A Is For Apple: ND Cal Finds Former Testimony Inadmissible Against Apple In Patent Infringement Case

Federal Rule of Evidence 804(b)(1) provides an exception to the rule against hearsay for

Testimony given as a witness at another hearing of the same or a different proceeding, or in a deposition taken in compliance with law in the course of the same or another proceeding, if the party against whom the testimony is now offered, or, in a civil action or proceeding, a predecessor in interest, had an opportunity and similar motive to develop the testimony by direct, cross, or redirect examination.

And, as the recent opinion of the United States District Court for the Northern District of California in Affinity Labs of Texas, LLC v. Apple, Inc., 2011 WL 232521 (N.D. Cal. 2011), makes clear, Rule 804(b)(1) requires a contemporaneous opportunity and similar motive to develop the testimony of the witness.

In Affinty Labs, Affinity Labs of Texas, LLC initiated a lawsuit, alleging that certain Apple, Inc. Apple, Inc. products infringe three of its patents. 

In an earlier action Affinity sued BMW North America, LLC, and various car companies. Three witnesses, James Geier, Alan Harris and Gregory Simon, all BMW employees, were deposed in connection with that litigation. The BMW case involved patents different from, but related to, the three patents disputed in the present action. When Apple was subpoenaed as a non-party in the BMW action it asserted a joint defense privilege with the defendants in that action. However, Apple was not a party to the BMW case, and did not receive notice of or attend the depositions of the three BMW employees.

Apple thereafter had an opportunity to depose these three witnesses during discovery in the action against it (it is unclear from the court's opinion whether Apple actually deposed these witnesses). Therefore, Affinity Labs moved to have these witnesses' former testimony deemed admissible under Federal Rule of Evidence 804(b)(1) in the event that they are unavailable at trial. According to Affinity Labs, Apple had an "even better" opportunity to examine these witnesses than it would have had during the earlier action "because it can study their prior testimony and has the advantage of knowing how the testimony was used at trial in the BMW action."

According to the United States District Court for the Northern District of California, however, this argument was

belied by the language of the Rule, which require that Apple or a predecessor in interest have had an opportunity and similar motive to develop the witness's testimony from the prior deposition, which Affinity now proposes to use at trial. It is irrelevant that discovery would allow for subsequent examination of the witness in a civil action because the rule itself requires that the opportunity have existed with respect to the testimony that the proponent seeks to admit.

-CM