Today we highlight a decade-old opinion involving an inventor’s death, the reports of which were greatly exaggerated. The moral of the story: trust but verify. Do a Google search, even if you have it on good authority. Question your assumptions.
It's an oddball case that provides the perfect foil for Nate’s article yesterday involving the opposite fact-pattern—a dead expert. Here, an inventor thought expired was “not only alive, but also willing (‘indeed eager’)” to testify in the upcoming trial, scheduled only ten days away.
In an unusual mix-up, plaintiff relied on testimony from the plaintiff’s 30(b)(6) witness, a former high-ranking officer for plaintiff's company, who said that the inventor was deceased. Where'd he get that information? Several of plaintiff’s HR departments in multiple states confirmed the inventor's death on multiple occasions.
Based on the representation from L-3’s Tempe HR department where Dr. Roberts worked for L-3’s predecessor (Litton), Dr. Estrera naturally felt no further need to investigate Dr. Robert’s whereabouts. And, based on Dr. Estrera’s representations, L-3’s counsel felt no need to investigate Dr. Roberts’s whereabouts. Hence, our representations to the Court and to Sony that Dr. Roberts was dead.
It’s easy to understand how the seed of bad information propagated into a tree of misunderstanding. But how did plaintiff’s counsel find out that the inventor was alive?
On October 15, 2013, counsel for L-3 discovered that Dr. Roberts is in fact alive and residing in Southern California. Here is how we found him:
L-3 wanted a photograph of its inventor to use as part of a demonstrative exhibit at trial and found a 1988 IEEE article that a “Dr. C.T. Roberts” co-authored. At the end of the article was a poor-quality photograph of Dr. Roberts as well as a short biography. This information was new to L-3’s counsel . . . . [H]oping to find a better photograph of Dr. Roberts, L-3’s counsel found a LinkedIn account for “Peter Roberts” employed at Raytheon . . . whose pre-1988 resume roughly matched Dr. Roberts’s biography in the 1988 IEEE article. His LinkedIn resume, however, made no mention of Dr. Roberts’s positions between 1986 and 1996 or of any employment with Litton, to whom he assigned the ‘654 patent in 1993.
On Tuesday evening, October 15, [counsel] contacted Dr. Roberts by phone at [his current job at] Raytheon and confirmed that he was, in fact, [alive and the inventor on the patent-at-issue].
Plaintiff offered to make the inventor available for deposition and provided the Court with a list of topics on which the inventor might be able to testify at trial. But, as might be expected on the eve of trial, defendant opposed this sudden change of plans.
As we’ve said before, the Pennypack factors are known to Delaware litigators as a well-worn path of analysis used to determine whether to apply the “extreme" sanction of excluding “critical” late-disclosed evidence. Judge Andrews found the Pennypack factors weighed in favor of excluding the not-so-dead inventor’s testimony.
The Court found that Plaintiff did not “know exactly what Dr. Roberts will testify about” and that “no matter what Dr. Roberts testifies to, his testimony will not have been considered by [defendants’] expert." Even where Plaintiffs attempted to scale back the testimony topics to eliminate the most problematic ones likely to create surprise for defendants, the Court still did not permit the testimony.
The Court explained that the Plaintiff was previously satisfied to use a photograph to “put a face to the patent”. If the inventor had much to add, it would have been unfair to defendants. “If he doesn’t have much to add, there is no reason to disrupt the preparations for trial and the trial presentation.”
Even if Plaintiff did not get its way in admitting the inventor's testimony at trial, it sounds like they had an opportunity to get a truly excellent photoshoot of their undead inventor. That's better than they could have hoped for in their initial efforts in scrounging LinkedIn for a better picture!
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