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Court Allows Deposition of Trial Counsel Over His Pre-Filing Investigation

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.”

Because the Plaintiff maintained its right to rely on the evidence of its pre-filing investigation in its defense of this claim, the Court found that the information relating to the “methods, means, and results of” the pre-filing tests may lead to the discovery of admissible evidence relating to Defendant’s counterclaim. Consequently, the Court held that absent a stipulation that the pre-filing investigation will not be introduced or referenced in any way as a component of the Plaintiff’s defense, the deposition on this topic is appropriate under the applicable standard, which allows the deposition of trial counsel when “(1) no other means exist to obtain the information; (2) the information sought is relevant and nonprivileged; and (3) the information is crucial to the preparation of the case.” Slip Op. at 3 (citing National Inc. Co. v. Home Insurance Co. 278 F.3d 621, 629 (6th Cir. 2002)).

This case illustrates the limited circumstances under which a district court may allow the deposition of a party’s trial counsel over its pre-filing investigation.
The Lincoln Electric Company v. National Standard, LLC, Case No. 09-cv-1886 (N.D. Ohio January 19, 2012).

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