In a pair of orders last week in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del.), Judge Andrews set out guidelines for the trial testimony of two fact witnesses, who will offer testimony at trial regarding some prior art references (among other things).
The procedural background here is surprising. The patentee moved in limine to exclude the testimony of these witnesses, and the Court addressed the motion at a pre-trial status conference. There, the Court directed that the parties depose the witnesses and that the accused infringer submit proffers of the testimony that will be offered at trial.
That a Lot of Briefing
The parties then filed a stipulation setting forth deadlines for the proffers—but not setting any page limits. The parties then submitted 284 pages of briefing regarding the testimony of these two fact witnesses, including the proffers, objections, replies, and sur-replies. Portions of it were single spaced.
Just as a point of reference, that's more than the default 250-page total limit for both sides' combined summary judgment and Daubert opening, answering, and reply briefs in Judge Stark's form scheduling order. All for two fact witnesses—wow.
Sure, You Can Offer Your Witnesses . . .
The proffers themselves list various proposed testimony, generally relating to prior art references that the fact witnesses were involved with. The patentee meticulously objected to the testimony, calling out instances of "vague" or "cumulative" testimony. The Court did not find those objections persuasive:
Much of the proffer reads like that of a fact witness who has expertise as a software developer. Some of it is obviously objectionable . . . , but there is a lot of it that seems permissible. Plaintiff generally says there is "claim construction," testimony from the "perspective of a POSA," "expert testimony." [The patentee's] lengthy objections, though, mostly begin with objections that the testimony would be cumulative, the proffer is vague, or the testimony is unsupported, none of which are very compelling at this stage of the case.
D.I. 406 at 1. In response to one of the witnesses, the Court suggested that defendant's motivations are fairly transparent:
It is pretty clear what Defendant is tying to do. Quite a bit of it is objectionable, but there is also some basis for permitting some of it.
D.I. 407 at 1.
He permitted some of the testimony from each witness:
I will permit Mr. Bateman to testify as a fact witness about why he did or did not do certain things in connection with his work on the Blackberry MDS Studio. He can testify, to the extent he knows because of his work on developing it, as of February 2006, how the Blackberry MDS Studio operated and what it did or did not do. To the extent he or team of which he was a part made design choices and considered various factors that went into making those choices, he can testify about that. Such fact testimony could support an argument to the jury about what would motivate a POSA to do X or not to do Y, or possibly relate to an expectation of success.
The testimony is thus relevant, and, if presented according to the Rules of Evidence, would not be improper expert testimony and would not be substantially outweighed by any risk of being misleading or causing unfair prejudice to Plaintiff.
D.I. 406 at 1-2. He said something similar at to the second witness. D.I. 407 at 1.
But the Court was clear that the testimony will be highly restricted. Judge Andrews set out guidelines for the trial testimony of each witness, which look like they are aimed largely at keeping out irrelevant, hearsay, or expert testimony. For the first witness, he said:
[T]o try to give Defendant some guidance as to what I will sustain objections to . . . , I ORDER that defense counsel and the witness adhere to the following directions:
1. The word "POSA," "POSITA," "person of ordinary skill in the art," and the like cannot be used during his testimony.
2. There can be no reference to the opening statements of lawyers (which Mr. Bateman will not see, as he will be sequestered) or to the testimony of any other witness (already given or anticipated) or to any reports of experts.
3. There can be no reference to the patents-in-suit or the accused products.
4. The words "motive" and "motivation," "disclose" and "disclosure" and the like cannot be used during Mr. Bateman's testimony.
5. Any direct testimony should be clear that it is based on his personal knowledge at the time (2006).
6. He cannot be asked about his understanding of any terms (in the patents-in-suit) that I have construed. Generally-speaking, any questions from counsel should not contain any terms, used in the patents-in-suit, that I have construed, unless Mr. Bateman has first used them in explaining the Blackberry MDS Studio.
As to the second witness, the Court included an alternative number 6, potentially permitting some explanation of patent terms:
6. Without my express permission, he cannot explain or state the meaning of any terms or phrases in the '310 application and anything incorporated into it, unless the term is an acronym. Generally-speaking, whatever meaning he might have thought a term had (or what he was trying to convey) is irrelevant. If, however, there are other terms that Defendant would like to have Dr. Amer explain, Defendant should submit a letter, without argument, by the COB Thursday, August 18, 2022, with the term and what his explanation of it would be.
. . . But Don't Cause a Mistrial
Finally, Judge Andrews set out a clear warning for the accused infringer:
Defendant is on notice that if it causes a mistrial by poor preparation or poor judgment in questioning [either witness], it will, at a minimum, have to pay Plaintiff s attorney fees and out-of-pocket expenses associated with the trial.
With the restrictions set out and the strength of that warning, I expect the direct examinations of the witnesses will be much shorter than the proffers. But the patentee may also have to tread carefully on cross to avoid opening any doors.
Trial starts today and extends into next week, with some breaks. I expect we'll have an update next week if a mistrial hits the docket!
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