National Graphics Inc v. Brax Ltd et al
Filing
239
ORDER signed by Chief Judge William C Griesbach on 3-18-16 denying #229 Motion to Take Deposition ; denying #229 Motion ; granting #235 Motion for Protective Order. (cc: all counsel) (Griesbach, William)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
NATIONAL GRAPHICS, INC.,
Plaintiff,
v.
Case No. 12-C-1119
BRAX LTD, et al.,
Defendants.
DECISION AND ORDER
Defendant Dynamic Drinkware, Inc. filed a motion seeking permission to present live video
testimony at trial, or, in the alternative, to take the deposition of a non- party named Dan Blondal
for use at trial. Plaintiff National Graphics opposed the motion and filed a motion for a protective
order seeking to bar the proposed deposition. The parties appeared telephonically for a hearing, at
which point I took the matter under advisement. For the reasons given below, I will deny the
Defendant’s motion and grant the Plaintiff’s.
The Plaintiff’s position is quite simple. Discovery has been closed for a full year, and the
parties and their lawyers are preparing for the trial scheduled to begin in just six weeks. Civil Local
Rule 26(c) states that “completion of discovery means that discovery (including depositions to
preserve testimony for trial) must be scheduled to allow deposition to be completed . . . before the
deadline.” Despite the fact that the Defendants now view Mr. Blondal as an important witness, they
never deposed him during the lengthy pendency of this case, and thus it is too late to attempt such
an effort now. Similarly, the rules of procedure require live testimony rather than video testimony,
and only in extraordinary circumstances may an individual testify by video. The mere fact that a
witness has changed his mind about cooperating does not rise to the level of an extraordinary
circumstance. Moreover, Plaintiff argues, the testimony is not relevant because it seeks to re-litigate
a matter that has already been decided.
The Defendants argue that this not a “pickle of their own making,” as the Plaintiff puts it,
but merely an unforeseen scenario arising out of the fact that their witness has recently decided to
become more cooperative (at least partly) by being deposed or testifying via video. Previously, the
witness had expressed a desire to remain out of the case and would not consent to such appearances,
apart from a declaration he filed several years ago. Now the witness has had a change of heart and
wants to help, but not to the extent of actually appearing in court.
I am satisfied that this is not a case presenting “compelling circumstances” to permit
testimony other than in open court. Fed. R. Civ. P. 43(a). It is true that the witness lives in a
foreign country, but that country is Canada, not Mozambique. The notes to Rule 43 evince a clear
mandate for live, in-court testimony:
Contemporaneous transmission of testimony from a different location is permitted
only on showing good cause in compelling circumstances. The importance of
presenting live testimony in court cannot be forgotten. The very ceremony of trial
and the presence of the factfinder may exert a powerful force for truthtelling. The
opportunity to judge the demeanor of a witness face-to-face is accorded great value
in our tradition. Transmission cannot be justified merely by showing that it is
inconvenient for the witness to attend the trial.
Fed. R. Civ. P. 43 Advisory committee's note.
Similarly, the local rules of this district provide that depositions to preserve testimony for
trial must be conducted within the appropriate discovery deadlines, which have long lapsed. Civil
L. R. 26(c).
The mere fact that a witness has changed his mind does not warrant reopening
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discovery, particularly so soon before trial. Bagnal v. Foremost Ins. Grp., No. 2:09-CV-1474-DCN,
2011 WL 1235555, at *5 (D.S.C. Mar. 30, 2011) (rejecting testimony of a witness who changed his
mind about participating: “miraculously, right after this court's order granting summary judgment
in favor of defendant, Mr. Adams not only decided to become involved in the litigation, but is now
‘willing and eager’ to participate.’”)
In addition, there is a concern that any arguments based on Mr. Blondal’s testimony have
been waived.
In extensive summary judgment proceedings—both sides moved for summary
judgment on validity—this court addressed several invalidity arguments.
If it were relevant, the
time for presenting Mr. Blondal’s testimony was then, not now. Summary judgment “is the ‘put up
or shut up’ moment in a lawsuit, when a party must show what evidence it has that would convince
a trier of fact to accept its version of events.” Schacht v. Wisconsin Dep't of Corr., 175 F.3d 497,
504 (7th Cir. 1999). Summary judgment, particularly in a complex patent case like this one, is
designed in part to winnow the issues down for trial. Properly done, this crystallizes the factual and
legal issues posed and lessens the burden ultimately placed on the factfinder.
Here, allowing
additional testimony that was not before the court on cross-motions for summary judgment would
circumvent that process without adequate justification, particularly when the issue of validity itself
was before the court. “One opposing a summary judgment motion must, if the movant has made
the requisite showing under Rule 56, come forth with evidence sufficient to demonstrate the
existence of a triable issue of fact. . . . The motion's opponent may not present some evidence, then,
following an adverse summary judgment ruling, present the rest at trial.” United States v. Envtl.
Waste Control, Inc., 710 F. Supp. 1172, 1221 (N.D. Ind. 1989). Thus, I conclude that consideration
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of new testimony on a question already heavily litigated would not be proper.1
The motion for a protective order is GRANTED. The motion to take a deposition or offer
video testimony at trial is DENIED.
Dated this 18th day of March, 2016.
/s William C. Griesbach
William C. Griesbach, Chief Judge
United States District Court
1
To be clear, I do not agree with the Plaintiff’s belief that the court ruled definitively against
the Defendants on the validity question. This court did rule, as a matter of law, based on unrebutted
evidence of confidentiality, that the use of a Trendsetter device by Travel Tags company was not a
public use. (ECF No. 217 at 5.) With respect to the other invalidity issues raised, however, the court
did not issue a ruling foreclosing further litigation. Instead, I concluded that the Defendants’
arguments for invalidity did not sufficiently carry the burden at the summary judgment stage. For
example, the Roberts report did not “on its own” meet the clear-and-convincing evidence standard on
summary judgment (Id. at 9), but that only means that the court could not conclude that a reasonable
jury would necessarily have agreed with the argument, which is heavily fact-based. In other words, a
ruling that a given argument does not meet a given evidentiary burden on summary judgment does not
take the question away from the jury.
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