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Recent Decision Highlights Discoverability of Funding Arrangements

In a recent discovery dispute in the Northern District of California, Judge Sallie Kim has ordered the plaintiff to produce litigation funding agreements, finding them relevant to potential witness bias. The April 29, 2025 order in Correct Transmission, LLC v. Juniper Networks Inc (Case No. 21-cv-09284-RFL) provides important guidance on when litigation funding arrangements may be discoverable despite work product protection claims.

Case Background

The case involves patent infringement claims brought by Correct Transmission against Juniper Networks. The patents-in-suit have an interesting ownership history, having changed hands multiple times before the current litigation:

  • Originally owned by Orckit Communications (co-founded by CEO Izhak Tamir)
  • After liquidation, purchased by Orckit IP in 2015 (funded by Tamir)
  • Later assigned to Correct Transmission for enforcement and licensing
  • Correct Transmission then entered into litigation funding agreements to monetize the patents

The dispute centered on whether these litigation funding agreements should be produced to the defendant.

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A federal court in Massachusetts has granted in part a motion for permanent injunction against defendants found liable for misappropriating trade secrets related to an insulin patch pump, imposing several significant remedies including the reassignment of patent applications that incorporate the intellectual property.

The case centered on Insulet Corporation’s Omnipod insulin delivery system, where after a month-long trial, a jury found six defendants liable for misappropriating trade secrets in violation of the Defend Trade Secrets Act (DTSA). The jury awarded Insulet $452 million, consisting of $170 million in unjust-enrichment damages and $282 million in exemplary damages. However, the court ultimately reduced the total damages award to $59.4 million to avoid potential double recovery issues with the injunctive relief.

The court’s April 24, 2025 ruling in Insulet Corporation v. EOFlow Co., Ltd. et al. follows a jury verdict that found the defendants liable for misappropriating four trade secrets belonging to Insulet Corporation, including an occlusion-detection-algorithm (ODA). When addressing Insulet’s request for reassignment of patent applications incorporating aspects of the misappropriated trade secrets, the court explained:

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In a recent decision from the United States District Court for the District of Massachusetts, the district court denied Abbott Laboratories’ motion for summary judgment in a patent infringement case involving multiple pharmaceutical companies. This ruling offers valuable insights into the application of Rule 19 joinder requirements in patent litigation.

The Case: Chr. Hansen HMO GmbH v. Glycosyn LLC

The dispute centers on a patent infringement claim brought by Glycosyn LLC against Abbott Laboratories, with Chr. Hansen HMO GmbH also involved as a plaintiff and counterclaim-defendant. Abbott argued that Glycosyn could not maintain its patent infringement suit without joining another company, Friesland Campina DOMO B.V. (“RFC”), which allegedly had an exclusive licensing agreement with Glycosyn for the patents at issue.

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In a recent discovery dispute between Largan Precision Co. and Motorola Mobility LLC, the Northern District of California provided important guidance on two critical issues: the location of plaintiff’s depositions and the application of the apex doctrine for high-level executives.

The Location Battle: Home Court Advantage Prevails

The court’s ruling reinforces a fundamental principle: when you choose to file a lawsuit in a particular district, you better be prepared to show up there. Largan, despite being based in Taiwan, failed to demonstrate any “undue hardship or exceptional circumstances” that would justify conducting depositions in Taiwan rather than California.

The court was particularly unimpressed with Largan’s argument about their witnesses having to “travel thousands of miles and sit for a deposition in a foreign country with a translator.” As Judge Ryu pointed out, this is merely a “conventional inconvenience”–especially in patent litigation where international parties are commonplace.

The Apex Doctrine: Protection vs. Relevance

The more intriguing aspect of the ruling concerns the attempted deposition of Largan’s CEO, Adam Lin. This showcases the delicate balance courts must strike between protecting high-level executives from harassment and ensuring access to relevant testimony. Continue reading

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A recent discovery dispute in the ongoing Boston Dynamics v. Ghost Robotics litigation provides an interesting look at how courts analyze attorney-client privilege in the context of legal memos shared with third parties. In an October 2024 order, Magistrate Judge Burke denied Boston Dynamics’ motion to compel additional discovery related to two legal memos that Ghost Robotics’ attorneys had prepared and shared with third parties.

The key issue was whether Ghost Robotics waived attorney-client privilege by sharing these memos. As the court explained, “The attorney-client privilege protects confidential communications between a client and an attorney relating to the purpose of securing legal advice.” However, this protection isn’t absolute – “If a client voluntarily discloses privileged communications to a third party, the privilege is waived.”

Boston Dynamics argued that the memos contained privileged communications, but Ghost Robotics maintained that “the content of the memos was never protected by the attorney-client privilege, in part because the memos were created with the intent that they were to be immediately disclosed to third parties.”

Judge Burke’s analysis focused on a critical distinction: The court found that “the substance of the memos seems not all that different from the content of a letter or an e-mail that a party’s attorney might send to opposing counsel in a case like this, or of a statement that an attorney might make in a press release or a court filing.” While Ghost Robotics’ attorneys likely had confidential discussions about these issues, the memos themselves didn’t reveal privileged communications. Continue reading

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In a significant ruling that clarifies the standards for expert disqualification in patent litigation, the U.S. District Court for the Eastern District of California has denied E. & J. Gallo Winery’s motion to disqualify Dr. Mark Greenspan, an expert witness for Vineyard Investigations. The December 2, 2024 order provides crucial guidance on the treatment of technical information in expert disqualification analyses and the interpretation of protective orders in patent cases.

Case Background

The underlying dispute involves Vineyard Investigations’ allegations that Gallo infringed patents related to variable rate drip irrigation systems. The controversy arose when Vineyard Investigations designated Dr. Greenspan, a former Gallo employee, as an expert witness. Dr. Greenspan had worked for Gallo between 1996 and 2005 as an irrigation specialist and Winegrowing Research and Development Manager.

Key Legal Framework

The court’s analysis centered on two potential grounds for disqualification, as articulated in the order:

“There are two relevant bases on which Defendant moves Dr. Greenspan be disqualified: (1) an exercise of a trial court’s inherent discretion and (2) pursuant to Section 2.6 of the protective order.”

The court emphasized that “disqualification is a drastic measure that courts should use reluctantly and rarely,” setting a high bar for excluding expert testimony.

Critical Holdings

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In a recent high-stakes patent litigation case, a protective order, filed on November 22, 2022, was put in place to safeguard confidential information during the course of the legal proceedings.  The defendant asserted that the plaintiff’s legal team had struggled to adhere to the protective order’s strict guidelines.

The first alleged violation involved a trial transcript containing sealed proceedings, which was sent from an associate at the plaintiff’s law firm, Williams & Connolly, to an associate at Morrison & Foerster, who is representing the plaintiff in separate IPR proceedings. This disclosure took place on July 18, 2023.

The second incident revolves around the plaintiff’s closing slide no. 298, which contained the defendants’ confidential Yesafili formulation. An associate at Williams & Connolly sent this slide to the plaintiff’s in-house counsel and to outside counsel in Canada. From there, the slide was disseminated to other members of the plaintiff’s in-house counsel team and to various international law firms.

The third and perhaps most concerning alleged violation involves the defendants’ BLA and other confidential information. The plaintiff’s in-house counsel sent this sensitive data to the Liad Whatstein firm in Israel, which handles patent litigation. Continue reading

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In a recent discovery dispute in a patent infringement case, the district court denied the defendant’s motion to compel the plaintiff to produce certain inventor emails that were withheld on the basis of the work product doctrine. The key issue was whether the plaintiff demonstrated that the emails, exchanged between the two inventors of the asserted patents from 2016-2018, were prepared in anticipation of litigation. The litigation ultimately commenced in February 2022.

The district court acknowledged that evidence pointed to by both sides benefitted their respective positions–the defendant highlighted facts suggesting the inventors’ work was not in anticipation of litigation, while the plaintiff provided contrary evidence. Ultimately, the district court found the plaintiff’s showing sufficient to meet its burden and justify the work product protection.

Key evidence cited by the district court included:

  1. An inventor’s testimony that he began investigating potential infringement in November 2015 with the assistance of outside counsel.
  2. The inventor provided information to outside counsel from 2016-2020 to assess possible infringement.
  3. Starting November 2015, the inventor implemented measures to preserve documents related to the patents and defendant.
  4. Testimony from the outside attorney that he had previously advised the plaintiff about potential litigation involving the patents at issue.

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In the ongoing patent infringement case between Acceleration Bay LLC and Activision Blizzard Inc., the district court recently issued an order resolving several important evidentiary disputes between the parties. This order provides guidance on the admissibility of various categories of evidence that will impact the damages case at the upcoming trial.

Here are the key takeaways:

Survey Evidence Allowed for Limited Purpose

The court permitted Acceleration Bay to use Activision’s own customer surveys for the limited purpose of showing that the allegedly infringing large multiplayer game modes in Call of Duty are of equal or greater importance to customers compared to the non-infringing small game modes. Nonetheless, the district court reiterated its exclusion of the plaintiff’s damages expert’s opinions apportioning royalties based primarily on this survey evidence, finding that while the surveys can demonstrate the significance of the accused modes, they cannot directly calculate the royalty damage amount.

Evidence of Foreign World of Warcraft Sales Permitted

The district court allowed Acceleration Bay to present evidence of Activision’s foreign sales revenues for the World of Warcraft game. The plaintiff’s theory is that the infringing U.S.-based server system supports foreign players in North and South America. The district court found that as long as Acceleration Bay provides evidence linking the foreign sales to the accused domestic server system, the foreign revenue numbers can be admitted, even if conditionally at first. Continue reading

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In a recent development in patent litigation, the district court has granted a motion to dismiss counterclaims in a case involving U.S. Patent No. 10,519,668 (“the ‘668 Patent”). The decision sheds light on the importance of adhering to meet and confer obligations, as well as the consequences of non-compliance.

Background:

The defendants in this case had asserted counterclaims, including declaratory judgments of invalidity and non-infringement of the ‘668 Patent, breach of contract, fraud, unjust enrichment, and constructive trust.  On October 31, 2023, the district court granted the defendants’ Motion for Summary Judgment of non-infringement of the ‘668 Patent, marking a significant milestone change in the proceedings.

Subsequent Events:

Following the district court’s decision, the defendants’ counsel sought to engage in a meet and confer with the plaintiff, Upstream, regarding the possible dismissal of the counterclaims without prejudice. Despite making multiple attempts to contact Upstream’s counsel between March 19 and 27th, no response was received. Consequently, the defendants proceeded to file a motion to dismiss their counterclaims on March 29, 2024. Continue reading