In another ruling from the In Re ChanBond litigation as it approaches trial, Judge Andrews today issued an in-depth opinion granting a motion in limine to exclude reference to prior expert testimony from a related IPR proceeding, on the grounds that the testimony is hearsay.
Plaintiff sought to admit the material as former testimony under FRE 804(b)(1), because it is helpful to its infringement case. The rule requires, however, that the former testimony was offered against the parties' predecessor who had "an opportunity and similar motive to develop it."
Here, Judge Andrews found that an IPR petitioner's motive in developing expert testimony to show invalidity is different from a defendant's motive developing its non-infringement position:
I do not think the proper motive comparison is between [IPR petitioner] Cisco’s raising of invalidity defenses and [district court defendant] Cox’s raising of the same invalidity defenses (see D.I. 514); rather, I think the proper motive comparison is between Cisco’s raising of invalidity defenses and Cox’s raising of non-infringement arguments. For invalidity purposes, Cisco/Cox wanted to read the prior art and the claims as broadly as possible; for infringement purposes, Cisco/Cox does not necessarily care about the prior art, but surely wants to read the claims narrowly. Those goals are not the same or similar motivation; they are different motivations. Thus, I do not think the [the expert] Mr. Wechselberger's testimony is admissible as former testimony under Rule 804(b)(1).
Judge Andrews also took issue with why the plaintiff wanted to raise this testimony in the first place:
As I see it, the only point of stating anything about the Wechselberger testimony is essentially because Mr. Wechselberger stated it to advance Cox’s interests and it is contrary to what Cox now sees as its interests. It makes Cox look dishonest. But Plaintiff does not rely upon the Rule 801(d) bases for admitting statements of a party-opponent, presumably because those grounds have usually been rejected as a basis for allowing such evidence.
Given that Plaintiff’s expert does not appear to be relying upon the Wechselberger testimony for any of his opinions, and certainly is not mainly relying upon it for anything, I will grant Cox’s request under Rule 403 to exclude not only the testimony but any reference to the testimony. It has at most little probative value, which is substantially outweighed by the risk of unfair prejudice, confusion, and waste of time, as the introduction of such testimony would open the door to arguments about [the] Tiedemann [prior art reference] (which is referred to frequently in the proposed testimony, but which the jury would not otherwise hear about), explanation of what an IPR is, explanation as why claim 14 was not part of the decision, and possibly the explanation of the relationship between Cisco and Cox.
This is outcome and logic makes sense in light of the Court's prior rulings, which have consistently excluded reference to IPR proceedings by either party in a jury trial.
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