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Cascades v. Samsung: Court Denies Motion to Compel Deposition of Trial Counsel but Grants Request to Produce Fee Agreement

Defendant Samsung Electronics Co. (“Samsung”) filed a motion to compel plaintiff Cascades Computer Innovation, LLC (“Cascades”) to produce additional documents and to require its trial counsel to appear for a deposition. Samsung moved to compel the deposition of Cascade’s trial counsel based on the argument that Cascades’s principal, Anthony Brown, had communicated with the trial counsel (Mr. Niro) regarding licensing and settlement negotiations.

The district court agreed that “[b]ased on the record before the Court, it is clear that Mr. Niro discussed with Brown facts and strategy for Brown’s use during licensing and settlement negotiations and also suggested appropriate outcomes.” But the district court found that this was not surprising as “[ll]awyers representing clients involved in contract or settlement negotiations do that every day. Doing so does not make the lawyer a witness in resulting litigation.”

The district court further found that “Samsung has not shown that Mr. Niro has any relevant, non-privileged information that is unavailable via Brown. (The Court is unpersuaded by Samsung’s apparent contention, made most clearly in its reply, that Mr. Niro’s input with Brown regarding licensing or settlement strategy makes him an appropriate fact witness. Again, the same would be true for nearly any lawyer who advises a client regarding negotiation strategy.) The Court therefore overrules Samsung’s request to take Mr. Niro’s deposition.”

The district court did find that it was appropriate to order the production of the fee agreement. “The Court does, however, direct Cascades to produce its fee agreement with the Niro firm. Certain of the terms of the agreement have been voluntarily disclosed already. In the Court’s view, this amounts to a concession that terms of the agreement are relevant. Nor does any claim of privilege entitle Cascades to withhold the agreement. It is anything but clear that the agreement would be privileged in the first place, but if it is, Cascades’s voluntary disclosure of certain terms of the agreement results in a waiver of any privilege that might exist regarding the agreement itself. The Court notes that this does not amount to a ruling that the fee agreement or its terms are admissible at trial; that is an issue for another day.”

Cascades Computer Innovation, LLC v. Samsung Electronics Co., Case No. 11 C 4574 (N.D. Ill. May 18, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or