Cross-Examination Practices During Intellectual Property (IP) Litigation – Part I
Examination of witnesses or cross-examination has always been a favourite topic for books and screenplays. A downside of this extravaganza, which involves sharp-witted questioning, nail-biting suspense and awe laden voice modulations, is the fact that most of them are written to support criminal litigation, backdropping a story. Hence, more often than not, in popular culture, this has led the idea of cross-examination to, be associated with either a John Grisham style murder mystery or the defining scene from Legally Blonde, with no in-between. Without a doubt, the significance of a witness’ cross-examination is so well rooted in criminal litigation that the same in commercial matters are paid no heed to. In 2014 however, viewers started gaining interest in the world of Intellectual Property (IP) litigation when the show Silicon Valley released worldwide, showcasing a gripping account of how an App battles it out to save a data compression algorithm from false intellectual property claims. What followed helped showcase how fascinating commercial, especially IP litigation, can be, which lent us an opportunity to shed light on this very essential stage of IP Litigation.
Intellectual Property Rights related cases are mostly decided at the interlocutory stage or through arbitration, instead of long drawn legal battles that have an adverse effect on both parties, monetarily, as well as in terms of time. Hefty amounts are spent on litigations which may or may not have the potential to be concluded any differently than the conclusion at their interlocutory stage. Further, an IP infringement suit, in India, could take at least three to five years to reach a conclusion. It is hence obvious that the party which has been given an injunction would not like to pursue litigation any further unless they have the required resources to continue with a frivolous case or are honest about their practices and have a winning case. Hence, IP cases don’t tend to see the light of cross-examination because parties tend to drop out of litigation mid-way. However, when the same does take place, it goes on to affect the decision and the fate of the litigation on a huge scale as well as leads to the further development of IPR jurisprudence.
Also, gone are the days when a cross-examination used to only take place in the physical presence of a Joint Registrar (JR) or a Court-appointed Commissioner (LC). These days courts have become more flexible and based on joint requests by both the parties they are willing to appoint an LC who is not physically present during cross-examination but is rather remotely based from where the actual cross-examination is taking place, for instance, he may be sitting in a hotel and connected through a video conference (VC) to the location where the cross-examination is taking place. However, such arrangements also have certain downsides such as non-availability of court records, lack of efficient resolution of objections made by both the parties during the cross-examination, ambiguity over the acceptance of additional evidence being confronted during the cross-examination, among others.
Before we proceed, let’s understand the basics of a trial. A trial precedes when the issues are framed and the question relating to the burden of proof is put forth and determined. Once the issues are framed, the parties are required to submit a list of witnesses, statements by whom would enable the parties to support their respective claims. The cross-examination in India is guided by inter alia the provisions of the Indian Evidence Act, 1872. Section 138 of the act reads as follows –
138. Order of examinations —
Witnesses shall be first examined-in-chief, then (if the adverse party so desires) cross-examined, then (if the party calling him so desires) re-examined. The examination and cross-examination must relate to relevant facts, but the cross-examination need not be confined to the facts to which the witness testified on his examination-in-chief.
Direction of re-examination.—the re-examination shall be directed to the explanation of matters referred to in cross-examination; and, if new matter is, by permission of the Court, introduced in re-examination, the adverse party may further cross-examine upon that matter.
The above section clearly defines the process that is followed in a court of law while examining a witness during both, a civil as well as a criminal trial. A witness, who is called to a court to give evidence, is first examined by the party by whom he has been called. This is called the Examination-in-Chief of the witness. However, vide Order XVIII Rule 4 (1) of the Code of Civil Procedure, 1908 which is applicable to IP Cases, “In every case, the examination-in-chief of a witness shall be on affidavit…” After the affidavit of examination-in-chief is filed, the opposite party, against whom the witness has given evidence through his testimony by way of affidavit, is given the chance to interrogate the witness in order to find inconsistencies and loopholes in the narrative of the witness. This process of questioning the witness by the opposite party is called Cross-Examination. It is the prerogative of the opposite party to cross-examine a witness or not as the section uses the word “desires”, indicating the use of discretion.
Cross-examination in IP litigation –
In case of an IP infringement suit, experts/inventors/creators are the people who are usually trusted and called on to be witnesses at the stand. An examination in this regard holds immense value; as cases of this nature include a lot of technical details and understanding, which the judiciary may not be well-versed with. The difference between a layman being examined as a witness in other branches of litigation and an expert/inventor/creator being examined as witness in IP litigation is that in the former, the witness is used to state his version of the events so they can be juxtaposed to what is set out in an evidence report or the party’s line of arguing, while in the latter, stating, as a matter of fact, isn’t enough and a witness is bound to explain and prove why his statements stand correct through technical know-how.
Key strategies while conducting a cross-examination in IP matters:
1. Determine whether cross-examination of a witness is even necessary
The famous American lawyer and author, Francis Wellman, in a chapter contributed by Emory Buckner in his book, the Art of Cross-Examination, wrote that “more cross-examinations are suicidal than homicidal in nature.” This was an attempt to convey that an important consideration that a counsel must ask themselves before planning a cross-examination is whether it is necessary at all. Sometimes a testimony that didn’t provide anything to a particular case, in the beginning, may turn out to be harmful and counter-productive to a case later on. An answer may seem simple and harmless but the same might reinforce the witness’s testimony which can set out a huge risk in any case. Undertaking cross-examination of a witness that otherwise did not provide for an affidavit having strong evidentiary value may give an opportunity to the witness to strengthen his/her evidence and give clarification on aspects which were otherwise not clear in the affidavit. Therefore, while deciding what questions to ask, it is imperative to give consideration to the answer that the witness might give and what impact it can have during the final arguments. On the other hand, it is also important for the party who is presenting the witness to evaluate the value being offered by the witness and weigh it against the potential risk to which the party may be exposed because of the cross-examination of such witness.
2. Leading questions may not always prove to be effective
In today’s times, it is wrong to take any witness for granted, as each witness, especially in IP litigation matters, is very well prepared on the subject matter of the suit such as in technical aspects involved in patent litigation matters. Therefore, asking leading questions that give a direct indication of the answer expected by the counsel doing the cross-examination may not be a fitting strategy. The witness very well understands the context of the questions and what the counsel may be intending to derive out of the answers, and therefore is likely not to agree with the suggestion being implied in the leading question, and may, at the same time, take that opportunity to elaborate/explain on how the opposite of what is being suggested is possible/feasible, thereby taking away the chance of a strong argument on the point being suggested in the respective leading question. In sum, when and how to ask a leading question is an important consideration and depends on who the witness is, what is he testifying for, what is the stage of cross-examination, the manner in which answers to the previous questions have been given, among other such parameters. Witnesses are therefore likely to give indirect answers and ambiguously state their position without giving any specific objective response if they are asked questions such as “Is the elongated member 102 of Indian Patent 2731XXX, the shaft of the Defendant’s Product”.
3. Ask example-based questions
In IP litigation cases such as in Patent/Design infringement suits, it is helpful and advisable to ask example/situation based questions. This can help understand/establish fallacies in the witness as regards the technical/subject matter knowledge of the witness is concerned, and also on his/her stand on how infringement is construed/determined, based on which inconsistency of his/her legal/technical position can be established/suggested either in the cross-examination itself or during the final arguments. For instance, asking a question such as “If elements A, B and C formed part of the originally filed claims of a patent application, and element D was added during prosecution so as to overcome novelty and inventive step objections and based on which the independent claim was eventually allowed, can infringement ever be construed to have taken place when the allegedly infringing product does not include element D”. Such examples if asked from multiple perspectives/situations can help point out the inconsistencies of the answers being given, thereby helping lower the credibility of the witnesses involved. Questions may also be asked on fundamental laws of Physics or Chemistry or any other scientific domain that is relevant to the subject matter of the patent infringement suit, especially to subject matter experts or technical experts who are brought on board as witnesses.
4. Use Put/Suggestions to convey your thought process
We also find it helpful to incorporate suggestions through the use of “I put it to you that you are falsely deposing as, in the answer to Question Number 23, you said ‘YYYY’, and while answering Question Number 56, you said ‘ZZZZ’”. Such suggestions, not only help put pressure on the witness by bringing out inconsistencies in his/her statements, but also help in the framing of arguments and collating all the credibility–impacting questions (and reasons therefor) during the final argument stage.
5. Focus on questions that add value
It has been a general trend to ask a number of questions that may not actually add much value, either in terms of destroying the credibility of the witness, hampering the evidentiary value of the evidence being relied upon, or answers to which may not really yield a point to favourably argue on. Judges have very little time to go through the testimonies and therefore the quality of questions being asked and relevancy/impact thereof is far more important than the number of questions. For instance, if the legal head of a party is the sole witness, asking a number of questions on his past experience in other previous organizations may not add much value, unless of course the counsel doing the cross-examination knows some professional or personal inconsistencies that took place in the previous experience of the respective witness. In sum, it is imperative that the counsel conducting the cross-examination is to the point, and at the same time, ensures that no stone is left unturned on questions being asked on technical/legal grounds to generate as many answers that are contradicting and that would favourably help interpret infringement/non-infringement issues depending on the side that the counsel doing the cross-examination is on. This way, the witness’s testimony does not harm your case and it also minimizes the importance of a witness’s testimony in the eyes of the judge. Hence, it becomes really important to evaluate the testimony given by the witness before jumping on to the cross-examination directly. The number of questions asked is not important but the quality of questions is. The key is to keep it short but effective.
6. Opening with direct and tough questions sometimes helps along with maintaining the element of surprise
Cross-examination is an art and the courtroom is a theatre. Examining a witness brings various facts on record in the form of a story, the direction of which rests on the shoulders of the counsel. An element of surprise is a key to achieve the facts/confirmations that the Counsel doing the cross-examination would like to retrieve from the witness. Witnesses, especially the ones’ deposing for the first time, are although more careful, are not as accurate in the beginning first 1-2 hours of the cross, and therefore asking some direct/tough questions at the beginning itself may help obtain some confirmations/acknowledgement that the Counsel can use during final arguments. Same goes for questions asked post a break, such as, after a lunch break, or towards the fag end of the day for cross-examination, and therefore the timing of questions, apart from their relevance to the suit in context, is also important. Therefore, cross-examinations should be carried out with an assertion, and the counsel should initiate the same with direct, tough questions so as to build pressure on the witness. If the counsel allows the witness to get comfortable with the questions, he may not be able to achieve the desired confirmations/information from the examination. It is also desirable to maintain an element of surprise during the cross-examination by asking non-sequential questions, for example in a patent or design infringement suit where the validity of the suit patent/design is an issue, a strategy of mixing up the questions that aim at establishing the invalidity of the suit patent/design with the questions that aim at establishing non-infringement can be used effectively. Such a line of questioning can confuse the witness and may help in obtaining responses that would establish the desired position. Asking indirect questions, the intent of which would be hard for the witness to comprehend in real-time, are perhaps the most preferred questions as they come out of nowhere, and help the counsel get answers that only he/she knows the relevancy of.
7. Inventor is critical in Patent Infringement Suit
In Patent Infringement Suits, inventor is always an important witness as only he is aware of how/when/where the invention was conceived, developed, prototyped and was a part of the entire patent prosecution lifecycle, and therefore it is imperative to critically cross-examine him/her by asking questions pertaining to conceptualization of the invention, technical problem being solved, what the essential features of the invention are, whether the invention was in possession of the inventor at the time of filing the patent application, why certain claim amendments were done (if he/she is willing to answer the same), among other subject matter oriented questions. If the counsel doing the cross-examination is the defendant’s counsel, the objective should be to prove that the invention was not in possession at the time of patent filing, there was some element of wrongful obtainment of the patent, there was no enabling disclosure, that multiple elements of the independent claim were essential and hence making the infringement scope narrower, among other like questions that can assist in limiting the scope of the patent and also try to render the subject matter anticipated/lacking inventive step in view one or more prior art documents.
8. For technical expert witness, establish lack of technical subject matter strength
It is obvious that the technical expert witness would favour the side and the position of the party that has put forth him/her as the witness, and therefore asking him questions to validate/challenge the same position may not add much value as he/she is already well prepared on the same. It is important therefore to firstly ask technical questions that do not directly pertain to the suit in specific but are generally relevant in the art and try to negate the credibility of the witness from that perspective to demonstrate that general technical knowledge in the art itself is not possessed by the witness. Secondly, as most technical expert witness do not have the context of the case per se, and tend to be more honest/direct on the scientific grounds than the party’s own employees, asking contextual and suitably worded questions that have a direct relevance/importance to the suit, but does not overlap purely on the position that he/she has explained objectively in the affidavit, may help get the desired answers as the technical expert witness per se would most likely be aware of the context of how the infringement contention is being assessed, what the interpretation of the techno-legal terms would be, and what would constitute infringement during its infringement analysis. The expert’s report must also be used cautiously too and never as a roadmap. Using a report to direct a cross-examination runs the risk of letting the expert restate his testimony and even further elaborate/explain the same with examples and credible evidence/experiments. The credibility of an expert witness can, therefore, as mentioned above, be hampered by showing that the technical knowledge he/she possesses with respect to the subject matter is either limited, based on too many assumptions, or outrightly irrelevant. By showcasing that the expert witness’s qualifications don’t lend him enough knowledge to know about the subject matter, irrespective of how well-read he may be, and hence fail to render him the ability to provide expert testimony, works in the counsel’s favour and diminishes credibility. If the expert, in some other case, has given a contradicting statement or has an article/research published that contradicts his/her current position/opinion, it too can damage the expert’s credibility and establish the lack of technical character.
9. For patent law expert as a witness, establish lack of legal strength
If a party puts forth a patent law expert as a witness, it is always a good idea to evaluate the strength of the witness on Patent law issues, and test the witness with a number of different use cases with respect to claimed elements, dating of applications, divisional application assessments, tests for infringement (doctrine of equivalence vs pith and marrow test vs literal infringement), among other use-case based questions where maintaining consistency in answers on different scenarios (using A, B, C, D elements based examples) may be hard to maintain.
10. Extract the Pith and Marrow/Heart of the Invention
Again, with respect to Patent infringement suits, especially when the counsel doing the cross-examination is representing the defendant, it is important to extract/retrieve, from the key witnesses such as the inventor(s), as to what was the technical problem being solved at the time of the invention, and what forms the pith and marrow/heart of the invention. Such an approach can help outline essential elements for infringement, presence/non-presence of which can help give conclusive evidence of an infringement. Therefore, a good number questions, depending on how the Inventor is answering the previous questions, and how clear he/she is on Patent law matters, should be asked for clear determination of pith and marrow of the invention, which, if extracted in the desired manner, can be of very high relevance during the final arguments as that would be the clear admitted position of the Inventor. On the contrary, if the inventor is very clear on Patent law issues, and clearly appreciates how broadness/narrowness of the claims is to be construed and the impact that addition/reduction of number of elements of the claims have on determination of scope of infringement, questions on pith and marrow can actually have an adverse impact during final argument and hence may be avoided.
11. Reading of affidavits and annexures thoroughly
It is needless to mention that counsels have to be well prepared before the cross-examination is conducted, one important consideration for which is to thoroughly review the affidavits of evidence of the witnesses along with the respective annexures as well as documents referred in the affidavits which form part of the record of the case. However, it is critical also to review the affidavits keeping in context the nexus that such affidavits may have with each other, and loopholes that the affidavits have when looked upon together but which are not evident otherwise. A piece of evidence presented along with a first affidavit may, for instance, help negate the evidentiary value of an annexure that forms part of a second affidavit. Usually, the annexures/documents are not paid as much attention as the affidavit per se, which can negatively impact the case in the long run, and therefore its recommended that the annexures/documents be paid a very close look to see if their evidentiary value can be destroyed by proving that they are doctored or self-generated/self-created or contain certain inherent flaws or not duly proved in accordance with law.
12. Confront the witness with as many documents as possible
The court needs evidence, and the counsel needs to prove this evidence. The counsel doing the cross-examination should, therefore, confront witnesses with documentary evidence wherever possible. Such confrontation would strengthen his/her stand on the subject, and create havoc in the mind of the witness. New evidence is likely to surprise the witness and create anxiety that can be utilized to obtain quick answers from the witness under pressure, which can favour the party doing the cross-examination.
13. Reply to each objection put up by the other party
Along with conducting an effective cross-examination, it is also necessary for a Counsel to affect a reply to the objections put forth by the other party. Such a reply can either be a reply to the objection raised by the other side’s counsel or can be in the form of a counter-objection so that the perspective/rationale why the question was asked in the first place can also be recorded for reference during final arguments. It is also very helpful to put forth and agree between the counsels of both the parties a process wherein the witness answers before the counsel objects so that there is no leading of the witness in that respect.
14. Crucial to maintaining a cordial relationship with the witness and counsel
Last but not least, litigation is to be understood and executed as being only one aspect of life where work/profession is being justified. It is much more important to be a good human being and conduct the cross in a way such that at the end of the day, the relationship with all the witnesses and counsels on the other side are cordial and healthy. A cordial relationship is always reciprocal and if one side’s counsel treats the other side’s witness politely and with respect, it is likely that the other side’s counsel would reciprocate back, and also give some leverage and breathing space to the witness as testifying is not their daily routine. Therefore, respect is the key during such a phase of litigation.
Litigation may appear to be static on the outside, but in recent times the legal field has evolved more than expected. Just like any other litigation, cross-examination of a witness in IP litigation holds enormous value. Only a few exemplary key strategies to conduct an effective cross-examination have been put forth in this article to help make the most of the time spent in cross-examination with any witness. Cross-examining is an art and mastering this art requires for the counsel to be as prepared as ever since the witnesses may end up knowing way more, technically as well as in terms of the subject matter, in IP litigation as compared to other branches.
Author: Tarun Khurana, Partner and Patent Attorney at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at firstname.lastname@example.org.