In past articles, we have been exploring various aspects of arbitrating a patent case. These included the types of patent cases most likely to be arbitrated, formulation of arbitration clauses, the federal statutes governing arbitration of patent matters, considerations regarding use of experts in arbitration, and exchanges of information as well as witness lists, document lists and briefs. We then turned to specifics of the hearing schedule including transcripts, the form of award to request, and finally the hearing itself.
One of the issues that may come up at the outset of the hearing is sequestration of witnesses. I’ll illustrate the issues that can arise with a story. It’s loosely based on a real dispute or two.
You represent a respondent in an arbitration. At issue is whether your client’s new software product infringes the claimant’s patent. If it does, your client has to pay rather high royalties under the parties’ license agreement.
At the outset of the hearing you opponent suggests that the witnesses be sequestered. You are subject to AAA rules. You read AAA Commercial Rule 25 to assure yourself that your client will be able to attend. It says:
The arbitrator and the AAA shall maintain the privacy of the hearings unless the law provides to the contrary. Any person having a direct interest in the arbitration is entitled to attend hearings. The arbitrator shall otherwise have the power to require the exclusion of any witness, other than a party or other essential person, during the testimony of any other witness. It shall be discretionary with the arbitrator to determine the propriety of the attendance of any other person.
Your client, the owner of the respondent, is a party. So he can attend. And you conclude it is helpful not to have your opponent’s witnesses listen to each other. You think they may well contradict one another without first hearing the “party line.” Thus, you agree to sequestration. Now you will have to make your witnesses except your client wait in the lobby, but that isn’t too difficult.
One of the issues at the hearing is whether your client’s new software uses “dataflow” computing. The claimant’s patent requires use of dataflow computing as an element of every claim. Generally, dataflow computing is an alternative to standard computing where execution begins as soon as the data needed for computation become available rather than according to specific instructions. This is said to promote faster, parallel computing. If your client’s software doesn’t use dataflow computing, it doesn’t infringe and no royalties are due.
During the hearing, your opponent introduces an ad for the new software that describes the “data flow” of you client’s program. It shows the data happily flowing between typical business processes. Claimant’s owner testifies the ad is proof positive your client’s software infringes. “It says ‘data flow’ right here. That’s part of how we knew their refusal to pay royalties on their new software was a breach of our patent license,” he testifies.
You are fairly sure that the ad uses those terms in a general descriptive sense, since data flows one way or another through all software. You doubt this is really an admission your client’s software uses dataflow computing in the technical sense used in the patent. You client is more a business guy than a software designer. He suggests that, to be sure “data flow” is used in the ad in the general and not the technical sense, you show the ad to the lead programmer, who will be testifying later.
During a break, while preparing the programmer to testify, you show her the document and ask her about the “data flow” reference. She says she is familiar with the ad and that it surely uses the term in the general sense. She says she designed the new software not to use dataflow computing. She wishes the advertising folks would have stayed away from that term in the ad, but it was only loosely used. Anybody who knows about software, she says, would know the term was not used technically.
Later, you call the programmer testify. She explains to the arbitrator that the ad uses “data flow” in the general and not infringing sense. During cross, your opponent asks the programmer when she last saw the ad She says she saw it earlier that day, when you showed it to her and asked about it.
Opposing counsel then exclaims, “Mr. Arbitrator, there has been a serious breach of the sequestration order in this arbitration. It is clear that counsel for respondent flagrantly violated the order by showing this document to the witness and clearly was relaying the testimony of another witness to this witness in violation of the sequestration order. As a sanction, you should conclude that it is now established that the term ‘data flow’ is actually used in the technical sense, establishing infringement. Only in this way can you keep respondent from profiting by this misconduct!”
You are a little taken aback. You quickly reread AAA rule 25 to make sure you haven’t missed anything. You haven’t. It says “The arbitrator shall . . . have the power to require the exclusion of any witness . . . during the testimony of any other witness.” You point to the arbitrator that the rule talks only about excluding attendance during testimony. It says nothing about not being able to prepare witnesses or clarify the meaning of documents during a break.
Your opponent, ready for all that, begins to cite federal cases where courts have forbidden witnesses to talk to each other to get their stories straight during trial. That is true even though the Federal Rule of Evidence equivalent, Rule 615, only talks about excluding witnesses from the courtroom. “After all,” he says,” the point of all this is to keep witnesses from getting together to ‘tailor their testimony to that of prior witnesses and to aid in the detection of dishonesty,’ to quote the case of United States v. Vallie, 284 F.3d 917, 921 (8th Cir. 2002). Putting a lawyer in the middle of it to help them fabricate their story shouldn’t be allowed.”
You deny the idea that anybody fabricated anything and argue this is all just an attempt to invade privilege and interfere with normal witness preparation.
The law in some jurisdictions
Later, you do some research to find that, even having a police officer take notes during a hearing of government witnesses’ testimony and relaying that information to other government witnesses during the hearing did not violate a sequestration order under Federal Rule 615. See United States v. Smith, 578 F.2d 1227, 1235 (8th Cir. 1978).
But this has been a fairly uncomfortable situation and you opponent has done his best to cast you as something less than completely forthcoming in your approach. Besides, you handle arbitrations all over the country, and who knows what a criminal court somewhere has said about sequestration that might be used against you?
Of course, arbitrators normally won’t start making decisions based on court decisions, but will simply stick with the AAA rule. In fact, as a technical matter, the arbitrator’s power under Rule 25 doesn’t extend beyond excluding witnesses from the hearing while others are testifying in any event. But why not avoid all this?
Once you are aware of the issue it is fairly simple to anticipate. When it comes up, just make it clear your understanding is that the rule applies only to presence at the hearing and not ability to prepare witnesses. You can say you’ve read about problems that can arise in this regard and want to make sure everyone understands. Everyone is bound to agree. If not, you will need to do some education of the arbitrator on this esoteric issue.
Next up: Opening statements.