...16, 17, 18, You’re Out

Submitted by patentadmin on Wed, 04/21/2010 - 11:12

Sometimes a patentee, no matter how well “prepared” (lawyerspeak for “coached or rehearsed”), simply can’t remember his lines and deviates from the prepared script, offering testimony establishing that the patent-in-suit is invalid. Not surprisingly, this can prove fatal to the patentee’s case. (Delaware Valley Floral Group, Inc. et al. v. Shaw Rose Nets, LLC et al.)

The patent-in-suit pertains to a process of producing roses with larger flowers by placing porous, elastic nets over the buds as they grow and removing them before the roses are cut and sold. Mr. Shaw, the inventor and owner of the patent, sent several “cease-and-desist letters” (known in the law biz as “litigation invitations”) to Delaware Valley Floral Group, accusing them of infringing his patent. In response, they filed suit seeking a declaratory judgment that the patent was invalid and/or not infringed.

The filing date of the patent application was June 16, 1996. In response to interrogatories, Mr. Shaw stated that he invented the process in August 1995 and first offered for sale roses grown by this process in August or September 1995. However, in a pre-trial deposition, he testified that he invented the patented process in 1994 and commenced commercial sales of roses grown by this process in September 1994. If this was correct, the first sale occurred more than one year before the filing of the patent application and, hence, the patent which issued thereon was invalid.

The attorney taking the deposition repeated the question several times, pointing out the discrepancy between Mr. Shaw’s testimony and his interrogatory answers. Normally, such repetition of a question, by an attorney, is considered poor practice, as it offers a perceptive witness an opportunity to “correct” (lawyerspeak for “change”) his testimony. Well, apparently Mr. Shaw was not perceptive. He repeated his devastating testimony EIGHTEEN – the appellate court actually counted `em – times. He even offered an explanation as to how the error in the INTERROGATORY ANSWERS (which were prepared by his attorney) occurred!

The folks at Delaware Valley Floral Group, believing victory to be within their grasp, served Shaw with a motion for sanctions. This motion presented Shaw with two (2) options: admit that his patent was invalid or continue the fight and face the possibility that the court would order him to pay Delaware Valley’s legal fees. Shaw, brave but foolish, chose to fight. He executed a so-called “errata sheet” in an effort to change his deposition testimony saying, in effect, that he made the same mistake EIGHTEEN times during the course of the deposition. He also executed a declaration explaining that he had become confused by a last-minute document review and that he had really made his invention in 1995, not 1994.

After oral arguments – which must have been highly entertaining – the court granted summary judgment that the patent was invalid. In doing so, the court excluded the errata sheet, basically on the grounds that it was unbelievable, and further held that Shaw’s declaration did not “create a genuine issue of material fact.” Never a quitter, Shaw then filed a motion for reconsideration of the decision, based upon “newly discovered evidence.” The court denied this motion, finding that the said evidence was, in fact, previously available. Beaten but unbowed, Shaw appealed.

The appellate court began by noting that the errata sheet was untimely filed. Moreover, they disbelieved it for the same reasons as the trial court. As for the declaration, again the appellate court expressed its disbelief, holding that a court may “disregard an affidavit [or a declaration] submitted solely for the purpose of opposing a motion for summary judgment when that affidavit is directly contradicted by deposition testimony.” Appeal denied.

THE LESSON TO BE LEARNED: If a witness makes the same mistake eighteen times in a single deposition, the damage is probably irreparable.

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