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.