Articles Posted in Discovery

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In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of 42.53(c) that the party calling the witness must initiate a conference with the Board at least five days before the deposition, the Board directed the parties to the following guidelines:

In the guidelines below, “party” refers to the party proffering the witness, and “opponent” refers to the party cross-examining the witness.
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The amended complaint filed by Gene Neal and Kennieth Neal alleged claims for patent infringement and violations of California state law for unfair competition and false advertising. The Defendants, pursuant to Rule 26(d), Federal Rules of Civil Procedure sought “an Order regarding the handling of discovery concerning Plaintiffs’ pre-filing investigation of Defendants’ products which Plaintiffs allege the asserted patents (see, e.g., Doc. No. 34 ¶ 17). The parties were unable to reach an agreement concerning the handling of discovery concerning Plaintiffs’ pre-filing investigation after numerous meet and confers and exchange of correspondence. Instead of rushing to the Court to file a motion to compel, Defendants’ proposal strikes the right balance between discovery of this relevant information and avoidance of unnecessary litigation costs and therefore Defendants believe that the Court should enter ” an appropriate order.
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In the ongoing patent battle between Samsung and Apple, Samsung, trying to turn the tables on Apple, filed a motion for sanctions based on Apple’s disclosure of confidential information. The court had previously sanctioned Samsung for disclosing confidential information.

Prior to addressing the specific Samsung motion, the court went through the factual background of the prior ruling sanctioning Samsung. “On June 4, 2013, Nokia and Samsung met to continue their ongoing negotiations for a license deal. At that meeting, Dr. Seungho Ahn of Samsung told Paul Melin of Nokia that he knew the terms of Nokia’s license agreement with Apple; he then recited the terms and indicated that his lawyers had told him what they were. As Dr. Ahn put it, ‘all information leaks.'”
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Plaintiff Glas-Weld Systems, Inc., filed a patent infringement and unfair competition action against defendants Michael P. Boyle, dba Surface Dynamix, and Christopher Boyle. Plaintiff moved for partial summary judgment and to supplement the record, and Christopher Boyle moved to compel depositions of plaintiff’s expert. The district court stayed the partial summary judgment motion pending the ruling on claim construction and ordered that once the court construes the patent claims, the parties could supplement their briefing in support of and in opposition to the motion for partial summary judgment.
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Plaintiffs Scott Clare, Neil Long, and Innovative Truck Storage, Inc. filed a patent infringement action against Defendant Chrysler Group, LLC, arguing that Defendant infringed their patent for hidden pick up truck bed storage. Chrysler Group filed a motion to strike Plaintiffs’ errata sheets from depositions, arguing that Plaintiffs were attempting to materially alter, through the errata sheets, the witnesses’ deposition testimony.

As explained by the district court, Federal Rule of Civil Procedure 30(e) contemplates changing a deposition transcript in “form or substance.” Courts have placed different burdens on a party attempting to change a deposition in substance and have different views of Rule 30(e).
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HTC Corporation and HTC America, Inc. (“HTC”) moved for a finding that this patent infringement action is “exceptional” under the Patent Act’s fee-shifting provision which authorizes the award of attorney fees and costs to prevailing parties in “exceptional cases.” 35 U.S.C. § 285.

The district court had previously found that the patents in suit were unenforceable due to inequitable conduct before the patent office. Intellect Wireless, Inc., v. HTC Corp., 910 F. Supp. 2d 1056 (N.D. Ill. 2012), aff’d, 732 F.3d 1339 (Fed. Cir. 2013). The prior rulings establish prima facie support for a finding of an exceptional case. See Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1329 (Fed. Cir. 2003) (quoting Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1380 (Fed. Cir. 2001)). As a result, the district court had granted HTC’s request for additional limited document discovery was granted.
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After the district court granted a motion to compel in which it overruled the defendants’ objections and ordered the defendants to provide complete responses to the interrogatories and to produce all responsive documents, the defendants provided supplemental responses but renewed the overruled objections and asserted additional objections that were not previously made. The district court found that renewing overruled objections and asserting new objections not previously made was disingenuous, but did note that the supplemental answers were comprehensive.

The district court found that there were still problems with the supplemental responses, including that “the defendants responded to requests to identify documents supporting interrogatory answers by referring” to “the documents already in disclosure, as well as those which will be provided by supplementation as discovery in this case progresses.” The district court found this inadequate. “The defendants’ response fails either to identify adequately the documents to be examined or to segregate and produce, on an interrogatory-by-interrogatory basis, the responsive document and produce them for inspection.”
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In the patent infringement action between Cobra International, Inc. (“Cobra”) and BCNY International, Inc. (“BCNY”), BCNY filed a motion to compel several documents, including a litigation funding agreement. Cobra opposed the motion asserting that the person funding the litigation was not making decisions regarding the lawsuit and was not interfering with the prosecution of the litigation. BCNY asserted that it was entitled to the document to determine if the patent had transferred.

As explained by the district court, “[i]n response to request for production number 32, which pertains to the litigation funding agreement, Mr. Eavzan stated in his declaration that ‘Cobra continues to own the ‘858 patent. The person or entity funding Cobra’s prosecution of the lawsuit against [BCNY] is not making the decisions for Cobra regarding the above-styled lawsuit, is not interfering with the independence and professional judgment of Cobra’s counsel relating to the above-styled lawsuit, and is not receiving confidential communications between Cobra and its counsel relating to the above-styled lawsuit.'”
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Porto Technology Co., LTD (“Porto”) filed a patent infringement action against Cellco Partnership d/b/a Verizon Wireless (“Verizon”). During the litigation, Verizon moved to compel communications between two of the plaintiffs, who are brothers, and counsel. As explained by the district court, the court began by looking at “communications between Ji-Soo Lee, Heung-Soo Lee (“Lee Brothers”) and counsel. Obviously, any communications between Plaintiff Ji-Soo Lee and his counsel pertaining to this or directly related infringement litigation is covered by attorney-client privilege. Communications between Heung-Soo Lee and his counsel do not appear to be similarly cloaked. Any privilege that existed was waived by Heung-Soo Lee by voluntarily disclosing communications concerning this — and related litigation — with both the Court and the Defendant, Verizon. Over 100 unsolicited documents pertaining to the ‘518 and ‘413 patents have been received and retained by the Clerk of this Court.”
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In this patent infringement action, Apple moved to compel production from Emblaze based on search terms that Apple provided. Emblaze opposed the motion, arguing that it had produced all responsive documents, that Apple’s requests were overbroad and that using Apple’s search terms would be unduly burdensome.

The court began its opinion by noting that “[w]hen decrying the burden imposed by the document demands of an adversary, parties would be wise to follow Hemmingway’s advice to ‘show the readers everything, tell them nothing.’ Unfortunately, in the patent infringement case, [Emblaze] appears to have ignored Papa’s guidance.”
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