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In-House Counsel Ordered to Sit for Additional Deposition After Emails Improperly Withheld on Basis of Privilege

Sprint Communications Company, L.P., filed a patent-infringement action against Comcast Cable Communications, LLC, Comcast IP Phone, LLC, and Comcast Phone of Kansas, LLC (collectively, “Comcast”). The district court had previously ordered Comcast to produce seven emails received by Comcast’s in-house patent counsel, David Marcus, that Comcast had improperly withheld as privileged. After it received copies of the emails, Sprint moved to compel Comcast to produce Marcus for a second deposition to answer questions related to the emails.

The district court explained that the “recently produced emails involve communications from 2007 between in-house counsel for Comcast, Cox, and Time Warner Cable, and attorneys from the law firm of Dreier, LLP. The three cable companies had jointly retained Dreier to monitor proceedings in a patent-infringement lawsuit that Sprint had brought against Vonage Holdings Corp. and Vonage America, Inc. in the District of Kansas. Some of the patents that were at issue in Vonage are at issue in this case.”

Sprint deposed Marcus over a two-day period and during the deposition, Marcus answered questions about Comcast’s retention of Dreier firm and the Vonage trial. Sprint asserted that the recently produced emails “provide previously withheld details that rebut Comcast’s equitable defenses and call into question the accuracy of David Marcus’ [sic] earlier testimony.” As explained by the district court, Sprint noted “that Marcus testified that Comcast did not rely on the oral opinion of Dreier as to the validity of the patents at issue in Vonage, but the emails indicate that Comcast participated in teleconferences discussing the invalidity and/or non-infringement of nine specific claims in Sprint’s patents. Sprint also states that it would like to question Marcus about conversations he had with counsel for Time Warner Cable and Cox outside the presence of Dreier attorneys, which the emails indicate occurred but which Marcus previously testified he could not recall. As a final example, Sprint states that it would like to question Marcus about an email stating that he wished to ‘remain anonymous’ in monitoring the Vonage trial.”

Comcast responded that the newly produced emails did not warrant reopening Marcus’s deposition because Marcus did not author any of the emails and the emails did not contain any significant new information. The district court disagreed, finding that ” Sprint has shown that the emails do supply new fodder for questions relevant to Comcast’s equitable defenses. Sprint should not be precluded from the ability to ask such questions by Comcast’s delayed production. Quite simply, Comcast now must face the consequences of its improper withholding.”

Accordingly, the district court ordered a further deposition of Marcus but limited it to two hours.

Sprint Communications Company, L.P. v. Comcast Cable Communications, LLC, Case No. 11-2684-JWL (D. Kan. Aug. 4, 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