoFactor’s First Set of Requests for Production, dated 01/22/202, at 

27. It was therefore Google’s duty to produce those documents to EcoFactor in this case, if 

permitted to do so by Trane. If Google ever believed it had obtained permission from Trane for 

Trane’s documents to be used in this case, it had a duty to inform EcoFactor of this fact. It did 

not do so. Google should not be permitted to benefit from its failures by having Mr. Schoettelkotte 

rely on internal Trane documents that EcoFactor, complying with the protective order in the ITC 

action, did not and could not provide to its own expert. Mr. Schoettelkotte certainly should not 

be permitted to rely in the documents himself, and should not be permitted to tell the jury Mr. 

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Kennedy should have relied on documents he was not able to review and that Google never 

disclosed in response to the plurality of relevant discovery requests described above. 

Accordingly, the Court should preclude Mr. Schoettelkotte and Google from relying on any 

internal Trane documents. 

C. Mr. Schoettelkotte Should Not Be Permitted to Rely On Usage Data That 

Was Withheld Until After The Close of Fact Discovery and Opening 

Reports, And Of Which Even He Has No Understanding 

EcoFactor also respectfully moves to strike Mr. Schoettelkotte’s reliance on “Discussions 

with Manu Sharma” and “GOOG-ECOF-WDTX1-00001560” (the “Google Spreadsheet”) in 

paragraph 71 of his report (footnotes 217 and 218) under Federal Rules of Civil Procedure 26 and 

37, and under Federal Rule of Evidence 702 as well. GOOG-ECOF-WDTX1-00001560 is 

purportedly a spreadsheet produced for this litigation that discloses

. Ex. L, GOOG-ECOF-WDTX1-00001560. Mr. 

Sharma is purportedly a Google engineer who discussed the document with Mr. Schoettelkotte. 

Mr. Schoettelkotte relies on “Discussions with Manu Sharma” and the Google Spreadsheet as 

evidence of use of the accused features, or rather, as evidence that “

,” contrary to their intended use. Ex. A, Schoettelkotte Rpt. ¶ 71. 

However, GOOG-ECOF-WDTX1-00001560 was produced for the first time on October 22, 

2021, with Mr. Schoettelkotte’s rebuttal expert report. Ex. O (October 22, 2021 Production 

Letter). Manu Sharma was also first identified as a person with relevant knowledge to this case 

on October 22, in Mr. Schoettelkotte’s report, and Google has never supplemented its Rule 26 

disclosures to identify him as a person with relevant knowledge. Ex. A, Schoettelkotte Rpt. ¶ 71; 

Ex. J, Google’s Fifth Supplemental Initial Disclosures dated Sept. 20, 2021. And Google never 

previously disclosed its intention to rely upon these documents or the theory they relate to in 

response to EcoFactor’s discovery requests, as described below. 

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Moreover, Mr. Schoettelkotte, by his own admission, has no understanding of how the 

data in the Google Spreadsheet was compiled, or if it is reliable evidence. The document itself 

only purports to show “ ” of accused thermostats sold through Google’s website, which 

is only one of several channels through which Google sells the accused products. Schoettelkotte 

Rpt. ¶ 64 (describing those various channels). Mr. Schoettelkotte does not know why the 

document is 

. Schoettelkotte Dep. at 34:21-35:1. 

Yet Mr. Schoettelkotte assumes, without evidence, that these figures are representative for 

accused products sold through other online sales channels. 

Pursuant to Federal Rule of Civil Procedure 26, Google was required to identify all 

responsive information in response to EcoFactor’s requests interrogatories, and to supplement its 

responses with any new information. Federal Rule of Civil Procedure 37(c)(1) addresses 

sanctions for failing to disclose and states, “[i]f a party fails to provide information . . . as required 

by Rule 26(a) or (e), the party is not allowed to use that information . . . to supply evidence . . . at 

a trial, unless the failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1); 

Bitterroot Holdings, L.L.C. v. MTGLQ Inv’rs, L.P., 648 F. App’x 414, 419 (5th Cir. 2016). 

Moreover, the party facing sanctions under Rule 37(c) has the burden of demonstrating that a 

violation of Rule 26 was substantially justified or harmless. See, e.g., Maguregui v. ADP, LLC, 

No. EP-16-CV-121-PRM, 2017 WL 5473484 at *2 (W.D. Tex. Apr. 10, 2017); Brown v. AT&T 

Serv. Inc., 236 F. Supp. 3d 1000, 1005 (S.D. Tex. 2017). 

There is no justification for Google’s failure to produce the Google Store Spreadsheet or 

identifying Mr. Sharma during fact discovery. This information is responsive to EcoFactor’s 

discovery requests. For example, evidence for how many customers do or do not use the accused 

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thermostats as intended, i.e., as “smart” thermostats with Internet-connected features, is 

responsive to EcoFactor’s Interrogatory No. 134

, which asked Google to “describe all uses of any 

Accused Products or accused features of which you are aware in which an Accused Product (one 

or more) is used in a manner that is contrary to your instructions for use or user manuals regarding 

the Accused Products.” Ex. M, Google’s Second Supplemental Responses to EcoFactor’s First 

Set of Interrogatories, dated September 1, 2021, at 30. The information is also relevant to 

numerous deposition topics noticed by EcoFactor, including Topic 27, on online sales channels 

and how customers buy Nest thermostats online, and Topic 50, on user benefits from Internetconnected features. Ex. N (Email thread between counsel for Google and EcoFactor regarding 

what information EcoFactor was seeking through this discovery). 

Google’s failure to produce the spreadsheet at issue, or the data reflected therein, until the 

day it served its rebuttal expert reports has no justification and has been far from harmless. Had 

Google disclosed the data in discovery, EcoFactor could have investigated the how Google 

purports to track this data, whether there are any gaps in or problems with this data, why it is 

limited to a single sales channel, and whether “ ” for that channel are representative of 

other channels. The document itself discloses none of these things. And if Google had disclosed 

Mr. Sharma as a person knowledgeable about these issues, EcoFactor could deposed him not just 

on the one document but on the issue more generally. As Mr. Schoettelkotte himself noted, when 

unable to answer basic questions about the Google Spreadsheet, “

.” Schoettelkotte Dep. at 35:4-7. As it is, the only access EcoFactor has to any 

4 Because of misnumbering this interrogatory is referred to as “Interrogatory No. 13 [No. 14]” in 

Google’s responses. 

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information about the Google Spreadsheet is double hearsay, i.e. the description by Mr. 

Schoettelkotte of the small amount of information he says Mr. Sharma told him over the phone. 

See, e.g., id. at 34:2-11 (relying on Mr. Sharma for understanding of what “ ” means in 

the document). 

In addition to being excluded under Rule 37, Ms. Schoettelkotte’s opinion on this issue 

should be excluded under Federal Rule of Evidence 702. In the absence of any information about 

the Google Spreadsheet, Mr. Schoettelkotte has no basis to rely on it. While data from a 

contemporaneous internal document might be given some credit, on the theory that a business 

would generally want to rely on accurate information in its own operations, this document was 

clearly created for litigation, as it was produced with Mr. Schoettelkotte’s rebuttal report. Beyond 

the fact that Google gave it to him, Mr. Schoettelkotte has no basis to assume that it is data 

regularly kept in the course of Google’s business, or which Google itself would find reliable and 

representative of all accused products. He is acting purely as a pass-through for someone else’s 

analysis, with no idea who that was or what that person’s methodology was. This is improper, 

and ground for exclusion. See Trustees of Bos. Univ. v. Everlight Elecs. Co., 141 F. Supp. 3d 

147, 149 (D. Mass. 2015) (“However, [an expert] cannot merely ‘parrot’ the out-of-court 

statements of employees, for an expert who does as much is merely a ‘ventriloquist’s dummy.’”); 

United States v. Brownlee, 744 F.3d 479, 482 (7th Cir. 2014). (Rule 703 “was never intended to 

allow oblique evasions of the hearsay rule” or to allow a witness, under the guise of giving expert 

testimony, to in effect become the mouthpiece of the witnesses on whose statements or opinions 

the expert purports to base his opinion.”). 

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III. CONCLUSION 

For the foregoing reasons, EcoFactor respectfully requests that the Court issue an Order 

striking the portions of Mr. Schoettelkotte’s report at issue that rely on the non-comparable Trane 

transaction and the non-comparable 

 internal Trane documents, which appear in paragraphs 33, 85, 109, 121, 124, 125, 

141, and in certain portions of paragraphs 175, 184-191 of his expert report. Further, EcoFactor 

respectfully requests that the Court issue an Order striking the portions of Mr. Schoettelkotte’s 

report at issue in paragraph 106 relating to non-comparable valuations. Further, EcoFactor 

respectfully requests that the Court issue an Order striking the portions of Mr. Schoettelkotte’s 

report at issue in paragraph 71 of his report and in footnotes 217 and 218 that relate to GOOGECOF-WDTX1-00001560 or discussions with Manu Sharma. 

Date: November 19, 2021 Respectfully submitted, 

/s/ Reza Mirzaie 

Reza Mirzaie 

Marc A. Fenster 

Paul A. Kroeger 

RUSS AUGUST & KABAT 

12424 Wilshire Boulevard 12th Floor 

Los Angeles, California 90025 

Tel: 310-826-7474 

Fax: 310-826-6991 

rmirzaie@raklaw.com 

mfenster@raklaw.com 

prkoeger@raklaw.com 

Attorneys for Plaintiff EcoFactor, Inc. 

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CERTIFICATE OF CONFERENCE 

I certify that my firm, including my colleagues James Pickens and Kris Davis, conferred 

with Defendant’s counsel regarding the foregoing Motion to Exclude on Thursday, November 11, 

2021, following email correspondence identifying the proposed relief on November 9, 2021. 

Defendant’s counsel confirmed that their client opposes the requested relief. 

/s/ Reza Mirzaie 

CERTIFICATE OF SERVICE 

I certify that this document is being served upon counsel of record for Defendant on 

November 19, 2021 via electronic service. 

 /s/ Reza Mirzaie 

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