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Special Master Recommends Deposition of Litigation Counsel Who Also Helped Prosecute Patents-in-Suit

The plaintiff filed a motion for protective order to prevent the deposition of its litigation counsel. The district court referred the motion for protective order to the special master for resolution.

The special master framed the issue as whether, plaintiff’s litigation counsel, Mr. Chae should be required to provide testimony and information in discovery. “The parties agree that the applicable standard is set forth in Shelton v American Motors Corp., 805 F. 2d 1323, 1327 (8th Cir., 1986). Essentially, the standard to be applied is that the Court must determine that no other means exist to obtain the information other than to depose the attorney; that the information sought is relevant and non-privileged; and that the information sought is crucial to the preparation of the party seeking the discovery.”

The special master noted that Mr. Chae was the prosecuting patent attorney for the utility patent at issue in this case and was also the prosecuting attorney for four design patents, which are the subject of a separate suit that was consolidated. The special master also noted that the district court had already denied the plaintiff’s Motion to Dismiss and Motion to Strike, noting defendants alleged in their affirmative defenses and Counterclaim that the utility patent is invalid under the doctrine of inequitable conduct “because of the actions of [Mr. Chae], who prosecuted the application that matured into the ‘283 patent.” Further, the district court noted that defendants alleged that Mr. Chae failed to disclose prior art to the USPTO during the ‘283 prosecution, “with the specific intent to deceive the USPTO” and also alleged that Mr. Chae never informed the inventor, Mr. Kim, that he had a duty to submit relevant prior art to the USPTO.

The special master analyzed the issue by acknowledging that deposing litigation counsel is disfavored. The special master noted that “[a]t the hearing the parties agreed that but for his status as litigation counsel, Mr. Chae would clearly be a potential witness required to provide his deposition. Indeed, in their initial Rule 26 Disclosures, Mr. Chae was identified by plaintiff as a potential witness. (during the hearing on March 5, defense counsel indicated to the SM that on that date, plaintiff submitted an Amended or Supplemental Rule 26 report which does not identify Mr. Chae as a potential witness, instead identifying a Mr. Sanjun (ph) as a witness as to these issues).”

The special master also found that evidence regarding nondisclosure to the USPTO of allegedly relevant prior art is central to the defendant’s affirmative defenses and counterclaim and goes to the claims of inequitable conduct and invalidity.

The special master then considered whether there were other means to obtain the information apart from deposing Mr. Chae. The special master concluded that “the issue of attorney client privilege (should Mr. Chae be deposed) does not appear to be an issue, as it was indicated (see discussion supra) that Mr. Kim has testified he never communicated with Mr. Chae about prior art disclosures.” In addition, the special master determined that Mr. Sanjun could not provide the evidence sought by the defense, in place of Mr. Chae, because he was identified by the plaintiff as an intermediary, not a decision maker.

The special master also rejected the plaintiff’s argument that additional discovery may provide the information sought by the defense because discovery was ongoing since at least November of 2017 and discovery closes in March 2018.

Therefore, the special master ordered the deposition of litigation counsel to proceed.

Spiegen Korea Company, LTD v. Ultraproof, Inc., Case No. 2:16-CV-09185 DOC (DFMx) (C.D. Cal. March 6, 2018)

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