Articles Posted in Discovery

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https://patentlaw.jmbm.com/files/2019/01/background-close-up-court-1415558-pexels-CC0-01.14.2019-1-300x201.jpgIn this patent infringement action, the plaintiff, Whirlpool Properties (“Whirlpool”) noticed several depositions of third-party witnesses near the discovery cut-off.  The defendant, Filters Fast, moved for an order to stop the depositions.

As explained by the district court, “[t]he crux of the pending motion is that the Whirlpool Plaintiffs emailed Defendant on November 28, 2018, the dispositive motions deadline, attaching two third-party deposition subpoenas that noticed depositions for December 6 in Windsor, Va. and December 7 in Simpsonville, S.C.  Defendant contends that Plaintiffs had never identified these potential witnesses, nor even disclosed the possibility of deposing them.  Moreover, Defendant notes that these newly noticed depositions overlapped with already scheduled depositions of Whirlpool witnesses to be held in Chicago, Il. on December 5, 7, and 11. According to Defendant, Whirlpool Plaintiffs then emailed a notice on December 2, regarding a third third-party witness it intended to depose in Texas on December 11 or 12.”

In opposition, Whirlpool asserted that witnesses in question “were disclosed within three days of confirming them for depositions.”  Whirlpool argued that the notice of depositions in dispute here was “reasonable under the circumstances.” ((citing Fed.R.Civ.P. 30(b)(1)).  Whirlpool further argued that the third-party depositions could have been conducted by the parties’ stipulated extension of the discovery deadline – December 12, 2018. Whirlpool also contended that the depositions address non-complicated issues that would require minimal preparation.

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In this patent infringement action, Teva inadvertently produced documents to Sunovion. Teva subsequently attempted to claw back the documents under the parties’ protective order. Sunovion moved to compel the inadvertently produced documents.

In analyzing the motion to compel, the district court noted that it had “reviewed the parties’ submissions, the Discovery Confidentiality Order (DCO), and, in particular, paragraphs 28 and 30 of the DCO.” The district court further noted that “[t]hese paragraphs are applicable to the instant matter insofar as they refer to notice ‘promptly after its discovery’ and ‘prompt remedial action’ in the event of an inadvertent disclosure.”
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Plaintiff Krausz Industries Ltd. (“Krausz”) filed a motion for an order compelling Defendants Smith-Blair, Inc. and Sensus USA, Inc. (collectively “Smith-Blair”) to allow discovery into various attorney-client communications and work product related to an advice of counsel defense.

Although the parties agreed that raising an advice of counsel defense can result in a waiver of the attorney-client privilege and work product doctrine, the parties disagreed about the scope of the waiver. Smith-Blair asserted that any waiver should be limited to communications and related work product between Smith-Blair and its opinion counsel on the issue of noninfringement that occurred before litigation began.
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The plaintiff filed an ex parte application to be relieved of admissions that were deemed admitted for failure to respond.

In analyzing the ex parte application, the district court first concluded that the plaintiff had not justified the filing of an ex parte application rather than a noticed motion. “Plaintiff has not shown Plaintiff’s ‘case will be irreparably prejudiced if the underlying motion is heard according to regular noticed motion procedures.’ Mission Power, 883 F. Supp. at 492. To the contrary, there is no mention anywhere in the Application or supporting declaration that there is any crisis or emergency warranting ex parte relief, nor does it appear to the Court that Plaintiff’s case would be ‘irreparably prejudiced’ if the underlying motion were heard according to regular noticed motion procedures. Moreover, to the extent there is any crisis, Plaintiff has not shown it is ‘without fault in creating the crisis that requires ex parte relief, or that the crisis occurred as a result of excusable neglect.’ Id.
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In this patent infringement action, IBM filed a motion to compel production of certain documents that were withheld as privileged. IBM contend that time was of the essence when it filed its motion.

The district court was not persuaded by the urgency of the request or that time “was of the essence” because the motion was filed late. As explained by the district court, “IBM’s urgency is belied by the fact that its request is late. Fact discovery closed November 18. Under Civil Local Rule 37-3, IBM’s motion to compel discovery was due within 7 days after the fact discovery deadline. Yet IBM filed its discovery motion on December 13, more than two weeks late.”
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Dexcel filed a motion to compel contending that Takeda has refused to provide any fact discovery concerning Takeda’s methods for particle size analysis used in prior litigations or underlying the data in the patents-in-suit. Dexcel asserted “that this information was relevant because it targets whether Takeda’s position as to test methods to assess the literal infringement of Takeda’s particle size limitations by Dexcel’s product is consistent with positions Takeda has taken in the past.”

Takeda objected arguing that any discovery into test methods for particle size that were employed in prior litigations “implicates the confidential and highly confidential information” of the defendants in those suits. Takeda also contended that the Discovery Confidentiality Orders entered in those matters prohibit it from disclosing information designated confidential by those defendants.
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Plaintiff Synopsys, Inc. (“Synopsys”) filed a motion to compel defendant, ATopTech, to respond to interrogatories. ATopTech opposed the motion by arguing that it had already answered Synopsys’s Set One, Interrogatory Nos. 1-5, which contained at least 21 discrete subparts. ATopTech therefore contended that it was “not required to respond to any of the interrogatories in Set Two, Interrogatory Nos. 6-25, because the Set Two interrogatories also contain discrete subparts, and even responding to Interrogatory No. 6 would require ATopTech to exceed the 25 interrogatory limit under Federal Rule of Civil Procedure 33(a)(1).”

The district court began its analysis by noting that “[p]atent cases present unique challenges with respect to the application of Rule 33’s numerical limit on interrogatories. A circuit judge for the Federal Circuit, sitting as the district court in a patent case, recently devoted an entire opinion to the issue of what constitutes a ‘discrete subpart’ for purposes of Rule 33(a)(1). See Erfindergemeinschaft Uropep GbR v. Eli Lilly & Co., 315 F.R.D. 191 (E.D. Tex. 2016).
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The plaintiff, Chrimar Systems Inc. and Chrimar (“Chrimar”) filed a motion to compel an additional deposition of Defendant D-Link Systems, Inc.’s (“D-Link”) corporate representative, William C. Brown. Chrimar previously took the deposition of D-Link’s corporate representative, pursuant to Federal Rule of Civil Procedure 30(b)(6).

After the deposition concluded, Mr. Brown supplied an errata sheet, correcting numerous portions of his deposition testimony pursuant to Federal Rule of Civil Procedure 30(e). In its motion, Chrimar contends that over 60 answers were materially altered and several answers were changed from “yes” to “no.” As a result, Chrimar moved the district court to compel “Mr. Brown for a second deposition in Dallas, Texas regarding the changes represented in his errata sheet.”
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The plaintiff filed a complaint against the defendant for patent infringement, trade dress infringement and unfair competition, among other claims, based on the defendants’ marketing and selling of portable vaporizers. The plaintiff contended the portable vaporizers incorporated the plaintiff’s technology.

After serving discovery, the defendants filed a motion to compel and the plaintiff did not respond to the motion to compel. After the district court issued an order to show cause why the motion should not be granted, the plaintiff filed a response to the district court’s order stating that the lawyer’s assistant had left the firm “causing communication between the Plaintiff and opposing counsel to suffer.” Plaintiffs also reported that the parties had been attempting to settle, and Plaintiffs reasonably believed that the case would already have settled. On the same date, the Plaintiff moved for a thirty day extension of time to respond to the document requests, which the district court denied because the parties had not met and conferred.
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In this patent infringement action, the Defendant, GHP Group, Inc. (“GHP”), hired the Plaintiff’s, ProCom Heating, Inc. (“ProCom”), president during the litigation. The Plaintiff then filed a request for a temporary restraining order and a preliminary injunction to preclude the Defendant from discussing the case with the Plaintiff’s former president.

To analyze the request for preliminary injunction, the district court noted that Kirchner was President of ProCom from October 6, 2014, to September 1, 2016, that during his time as President of ProCom, he was highly involved in the litigation, and that Kirchner is now Vice President of New Channel Development for GHP.
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