Deposition Do’s and Don’t’s: Pick Your Poison Apple

A grim tale for a Friday, and a reminder of the dangers litigation counsel risks in terminating a deposition without firm legal support:

Patent plaintiff VirnetX was deposing an Apple engineer asking him to compare a patent application on which he is named as a co–inventor with the patent asserted by VirnetX against Apple in the lawsuit. The engineer told VirnetX’s counsel that he was not aware of the asserted VirnetX patent. Counsel walked the engineer through the first claim of the VirnetX patent. At this point, Apple’s attorney intervened and objected that the engineer should be allowed to read and analyze the patent before answering. The back–and–forth between counsel continued for some time, and ultimately Apple’s counsel shut down the deposition so that it could move for a protective order. VirnetX cross–moved for sanctions.

Ruling on the competing motions, Judge Davis of the Eastern District of Texas sided with VirnetX, finding that its counsel had done nothing wrong during the deposition and that Apple’s counsel by all appearances had shut down the deposition for the purpose of “woodshedding” the witness, that is, improperly coaching him. The judge then attempted to craft sanctions that would put VirnetX in a position close to where it would have been without the misconduct. To achieve that result, Judge Davis decided to let Apple pick its poison. In addition to paying VirnetX’s costs, Apple could either (1) produce the engineer for the completion of his deposition at Apple’s cost without any further communication with the witness about the VirnetX patent and without the right to object to any questions about communications already made with the witness by counsel; or (2) be precluded from calling the engineer as a witness at trial or using his deposition testimony in rebuttal, in which case the Court would also give the jury an instruction that Apple had improperly terminated the deposition of the engineer and that the jury could infer that Apple’s desire to avoid unfavorable testimony was the reason why.

In leaving Apple to choose between the devil and the deep blue sea, Judge Davis made clear that he was sending a message to a broader audience than just these parties, that one of his goals was “deterring similar abuse in future cases.” That message seems likely to be heard loud and clear by practitioners who appear in the Eastern District of Texas.

VirnetX (ED Tex Aug 8, 2012)

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Posted by David Swetnam-Burland