In 2017, Sound View sued Hulu for patent infringement. In response to Sound View's willful infringement allegations, Hulu asserted an advice of counsel defense and produced several non-infringement opinions from its outside counsel. At Sound View's request, the court compelled deposition testimony from Erin Mehta, Hulu's in-house attorney who primarily communicated with outside opinion counsel. Sound View included Ms. Mehta on its trial witness list and Hulu moved to quash the corresponding subpoena based on the general presumption that a party's lawyer should not be called to testify and because Hulu would be unfairly prejudiced if Ms. Mehta, who would be supervising the trial for Hulu, were required to testify. The court addressed two questions: (1) whether Sound View had shown that no other means existed to obtain the information covered by Ms. Mehta's testimony and (2) whether Hulu would be unfairly prejudiced if the court forced Ms. Mehta to testify.

First, Hulu argued that its in-house counsel should not be called to testify where there were other means for Sound View to develop the trial testimony it sought. Specifically, Hulu argued that Sound View could play portions of Ms. Mehta's video deposition or it could call a different in-house attorney, such as Hulu's head of litigation and intellectual property. Sound View disagreed, arguing that it should not be forced to play Ms. Mehta's deposition video because she would be available to testify live. Second, defendant's head of litigation does not have the same knowledge as Ms. Mehta—one of the reasons why the court compelled Ms. Mehta's deposition in the first place. The Court agreed with Sound View. The federal rules allow a party to play deposition testimony when a witness is unavailable but the Court pointed out that Ms. Mehta will not be unavailable. To the contrary, she will be present and supervising the trial. Sound View was also correct that, as the point of contact with outside counsel, Ms. Mehta has unique information about the relevant non-infringement opinions, a fact borne out at the depositions.

The Court also determined that forcing Ms. Mehta to testify at trial would not unduly prejudice Hulu. Hulu's choice to allocate trial preparation responsibility to her does not excuse her as a witness. Moreover, Sound View made clear it intends to question her only about non-privileged information regarding willful infringement. The Court reasoned that the scope of questioning will limit any potential inadvertent disclosure of privileged information. Accordingly, the Court denied Hulu's motion to quash and agreed that Sound View may call Ms. Mehta as a trial witness, provided that Sound View limits its questioning to outside counsel's non-infringement opinions.

Sound View Innovations, LLC v. Hulu, LLC, 17-cv-04146 (C.D. Cal Nov. 18, 2019) (Order)

Practice Tip: Consider tasking an attorney other than the trial supervisor as the primary contact with outside opinion counsel. Doing so will ensure that a different attorney has equivalent or better knowledge about non-privileged communications with opinion counsel, which should decrease the likelihood that your in-house trial supervisor will be required to testify at trial.

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