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Article: July 2020: Trial Practice Update

July 31, 2020
Business Litigation Reports

Maintaining Inconsistent Positions in Discovery and at Trial

As a general matter, parties in civil litigation are permitted to plead inconsistent claims and defenses.  Fed. R. Civ. P. 8.  Although this may seem at odds with the court’s interest in discerning the truth, the rule reflects a sensible policy.  Parties often cannot know all of the relevant facts and circumstances at the outset of a case.  They thus require some latitude to take inconsistent positions in order to develop the case’s merits – probing alternative theories in discovery to see which, if any, is borne out by the evidence. 

There are limits, however, on parties’ ability to take and maintain inconsistent positions.  For example, parties are only authorized to assert contradictory facts where they have made a reasonable inquiry into the matter and are legitimately in doubt about the fact in question.  Great Lakes Higher Educ. Corp. v. Austin Bank of Chicago, 837 F. Supp. 892, 894 (N.D. Ill. 1993) (citing Fed. R. Civ. P. 11). On the other hand, once a party convinces a court to adopt one of its positions, it may be judicially estopped from taking an inconsistent one in subsequent proceedings in order to protect the integrity of the courts and prevent gamesmanship.  Teledyne Indus., Inc. v. N.L.R.B., 911 F.2d 1214, 1217–18 (6th Cir. 1990).

This approach, however, is not without risk.  Indeed, just because parties can take inconsistent positions does not always mean that they should.  At certain points—such as when an expert witness is preparing opinions for a report—it is important for parties to “pick a lane.”  Otherwise, the conflict may give fodder to opposing counsel to exploit during trial.   

For example, Quinn Emanuel has represented Qualcomm in numerous cases around the world, including a recent patent case tried to a jury in San Diego, California.  In that case, Qualcomm asserted several patents against Apple.  For one of the patents, Apple defended itself, in part, by claiming that one of its employees—not Qualcomm’s—had come up with the idea underlying the patent and therefore qualified as an “inventor.”  Apple had a witness willing to testify to that point at trial, and had an email from an Apple executive to a Qualcomm executive summarizing the employee’s alleged idea.   

To establish someone as an inventor on a patent, a party must show that the individual made a significant contribution to the patent and did not merely communicate a well-known concept in the art.  Nartron Corp. v. Schukra U.S.A. Inc., 558 F.3d 1352, 1356–57 (Fed. Cir. 2009).  But asserting inventorship as a defense can conflict with other defenses to patent infringement claims.  For instance, accused infringers often allege that an asserted patent is invalid because its concepts were well-known and thus not patentable.  In the Qualcomm-Apple litigation, Apple opted to assert both defenses in its answer to Qualcomm’s complaint, and made the fateful decision to pursue both theories—inventorship and invalidity—through expert discovery.  

Although Apple ultimately dropped invalidity at trial in favor of an inventorship defense, the damage was already done.  For example, one concept claimed in the patent at issue was that a “header” be received by a processor separately from data.  Apple argued that its employee contributed this idea to the patent, qualifying him as an inventor.  Apple’s expert, however, had offered an invalidity opinion that concluded that this concept was “well-known in the art before 2010.” Qualcomm Inc. v. Apple Inc., Case No. 17-cv-1375, Dkt. 728 at 1236:1-23.  So the jury was faced with two conflicting positions: (1) that the separate-receipt concept was not  a well-known concept in the art prior to its contribution (qualifying Apple’s employee as an inventor), or (2) that the separate-receipt concept was well-known in the art at the time of the patent’s issuance (rendering Qualcomm’s patent invalid).  Quinn Emanuel seized on this inconsistency and used it to Qualcomm’s advantage during cross-examination of Apple’s expert.  Apple’s expert was asked “You testified that [the idea of a separate receipt of an image header and the data segments] alone means that Mr. Siva was a significant contributor, right?,” to which he responded “Yes.”  Id. at 1238:1-8.  He was then immediately asked, “But you also offered the opinion that the idea of separate receipt of an image header and the data segments was well-known in the art, right?,” to which he also responded “Yes.”  Id.  In other words, Apple’s expert was forced to admit both that the Apple employee came up with something new and significant, but also that the concept was incredibly well-known in the art.  Similar issues plagued Apple’s non-infringement defenses.  For example, Apple’s expert argued that Apple did not infringe because its header came in two separate parts. Id. at 1219:3-7. But Apple also described its employee’s alleged inventive contribution as a two-part header. Id. 1220:2-10. 

Faced with these contradicting positions, the jury found in Qualcomm’s favor on both infringement and inventorship, awarding Qualcomm all of the damages it sought. 

The takeaway here is this: although parties are generally permitted to plead contradictory positions and test those positions in discovery, they should not do so in a way that impairs their ability to present a cohesive story at trial.  This example illustrates that decisions on which positions to take should be made as early as possible, and likely prior to the submission of expert reports.