Articles Posted in Discovery

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In the ongoing action between Apple and Samsung, Apple filed a motion for a protective order seeking to prohibit one of Samsung’s attorneys from participating in any further depositions. Alternatively, Apple sought an order restricting the attorney from engaging in particularly abusive deposition acts, including belligerent and insulting treatment of witnesses, repeated interruptions, unilaterally terminating a deposition, uncivil treatment of opposing counsel, engaging in lengthy colloquy on the record, among other things.

Samsung objected to the order and denied that any in appropriate conduct had occurred at all Samsung also noted that Apple’s witnesses were Apple’s patent lawyers and agents who are accustomed to the adversarial process.
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The ongoing patent battles between Apple and Samsung continue to pick up speed and show no signs of slowing down anytime soon. During the summer, Apple filed a motion for a preliminary injunction on certain of its patents and the district court ordered limited initial discovery for the topics raised by the preliminary injunction motion. The hearing on the motion is set for October 13, 2011.

As part of the discovery, Apple sought documents pertaining to the comparison of any Apple product or feature, the redesign of the Galaxy Tab following the release of the iPad 2, consumer surveys regarding the products at issue, marketing and consumer confusion. Apple also sought a deposition of Samsung pursuant to Fed.R.Civ.P. 30(b)(6) on the same topics as the documents requested. Samsung resisted discovery on certain of these issues and Apple moved to compel.
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In a recent ruling from the United States District Court for the Sothern District of California, a Magistrate Judge allowed discovery to take place on an inequitable conduct defense after the discovery cut-off. The defendant propounded document requests a little more than 30 days before the discovery cut-off and plaintiff produced documents in response to those requests the day before the discovery cut-off. On the last day for discovery, defendant took the deposition of the inventor of the patent-in-suit.

Based on information learned during the deposition and documents produced by plaintiff at the close of discovery, defendant contended that the plaintiff made material misrepresentations to the Patent Office to overcome a section 112 rejection. Based on that contention, defendant sought leave to amend its answer, assert an affirmative defense of inequitable conduct and to pursue additional discovery directed toward that defense.
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Plaintiffs filed a lawsuit for patent infringement, unfair competition and breach of fiduciary duty against several defendants, including AIM Sports. Plaintiffs design, develop and distribute firearm related tools, accessories and sporting optics. Defendants and plaintiffs had a business relationship that permitted Defendants to access trade secret information that belonged to the plaintiffs, including trade secrets regarding manufacturing, product development and plaintiffs’ patented products. After the plaintiffs sued defendants for patent infringement and settled the lawsuit, plaintiffs discovered that defendants had formed a new company that continued to infringe the patent and violated the settlement agreement.

After both parties filed motions to compel the production of documents, the Magistrate Judge granted both motions in part and denied both motions in part. Plaintiffs’ motion with respect to two of the requests was denied because the defendants represented in declarations signed under penalty of perjury that they had no responsive documents. Plaintiffs then conducted fact witness depositions and alleged, after conducting these depositions, that defendants had withheld responsive documents and that declarations filed with the district court were false. At this point, the Magistrate Judge granted plaintiffs’ motion, ordered the production of the responsive documents and ordered defendants to file new declarations. When the defendants failed to produce the financial and design documents sought and filed no new declarations, the plaintiffs moved for monetary sanctions and evidentiary sanctions.
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In this patent infringement suit, the parties were unable to agree upon a written Electronically Stored Information (“ESI”) protocol. Before the protocol was executed, the district court ordered the parties to comply with all scheduling orders and production deadliness regardless of whether they had agreed upon a final written agreement regarding the search and production of ESI. The parties subsequently disagreed over the scope of the document production and whether the document production was deficient.

After the district court intervened in the process of finalizing the written ESI protocol, the parties finally executed a written ESI protocol. A dispute then arose between the parties over the production of ESI according to the protocol and the plaintiff moved to compel.
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A recent decision from the Central District of California held that a deposition of the author of source code, or similar engineers, cannot be withheld until the producing party, i.e., the party providing the witness, is satisfied that the pinpoint infringement contentions are sufficient. In so holding, the Court indicated that such a determination typically is fact-specific and that given the circumstances in this case the deposition was relevant and not an abuse of the discovery process.

In this instant case, the defendant took the position that until the plaintiff provided sufficient pinpoint citations to the source code, it would not permit the deposition of its principal systems architect over its source code. The defendant expressed its concern that, absent such pinpoint citations, the plaintiff would use the deposition as a “fishing expedition.” The plaintiff, on the other hand, argued that it could not supplement its infringement contentions to provide pinpoint citations to the source code until it took the deposition. Both sides supported their positions with expert testimony. Thus, the Court was faced with the proverbial “chicken and egg question.”
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In a patent infringement action between Kimberly-Clark (“K-C”) and First Quality Baby Products (“First Quality”) pending in the United States District Court for the Eastern District of Wisconsin, K-C filed a motion to compel First Quality to produce sales evaluation files relating to products accused of infringement. K-C asserted that the files were necessary because they might lead to admissible evidence regarding damage claims for a reasonable royalty and for lost profits due to price erosion. First Quality admitted in a deposition that the sales evaluation files contain information that is used in setting prices.

In analyzing whether the files should be produced, the district court began by stating that “[i]n calculating a reasonable royalty courts consider, among other things, the ‘infringer’s anticipated profit from the use of the patented invention.'” The district court found that First Quality’s sales evaluation files contain contribution margin analysis, which is a profitability measure used by First Quality to set prices. As a result, the district court noted that “it logically follows that First Quality’s sales evaluation files should be produced as they may aid in any calculation of reasonable royalties.”
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In the ongoing patent battle between Google and Oracle over aspects of the Android operating system, Oracle filed a motion seeking to take four additional depositions, including Google CEO, Larry Page. Each of these depositions would be over the ten deposition limit established by Fed.R.Civ.P. 30. Google opposed the request on the ground that these depositions would not only be over the ten deposition limit but also that Oracle was seeking “apex” depositions from the highest level of executives at Google. The court sided with Oracle.

With respect to Mr. Page’s deposition, the court noted that “Rule 30 of the Federal Rules of Civil Procedure requires a party wishing to take more than ten depositions without consent of other parties to obtain leave from the Court to proceed.” The court also noted Fed.R.Civ.P. 26(b)’s requirement that “[w]hen evaluating a party’s request to expand discovery limitations, the court must ensure that the discovery sought is ‘relevant to[the] party’s claim[s] or defense[s]’ and not unreasonably cumulative, duplicative, or burdensome.”
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In a recent case from the United States District Court for the Northern District of California, the district court granted a defendant’s motion to compel an interrogatory response where the infringement contentions were inadequate to put the defendant on notice of the alleged infringement. The infringement contentions relied on a number of screenshot that referred to a specific configuration file. The defendant argued that the screenshots alone failed to explain how the products as depicted allegedly met the limitations of the asserted claims and that the citations to the documents accompanying the infringement contentions also did not supply the missing information.

The defendant served an interrogatory seeking the missing information. The plaintiff refused to respond to any portion of the interrogatory, asserting that its amended infringement contentions contained screenshots that showed the products at each stage of the infringing processes and that the claim charts also contained a detailed narrative and citations to show the infringing processes. The defendant disagreed, arguing that neither the screenshots nor the narrative disclosed the particular configurations of the accused products and were meaningless without an understanding of the custom configuration of the accused products that were used to produce the screenshots.
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In a recent case from the Central District of California, the court ordered the defendant to produce the complete source code for an allegedly infringing product during a deposition. The plaintiff noticed the depositions of certain engineers from the defendant and requested that the defendant provide a complete copy of the source code on a computer during the deposition. The defendant objected on two grounds.

The defendant first argued that such a request and corresponding procedure would violate the protective order entered by the court. The defendant also argued that the proposals offered by the plaintiff were insufficient to maintain the security and integrity of the source code for the allegedly infringing product. The court disagreed with both of defendant’s objections and ordered the production of the source code.
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