Must the Show Go On?: Some Judges Press Forward Scheduling Remote Patent Bench Trials

UPDATE: THE FOLLOWING CONTENT WAS ADDED JUNE 1, 2020

On May 27, 2020, the Honorable Colleen McMahon issued trial procedures in Ferring Pharmaceuticals Inc., et al. v. Serenity Pharmaceuticals, LLC, et al., Civ. Action No. 17-cv-09922, Doc. No. 690 (S.D.N.Y.). The Court considered the parties proposed remote-access platforms and the recommendations from the court’s audio-visual specialist, along with the draft protocols for COVID-19 Phase II Re-Entry from the United States District Court for the Southern District of New York, before deciding that the trial would proceed “all remote.” The Court’s order goes on to clarify what “all remote” means.

All witness testimony will be remote. The Court’s protocol dictates that anyone who has traveled abroad in the preceding two weeks will not be permitted to enter the courthouse. Given the requisite, two-week quarantine of half of the witnesses in the case, the Court determined that “the witnesses should testify from where they reside.” The Court determined that this was the fairest way to proceed given that “[e]very witness for both sides gets the same benefit and suffers from the same perceived handicaps.”

The attorneys for the parties will be required to jointly decide whether they would like to be in the courtroom during the trial, which the court notes is large enough to permit the requisite social distancing, or proceed remotely as well. While leaving this decision up to the attorneys, the Court noted it would understand if out-of-town counsel did not want to travel to the Southern District of New York to live out of a hotel for multiple weeks during the pendency of the trial.

However, Judge McMahon also indicated her desire, if practicable and safe, to hold “real bench trial closing argument” with solely lead trial counsel in attendance. Perhaps to ensure clarity of issues that might be challenged during the remote testimony, Judge McMahon indicated such closing arguments would be structured with “a lot of give and take, lawyers answering [her] questions as well as making their points.”

The Court also specified that the remote trial would proceed using TrialGraphix, for which the Court had some previous experience. The Court noted security considerations, in addition to this familiarity, as reasons for the selection.

With these new guidelines, the remote trial is set to proceed on July 6, 2020 as previously order.

UPDATE: THE FOLLOWING CONTENT WAS ADDED MAY 18, 2020

A trial date has been set in Ferring Pharmaceuticals Inc., et al. v. Serenity Pharmaceuticals, LLC, et al., Civ. Action No. 17-cv-09922, Doc. No. 680 (S.D.N.Y.). Pursuant to a memo endorsement, the Honorable Colleen McMahon has adjourned the trial until July 6, 2020, the date requested by defendants and counterclaims in a letter to the court indicating their hope for an in-person trial on that date. However, a subsequent Notice to Counsel from the court posted on the docket on May 14, 2020, reinforces the court’s prior directive that the trial must proceed despite the ongoing pandemic. Id. at Doc. 684.

In the Notice to Counsel, Judge McMahon expressed that while she understands the defendants “strong preference for trial in person,” the parties need to “prepare for the possibility that some or all of the testimony at [] trial will have to be taken remotely” given the very real likelihood that the “stay at home orders and travel restrictions” cited by defendants in their request will still be in place on the selected trial date (July 6, 2020). In the court’s words, “the coronavirus presents challenges that must be overcome somehow; and cases must be moved.” To overcome these challenges, Judge McMahon expressed interest in using a video platform for cross-examination, which could assist the court in making credibility determinations.

A teleconference to discuss with the parties “ideas for how to conduct” the probable remote trial is set for May 20, 2020. Anticipating resistance from counsel, the Court urged, “[w]e simply have to find a way to get this case tried.”

THE FOLLOWING CONTENT WAS ADDED MAY 4, 2020

Two recent decisions indicate the judiciary’s willingness and desire to move patent cases along despite the current pandemic and some resistance from counsel. 

Bench Trials Can Proceed Remotely

In Ferring Pharmaceuticals Inc., et al. v. Serenity Pharmaceuticals, LLC, et al., the Honorable Colleen McMahon, who sits in the Southern District of New York (in lower Manhattan), issued a strongly-worded notice to counsel that she intended to hold a bench trial on May 26, 2020 or shortly thereafter. Civ. Action No. 17-cv-09922, Doc. No. 678 (S.D.N.Y. Apr. 23, 2020). In the Court’s words, “[b]ench trials are the one type of proceeding that can go forward, even during a pandemic.” The Court noted that as a bench trial, testimony could be taken in writing and cross-examination could be conducted remotely, or in the alternative depositions could be submitted. The Court left open to the parties the discussion of exactly how the remote bench trial would proceed. A review of the docket to date reveals that defendants and counterclaimants have indicated that June 15, 2020 would be the earliest possible date for a fair and just remote bench trial given logistical issues arising from COVID-19 related travel restrictions and stay-at-home orders, and have requested adjournment of the bench trial to the later, ideal date of July 6, 2020, at which time they hope some of the proceeding would be able to take place in-person. Civ. Action No. 17-cv-09922, Doc. No. 679 (S.D.N.Y. Apr. 23, 2020). This request is still pending on the Court’s docket.  

A pending patent infringement bench trial in the US District Court for the Eastern District of Virginia (Alexandria, Virginia), Centripetal Networks, Inc. v. Cisco Systems, Inc., is set to go forward via videoconference despite the defendant Cisco Systems’ (“Cisco”) motion opposing the remote trial. Civ. Action No. 2-cv-00094, Doc. No. 406 (E.D. Va. Apr. 23, 2020). The Court’s order noted that the trial concerned “the protection of intellectual property[,]” specifically, patents concerning cybersecurity technology that also had potential implications for national security. Given that the “protection of intellectual property is of paramount concern,” the Court found “ample ground to proceed expeditiously” and conduct the bench trial via videoconference.

Logistics of Remote Bench Trials

The Court’s order in Centripetal Networks, Inc. v. Cisco Systems, Inc. examined some of the logistical concerns cited by Cisco in its motion opposing the remote bench trial. The Court  rejected several of Cisco’s concerns regarding the security and effectiveness of a bench trial via videoconference. Among its objections to the use of Zoom, Cisco cited security concerns—namely, the possibility that its confidential information could be viewed by the public in the platform. The Court found that this argument lacked merit since the courtroom would ordinarily be open to the public during the pendency of a trial under normal circumstances. Cisco also suggested the Court use its platform, WebEx, as an alternative to Zoom to combat other security concerns, but the Court rejected this suggestion since “any technological failure that may occur while using the WebEx software would open Cisco up to prejudicial accusations.” The Court did, however, encourage counsel to use whatever medium they wished to communicate between each other during the course of the trial and noted that unlike sitting in the courtroom the use of such software would allow counsel to easily communicate during trial by video. 

In addition, the Court addressed Cisco’s concerns regarding the ability to effectively cross-examine witnesses. The Court found that the challenges to remote cross-examination of witnesses would be alleviated by (1) the pre-trial disclosure of all exhibits, excluding those to be used for purposes of impeachment, and (2) the preparation of exhibit books exchanged at the beginning of witness examination.   

Remote Bench Trials Still Appear to be the Exception Not the Rule

While these recent decisions indicate that courts intend to keep their dockets moving forward, it is of paramount importance to consider the specific response of the jurisdiction in which an action is pending. While parties to litigation in the Southern District of New York or Eastern District of Virginia with bench trials on the horizon in the near future should be ready to proceed remotely, those in other jurisdictions should be prepared to await further orders from the courts regarding the likely timing of trials given standing orders continuing all trials, including bench trials.