By Joseph N. Hosteny of Niro, Scavone, Haller & Niro
A defendant’s most common tactic in discovery in patent litigation used to be to waterboard anyone, especially the inventor, who even sneezed in the vicinity of the application leading to the patent involved in the lawsuit. In one of our cases, we asserted three of our client’s patents. The second and third patents were continuations of the first one, so the specifications were identical, and only a few pages long. Only a handful of claims were asserted. Nevertheless, the defendant deposed the lone inventor for two weeks. He was asked every question three times. This tactic was extended to anyone involved in the prosecution of the patents, too. One prosecuting attorney was deposed for eight days; another, for four days. Two of our client’s in- house attorneys were deposed for four days and three days, respectively. I was surprised they didn’t depose the guy who put the stamps on the envelopes. We argued to our court that this was idiotic: Reading the defendant’s depositions to the jury would take several months. The court dithered, rather than decide. It was like A.J Foyt deciding he was scared to go faster than seventy miles per hour at the Indy 500.
Inventors were routinely grilled about the meaning of claim terms, the interpretation of the specification, and about the meaning and significance of prior art references, all in excruciating detail. This kind of nutty questioning ...
