On August 6, 2012, Judge Ferguson issued an Order (available here) denying General Electric’s motion for clarification in General Electric v. Mitsubishi. Judge Ferguson had, in connection with the upcoming inequitable conduct bench trial in this patent infringement case, directed the parties to “submit in writing the direct testimony to be offered in evidence no later than fourteen days before trial begins.” GE argued that because Mitsubishi carries the burden of proof regarding inequitable conduct, “a staggered exchange of the narratives is merited.” More specifically, GE argued that:
the Court should require Mitsubishi to provide GE with its witnesses’ narratives twenty-one days before the trial, and allow GE to provide its witnesses’ narratives to Mitsubishi fourteen days before the trial. Otherwise, GE argues, “GE will be in the unenviable position of having to guess, based on Mitsubishi’s pleadings, discovery responses, and expert reports, what evidence Mitsubishi will include in its direct examinations, so that GE can include in its own witness statements all of the evidence that is necessary to rebut it.”
Mitsubishi argued in response that “GE’s proposed ‘staggered exchange’ is both a violation of the rule of sequestration and bestows an unfair advantage on GE.”
Judge Ferguson resolved the parties’ dispute as follows:
While the Court agrees with GE that if the Court’s rule were not in place, GE would have the benefit of witnessing Mitsubishi’s case in chief prior to presenting its own, the party without the burden always prepares a rebuttal case in advance of trial with the help of the other side’s “pleadings, discovery responses, and expert reports” and without the benefit of having access to the opposing party’s witness testimony. Requiring Mitsubishi to give GE its witness narratives one week before the deadline applicable to both parties would give GE an advantage in preparing its case that it would not have but for the Court’s procedural rule. Accordingly, GE’s Motion is DENIED. All parties will submit their direct-testimony narratives fourteen days in advance of trial. However, in order to streamline the process, Mitsubishi is ORDERED to provide GE with a list of all prior art about which it will present evidence and all individuals whom it claims withheld material information from the PTO by August 29, 2012. During trial, the Court will give both parties a limited opportunity to conduct direct examinations of its witnesses as needed for rebuttal.
GE is represented by Ray Guy, Anish Desai, Carmen Bremer, David Lender, and Eric Hochstadt, all of Weil Gotshal & Manges LLP; and Andrew Brown, David Ball, Jr., Moses Silverman, and Nicholas Groombridge, all of Paul Weiss Rifkind Wharton & Garrison LLP; and formerly represented by Christopher Evans, now of Shore Chan Bragalone DePumpo LLP.
Mitsubishi is represented by Vic Henry and Lane Fletcher, both of Henry Oddo Austin & Fletcher; and Alice Loughran, Andrew Sloniewsky, Charles Cole, Emily Nestler, Filiberto Agusti, Houda Morad, Martin Schneiderman, Patricia Palacios, Seth Watkins, Shannen Coffin, Steven Barber, and Tremayne Norris, all of Steptoe & Johnson LLP; and Cortney Alexander, Gerald Ivey, Jeffrey Totten, Naoki Yoshida, Roger Taylor, Thomas Jenkins, Thomas Winland, Tyler Akagi, and Virginia Carron, all of Finnegan Henderson Farabow Garrett & Dunner LLP.