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Production of Billing Statements from Law Firm Denied Even Though Deponent Could Not Recall Details of Why Information Was Not Disclosed to PTO

The defendants in this patent infringement action sought the production of certain billing statements of the law firm representing CleanTech. The defendants argued that the billing statements were discoverable based on their inequitable conduct defense because a witness was unable to recall why certain information was not disclosed to the Patent and Trademark Office (“PTO”) during his deposition. Defendants asserted that the billing statements could supply the information the deponent was not able to recall.

The district court did not agree that the billing statements were necessary to supply missing information. “The court expressed its reluctance to require production of attorneys’ billing statements, particularly because of attorney-client privilege concerns and the possible need for extensive redactions and because billing statements are not likely to be the best source for discovering facts. The court directed Iroquois to file Mr. O’Brien’s deposition transcript under seal so that the court could evaluate the extent to which Mr. O’Brien was unable to provide information that billing statements might provide instead.”

After reviewing the deposition transcript, the district court did not find that the testimony reflected a lack of memory that would justify the production of the billing records. “The court has carefully reviewed the transcript of Mr. O’Brien’s deposition and the deposition exhibits. In the court’s view, his deposition testimony does not reflect a lack of memory on the issues identified above that would justify the production of the billing records.”

The district court gave one example where “Mr. O’Brien consistently testified to his belief that, after Mr. Cantrell’s 2011 deposition, the litigation group was to provide Mr. Hagerty documents related to Agri-Energy, and Mr. Hagerty was responsible for making decisions regarding the nature and extent of the Agri-Energy disclosures to the PTO, including the July 2012 information disclosure statement. Mr. O’Brien disclaimed any role during this period with the timing of disclosures to the PTO and the content of those disclosures except that he participated in reviewing and approving the contents of the Second Cantrell Declaration.”

The district court then noted that although Mr. O’Brien “could not explain why the Barlage Report and 2003 diagram were not provided to the PTO, but his lack of explanation is not akin to a lack of recall for which production of billing statements is an efficient or appropriate discovery substitute.”

Accordingly, the district court denied the motion to compel.

In re: Method of Processing Ethanol Byproducts and Related Subsystems (‘858) Patent Infringement, Case No. 1:10-ml-2181-LJM-DML (S.D. Ind. Oct. 30, 2014)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or