Legal Law

Distant Controls

No, this is not a column on the latest gizmos for controlling your television or air conditioner. Even though the newest generation of cable box remotes seem to have the same amount of buttons you would expect to see in an Airbus A320 cockpit. With voice control to boot, for those of us who prefer to proclaim “Yankees game” — at the risk of being diverted to AMC or Turner Classics’ latest showing of “A Magnificent Yankee” — over pressing in a channel number. While the debate over whether the increasing technological complexity of simple devices is a boon or a bane is an interesting one, for purposes of our professional lives as IP lawyers it is much more important to keep abreast of practice developments. For litigators, those developments have centered heavily on managing the impact of COVID-19 on pending cases.

For IP litigators, many of whom have far-ranging practices in terms of pending matters in different federal courts, keeping track of the new procedures and rules can be a challenge. Unlike lawyers who may focus their practice on proceedings before a particular court, in a particular geographic location, an IP litigator may find themselves needing to review the latest COVID-19 guidance out of the Southern District of Florida before lunch and the Eastern District of Texas’ before their afternoon tea and pastry. (Or pastries, for those for whom lockdown has coincided with a break in dietary discipline.) Add in what appears as a concerted (but understandable, and befitting their need to manage their personal dockets) effort among district court judges to make idiosyncratic procedural changes on top of the general guidance put out by their respective courts and it is a lot to keep track. But we must do so, while also looking for COVID-19 specific decisions that may be applicable to other situations that may arise in our practices.

It was interesting, therefore, to see the District of New Jersey’s Magistrate Judge Tonianne J. Bongiovanni endorse on August 12 a “Stipulated Order Governing the Taking of Remote Depositions” in a patent dispute between Takeda and generic challengers Zydus and Cadila Healthcare. In fact, Bongiovanni also signed off on a similar stipulation — on the same day — in another pharma patent case, this one between Boehringer Ingelheim and Lupin. Just because the Takeda stipulation is longer, we will focus on it for purposes of this column. Considering that the stipulation was signed off on by a judge with a lot of experience managing discovery in patent cases, on top of being negotiated by sophisticated patent litigants, there is a lot to learn from reviewing its key terms.

As an initial matter, it is explicit in the stipulation that the need for remote depositions is COVID-19’s fault, while also acknowledging that the regular rules of deposition procedure and evidence are not being tossed aside as a result. In that vein, the parties agreed that the stipulated procedures would cover all the remaining depositions in the case. At the same time, the order makes plain that adherence to whatever health guidelines are in place at the time of the deposition is a paramount concern. To that end, the stipulation sets forth the agreed-to provider for the remote deposition provider, as a means of leveling the technological playing field for each side. Importantly, it is acknowledged that any time spent dealing with any technological snafus will not count toward the witness-questioning time limits under the FRCP. To avoid those snafus, the parties agreed to do a “test run,” with a critical component of that test run being to make sure that the witness has the same technological tools to participate as the well-heeled lawyers attending the deposition.

What about costs? As is traditional, the taking party bears primary responsibility for getting the remote deposition set up and carried out, with the defending party on the hook for their own orders of the transcript and video copy. Considering the significant travel cost that many depositions in patent cases entail, there is at least a reasonable probability that the shift to remote depositions — even with the technological costs for setting them up and having them run smoothly — could result in a net cost savings for litigants. But any such savings would be a pittance, at least in the context of a pharma patent dispute, where cost is often no object.

Perhaps most interesting is the requirement that counsel and the witness abide by the honor system in terms of not sneaking a peek at the exhibits before the deposition. At the same time, it is not uncommon to ship exhibits in advance of a deposition to opposing counsel — and I at least have never had an issue where someone on the other side acted in anything other than an honorable manner with respect to exhibit handling. While the witness is obviously allowed to look at the exhibits as they are presented during testimony, looking at outside information sources (without the express permission of counsel) is verboten.

A typical source of conflict during depositions is the practice of coaching witnesses during breaks, even in those jurisdictions where the rules against such behavior are more strictly enforced. With a remote deposition, that becomes a bit more difficult to police, even as the stipulation calls for strict avoidance of anything that approaches witness coaching. During testimony, the stipulation forbids any communication with the witness. At breaks, defending counsel is allowed to talk to the witness, as long as it is in “the manner permitted” under local and federal rules governing conversations in between giving testimony.

Ultimately, both the first and last paragraphs of the stipulation convey the main thrust of the situation. Depositions are an important discovery tool and essential for trial preparation, but we are in the midst of a pandemic. At the same time, the accommodations that allow for remote depositions to proceed are not an excuse for any lapse in adherence to the “typical rules of professionalism and etiquette during depositions” by counsel on either side. While stipulations governing remote depositions can meet favor with judges, the allowances carry with them responsibility that counsel and litigants must adhere to. During COVID-19 it’s remote depositions yes, but the control over how they are handled remains with the court.

Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.

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