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Ouch. This week in MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics LLC, C.A. No. 18-1530-JDW (D. Del. Oct. 30, 2023), Judge Wolson addressed a motion in limine to exclude testimony from both of the accused infringer's witnesses on their prior use defense.

The accused infringer didn't offer expert testimony at all on invalidity, according to the briefing. D.I. 399 at 3. Instead, it asserted a prior use defense in its contentions, presumably intending get it in through fact witness testimony.

The patentee first moved in limine to preclude the defense due to a lack of expert testimony. But the Court held that a party can present an invalidity defense without it—and compared the motion to an improper SJ motion:

The first part of AB’s Motion In Limine #1 is a summary judgment motion in disguise. MED-EL asserts invalidity in this case. If AB had a basis to argue that the absence of expert testimony dooms that claim, then it should have moved for summary judgment on the issue. It didn’t, and it can’t use an in limine motion to dispose of MED-EL’s claim. If AB believes that the lack of expert testimony means that MED-EL cannot meet its burden, then AB can seek relief under Rule 50 at the close of MED-EL’s case at trial.

(We've talked before about the risks of bringing what should be an SJ motion as a MIL.)

In other words, offering no expert testimony could be OK. The accused infringer, however, also failed to adequately disclose two of their witnesses on this issue in their Rule 26(a) disclosures or otherwise. As to one witness, they did not disclose prior use as a subject matter of their testimony; as to the other, they didn't disclose the witness at all:

Although MED-EL can present its invalidity defense, it cannot obtain testimony from Darla Franz and Kristin Avitabile to support that case because it did not disclose in discovery its intent to do so.
. . . The Federal Rules of Civil Procedure seek to prevent trial by surprise. Early in every case, litigants must identify “each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses[.]” Fed. R. Civ. P. 26(a)(1)(A)(i). This Rule is designed “to prevent a party from being unfairly surprised by the presentation of new evidence.” . . . MED-EL did not identify Ms. Avitabile in its initial or amended Rule 26(a) disclosures. It identified Ms. Franz, but not as a source of information about a potential prior use anticipation defense. Instead, MED-EL represented that Ms. Franz “may have discoverable information concerning the operation of and materials used to train, instruct, educate, or support physicians in using each of MED-EL’s accused products, systems and processes.” (D.I. 3943 at 4.) Thus, MED-EL did not disclose either witness as having discoverable information about a prior use anticipation defense in its initial disclosures. AB therefore had no reason to suspect that MED-EL would elicit testimony from either one about anticipation.

They tried to salvage things by arguing that they had disclosed documents containing the witnesses' names in their final invalidity contentions. The Court didn't go for that:

MED-EL’s Final Invalidity Contentions also do little to cure its omissions. Just referencing a handful documents on which Ms. Franz’s and Ms. Avitabile’s 3 names appear is not sufficient. Indeed, the Final Invalidity Contentions and the accompanying materials contain references to many individuals, and AB would have no reason to single out these two people and somehow piece together that MED-EL intended to rely on their testimony to support its invalidity defense. Nor was it incumbent upon AB to depose every person listed on any document that appeared in the Invalidity Contentions.

The Court likewise rejected their attempt to rely on the fact that plaintiffs deposed one of these witnesses:

[T]he fact that AB deposed Ms. Franz doesn’t cure MED-EL’s failure to disclose her as a potential witness to support its invalidity defense. Rule 26 disclosures are not limited to mere identities of potential witnesses. Parties must disclose the substantive information the witness has, so the other side can organize and strategize for discovery, including prioritizing and planning for depositions. . . . Without knowing that MED-EL might rely on Ms. Franz’s knowledge of prior use of the ‘308 Patent’s technology, AB would have no reason to probe that knowledge during her deposition. Therefore, the mere fact that AB deposed Ms. Franz as to other topics did not cure MED-EL’s omission. Simply put, neither MED-EL’s Rule 26(a) disclosures nor any discovery in the case was sufficient to put AB on notice that MED-EL might rely on Ms. Franz’s or Ms. Avitabile’s information about prior use to support its invalidity defense.

The Court easily addressed the Pennypack factors, finding that the surprise caused prejudice, with only a month left before trial. They Court cited a prejudice concern that I haven't seen often (if at all)—that the time needed to cross these witnesses on this issue would disrupt trial:

the Parties have agreed to tight time limits for this case, and AB would have to conduct a time-consuming crossexamination that resembles a deposition to cure the prejudice. Aside from prejudicing AB by using valuable trial time, that process would disrupt the trial by bogging it down.

Finally, the question of whether testimony is "important" is sometimes a tough one. The Court's language suggested that the presence of any non-infringement defense rendered an invalidity defense less important:

MED-EL’s omission of these witnesses appears to be an oversight. While the testimony might be important for MED-EL’s invalidity defense, MED-EL has also asserted non-infringement, so excluding Ms. Franz’s and Ms. Avitabile’s testimony won’t render MED-EL defenseless.

It's not clear if they may have other witnesses who could offer this testimony. This text suggests they do not. Even if they do, I imagine the Court will be sensitive to this issue, and they had better be sure that they adequately disclosed them.

Disclose Your Witnesses!

The takeaway here is clear: don't skimp on the Rule 26(a) disclosures! Amend them as the case progresses, and never stop thinking about how you will actually present your claims and defenses at trial. It's so easy and common to get bogged down in discovery, depositions etc. and lose sight of the actual mechanics of trial and of what witnesses will be need to present the evidence.

This is a good thing to think about in the lead-up to the deadline for the substantial completion of document production, which is the last chance to update the witness list in your initial disclosures before depositions start (at which point the other side will likely claim prejudice).

Beyond that, drafting Rule 26(a) disclosures can seem pointless or rote. Not so. The Rule 26(a) witness list is important! Don't just push it off on a young associate and forget about it after service.

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