Patent Lawyer Blog

In one of several patent battles that Apple is waging across the country against Google's Android operating system, Motorola moved to exclude the testimony of one of the inventors of the patent-in-suit. As part of determining this motion, the district court, Judge Posner, requested that Apple answer several questions in camera, including why the inventor retained certain counsel and under what circumstances the inventor retained the additional counsel provided by Apple.

Apple noticed the depositions of several high-ranking employees at Samsung and moved to compel their depositions. As the district court explained, "Apple argues that it entitled to these depositions because each SEC witness has unique, firsthand, non-repetitive knowledge of facts and events central to this litigation. The SEC witnesses acted in their authoritative, decision making capacities regarding certain Samsung policies that directed other employees to consider and compare Apple products when designing or re-designing the accused products or features. The STA witnesses are personally knowledgeable of or responsible for development, marketing, and finance decisions relating to the U.S. market for the accused products. Because Samsung has not produced any discovery from these witnesses, all of the evidence it relies upon has been pieced together from other witness sources."

Plaintiff moved to compel the production of documents that were listed on the defendants' privilege logs. The district court explained the disputed documents as follows: "The disputed documents at issue were either authored by Ablation Frontiers, Inc.'s ("AFI") outside counsel for AFI, or Medtronic's outside counsel for Medtronic. The documents were subsequently turned over to each respective party by the other during Medtronic's negotiations to acquire all of AFI's products and related intellectual property."

"It is for ordinary minds, and not for psychoanalysts, that our rules of evidence are framed. They have their source very often in considerations of administrative convenience, of practical expediency, and not in rules of logic. When the risk of confusion is so great as to upset the balance of advantage, the evidence goes out." Minemyer v. B-Roc Representatives, Inc., Case No. 07 C 1763 (N.D. Ill. Feb. 2, 2012 Order) at 10-11. With this in mind, the Minemyer Court denied defendants' attempt to introduce to the jury, in defense of plaintiff's claim of willful infringement, evidence of the prosecution history of plaintiff's patent.

In Minemyer, Minemyer sued B-Roc for patent infringement including willful infringement. In defense of the claim of willful infringement B-Roc attempted to argue that the prosecution history of Minemyer's patent weighed against a finding of willful infringement. Specifically, B-Roc intended to argue that the various office actions in plaintiff's patent, "were relevant because they supposedly tended to show an absence of objective recklessness." Order at 6. The Court concluded that evidence of the various office actions were not only irrelevant under Rule 401 and thus inadmissible under Rule 402, but were also properly excluded under Rule 403 because such evidence had the potential to confuse the jury.

Minemyer Order.pdf

Samsung moved to shorten time for briefing and a hearing on a motion pertaining to an expert witness, while just a few days earlier Apple had filed a motion to shorten time on its motion relating to the production of foreign-language and other documents in advance of depositions. The court noted that a little more than two weeks earlier, both parties moved to shorten time on a total of nine discovery motions and in the past four months, the parties submitted eighteen discovery motions, all on shortened time.

Plaintiff Gerber Scientific International ("Gerber") filed a patent infringement action against Roland DGA Corporation ("Roland"), asserting that Roland infringed Gerber's patent covering a method and apparatus for computerized graphic production. Roland filed a motion for protective order with respect to the depositions of three of its Japanese employees and its president.

In its motion for protective order, Roland argued that the depositions of its three Japanese employees should take place in Japan and that the deposition of its president should not take place at all because he is a senior executive with no unique or specialized knowledge relevant to the case. With respect to the employees in Japan, Roland argued that witnesses should be deposed near their residence or their place of business and both parties could equally bear the costs, as such Gerber could not satisfy its burden of proving that circumstances exist that warrant taking the depositions in the United States.

Plaintiff, Two Moms and a Toy, filed an emergency motion to stay the expert phase of their case pending the court's ruling on claim construction. The plaintiff's motion was based on the argument that "expert reports and expert discovery in a patent infringement case is extremely expensive and that a ruling on claim construction could end this case and at the very least will provide the parties with needed guidance and information for assessing the patent's strength which will hopefully result in a settlement of the case."

The court was not persuaded by the plaintiff's argument. Indeed, it agreed with the defendant that it was "thinly veiled request for reconsideration of my two previous ruling denying motions to extend or otherwise modify the case schedule." The court noted that these argument could have, and should have been, raised in connection with the earlier requests to amend the schedule that were denied by the court. "All of the arguments about expense and efficiency could have been made in connection with the parties' previous Joint Motion to Amend Scheduling Order."

Defendant moved to compel the deposition of a member of Plaintiff 's trial counsel regarding Plaintiff's pre-filing investigation. Despite Defendant's attempt to withdraw the motion based on a representation (not disclosed in the opinion) made by the Plaintiff in its sur-reply, the Court granted the Defendant's motion and required the Plaintiff to produce a member of its trial counsel for his deposition over this topic.

The Defendant originally sought to depose Plaintiff's trial counsel over information relating to his pre-filing investigation of the claims in the lawsuit. The pre-filing investigation included obtaining and photographing the accused product. According to the Plaintiff, the information obtained was never intended to be used as evidence of any actual infringement. In fact, the Plaintiff represented that its trial counsel would not be a witness nor would it use anything from his examination as evidence in the case. The Court noted that while normally this would end the inquiry regarding the necessity of the deposition, the Defendant had raised counterclaims asserting that the Plaintiff "has violated the antitrust laws by bringing suit against competitors without adequate justification in order to stifle competition."

Plaintiff TiVo brought an emergency motion to compel production of an e-mail that defendant AT&T produced and then clawed back pursuant to a protective order agreed to by the parties. During a deposition, TiVo marked an e-mail as an exhibit and questioned the deponent for several minutes about the e-mail before AT&T's counsel demanded that TiVo return the e-mail. AT&T's counsel explained that the e-mail may be subject to a common interest agreement with a third party. TiVo returned the e-mail pursuant to the parties' protective order.

TiVo subsequently moved to compel the e-mail arguing that it did not contain attorney-client privileged or work product information. TiVo pointed out that neither the sender nor the recipient are attorneys and the subject matter of the email did not contain legal advice. In addition, the e-mail was created for a business purpose and not for purposes of litigation and therefore could not be work product. TiVo also argued that the e-mail was discoverable under the crime-fraud exception because the contents of the e-mail constitute prima facie evidence of an antitrust violation.

In Degelman Industries Ltd. v. Pro-Tech Welding and Fabrication, Inc., et al., plaintiff Degelman sued the defendants for patent infringement of various utility and design patents related to moving blades used in heavy equipment such as bulldozers and snowplows. 06-CV-6346T (W.D.N.Y.). The parties filed a litany of motions for summary judgment, motions to strike and motions to preclude expert testimony and reports. Most interestingly, and the subject covered herein, was the latter motion by Degelman to preclude the testimony and expert reports of defendants' experts, Nicholas P. Godici and Alan P. Douglas, both experienced patent examiners at the United States Patent and Trademark Office.

Defendants had proffered Godici and Douglas as experts not only on patent office practice but also as experts on patent validity and inequitable conduct. Degelman moved to preclude their testimony on all topics, but as to the issue of inequitable conduct, moved to preclude because neither was an attorney and thus neither could speak to the legal issues of inequitable conduct. And as to invalidity, Degelman moved to preclude their testimony because neither was an expert in the particular technical subject matter of the patents.

Plaintiffs filed a patent infringement action against National Semiconductor Corporation alleging that National Semiconductor's WEBENCH tools infringed plaintiff's' patent. National Semiconductor filed an amended answer and counterclaim asserting, among other things, that plaintiffs patent was invalid due to inequitable conduct based on plaintiffs' failure to disclose material information about WEBENCH and other third-party tools to the Patent and Trademark Office ("PTO") during prosecution of the patent-in-suit.

National Semiconductor filed a motion to compel after, as it alleged, plaintiffs disclosed only certain privileged information that it considered helpful to its position during the deposition of individuals involved in the prosecution of the patent. Two of the inventors testified that they understood and complied with the duty of candor and one of the inventors testified that he relied on the advice of counsel. In addition, one of the prosecutors testified that he acted in good faith before the PTO. Other than disclosing this information, plaintiffs instructed the witnesses not to answer based on the attorney-client privilege, including, for example, whether one of the inventors provided patent counsel with documents such as prior art references.

Rambus Inc. sued NVIDIA Corp. for patent infringement. Rambus v. NVIDIA, Case No. C-08-03343 SI (N.D. Cal.). NVIDIA countered that Rambus' asserted patents were invalid. Pursuant to the Northern District of California Patent Local Rules, L.R. 3-3 and 3-4, NVIDIA provided Rambus with its invalidity contentions. Rambus complained that NVIDIA's invalidity contentions failed to comply with the Patent Local Rules. After meet and confers between the parties were unsuccessful, Rambus brought its motion to compel.

In general, the Northern District's Patent Local Rules "exist to further the goal of full and timely discovery and to provide all parties with adequate notice and information with which to litigate their cases." Avago Technologies General IP PTE Ltd. v. Elan Microelectronics Corp., 2007 WL 951818 at *1 (N.D. Cal., Mar. 28, 2007, C04 05385 AV HRL). "The Rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed." Id. Patent L.R. 3-3(a) provides that "not later than 45 days after service upon it of the 'Disclosure of Asserted Claims and Infringement Contentions,' each party opposing a claim of patent infringement, shall serve on all parties its 'Invalidity Contentions' ....