A Blog About Intellectual Property Litigation and the District of Delaware

I really feel for technical experts. You study and work for years on your niche area of expertise, pushing the bounds of human knowledge while training the next generation. In your daily life you converse with other experts in the complex jargon in which you are all fluent, in an atmosphere of almost intimate trust. Then the lawyers call.

(eds. note, I'd wanted to post a screenshot from the Simpsons where Lionel Hutz imagines a world without lawyers, but I couldn't figure out how to get the rights and this blog is enough work without dealing with a cease and desist from Disney. If the blog ever really flounders we might do it as a publicity stunt. For now, just imagine it in your head (this probably only works if you're over 35))

This could not be more different from being deposed as an expert witness. Much of the job there is just not giving away easy sound bites that can be used on cross or in a motion in limine.

The second worst thing that can come out of an expert's mouth
The second worst thing that can come out of an expert's mouth AI-Generated, displayed with permission

Clearly then, something went very wrong in the deposition of the defendant's expert in 10X Genomics, Inc. v. Nanostring Techs., Inc., C.A. No. 21-653-MFK, D.I. 282 (D. Del. Nov. 8, 2023). As is often the case, the plaintiff complained that the defendant's expert was not using the Court's construction. This is usually a pretty tough argument where, as here, the Court construed the term to have its plain meaning.

It got significantly easier though, when the defendant's expert was shown portions of the Court's claim construction opinion at his deposition:

Dr. Edwards was shown the Court's ruling on claim construction—specifically the Court's statement, quoted earlier, that "the patents teach that the sequence of oligonucleotides always codes for something, they do not teach that the sequence always codes for location." Dr. Edwards stated: "[T]hat is not a correct statement. That—this is an incorrect interpretation."Dr. Edwards also disagreed with another related statement made by the Court in the claim construction decision: "According to the specification, the oligonucleotide sequence is not the sole piece of information used to determine the presence of targets at certain locations on the tissue, and coding tags can be added both before collection or after collection." Dr. Edwards stated: "That is an incorrect statement."

Id. at 4-5 (internal citations omitted).

Oof. Unsurprisingly, the Court found these statements troubling when Plaintiff moved in limine to preclude them:

There's no question that these statements by Dr. Edwards contradict the Court's construction of the claims or, in some instances, integral aspects of the Court's reasoning when it was interpreting the claims in light of the specification

Id. at 5.

Naturally, the Court precluded the defendant from "present[ing] testimony or argument that the Court construed the claim terms incorrectly or that the proper construction(s) differ from what the Court determined."

Interestingly though, the Court stated that it would allow testimony "in tension with certain of the determinations the Court made in the course of its claim construction decision"—tune in on Thursday to find out why!

(humming Batman closing theme)

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