January 2017 Archives

District Court Denies Motion to Compel Inadvertently Produced Privileged Documents

January 31, 2017

In this patent infringement action, Teva inadvertently produced documents to Sunovion. Teva subsequently attempted to claw back the documents under the parties' protective order. Sunovion moved to compel the inadvertently produced documents.

In analyzing the motion to compel, the district court noted that it had "reviewed the parties' submissions, the Discovery Confidentiality Order (DCO), and, in particular, paragraphs 28 and 30 of the DCO." The district court further noted that "[t]hese paragraphs are applicable to the instant matter insofar as they refer to notice 'promptly after its discovery' and 'prompt remedial action' in the event of an inadvertent disclosure."

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District Court in the Eastern District of Texas Orders Retention and Production of Participants in Jury Research

January 24, 2017

In keeping with the standing order issued by Judge Gilstrap for jury trials that strongly discouraged jury research in the Eastern District of Texas, Magistrate Judge Love recently issued a similar order for patent case pending in the Eastern District of Texas.

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District Court Orders Production of Attorney-Client Communications Between Opinion Counsel and Trial Counsel Based on Advice of Counsel Defense

January 17, 2017

Plaintiff Krausz Industries Ltd. ("Krausz") filed a motion for an order compelling Defendants Smith-Blair, Inc. and Sensus USA, Inc. (collectively "Smith-Blair") to allow discovery into various attorney-client communications and work product related to an advice of counsel defense.

Although the parties agreed that raising an advice of counsel defense can result in a waiver of the attorney-client privilege and work product doctrine, the parties disagreed about the scope of the waiver. Smith-Blair asserted that any waiver should be limited to communications and related work product between Smith-Blair and its opinion counsel on the issue of noninfringement that occurred before litigation began.

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District Court Denies Motion to Withdraw Deemed Admissions

January 10, 2017

The plaintiff filed an ex parte application to be relieved of admissions that were deemed admitted for failure to respond.

In analyzing the ex parte application, the district court first concluded that the plaintiff had not justified the filing of an ex parte application rather than a noticed motion. "Plaintiff has not shown Plaintiff's 'case will be irreparably prejudiced if the underlying motion is heard according to regular noticed motion procedures.' Mission Power, 883 F. Supp. at 492. To the contrary, there is no mention anywhere in the Application or supporting declaration that there is any crisis or emergency warranting ex parte relief, nor does it appear to the Court that Plaintiff's case would be 'irreparably prejudiced' if the underlying motion were heard according to regular noticed motion procedures. Moreover, to the extent there is any crisis, Plaintiff has not shown it is 'without fault in creating the crisis that requires ex parte relief, or that the crisis occurred as a result of excusable neglect.' Id. "

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District Court Denies Motion to Stay Pending Ex Parte Reexamination Where Defendant Did Not Pursue Inter Partes Review

January 3, 2017

After filing an ex parte reexamination with the Patent Office, the defendant filed a motion to stay the action pending the ex parte reexamination.

In analyzing the request to stay the action, the district court noted that "[t]he decision of whether to stay this case during the potential ex parte reexamination is discretionary." The district court also explained that courts have inherent power to manage their dockets, including by ordering a stay during a patent reexamination. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). Other cases in this district have considered, in deciding whether to stay a case pending patent reexamination or review, "(1) whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party." Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107, 1111 (N.D. Cal. 2006); see In re Cygnus Telecomms. Tech., LLC, Patent Litig., 385 F. Supp. 2d 1022, 1023 (N.D. Cal. 2005).

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