Patent Lawyer Blog

The Defendant, International Paper Company (“IPC”) filed an application for leave to file under seal a settlement agreement between Plaintiff and IPC’s co­defendants and portions of IPC’s motion to dismiss that quoted the settlement agreement.

To analyze whether the settlement agreement and the quoted portions should be filed under seal, the district court noted that: “The public has a general right to inspect and copy judicial documents so that it can monitor how public agencies work.” See Kamakana v. City & County of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006) (citing Nixon v. Warner Commc’ns, Inc., 435 U.S. 589, 597 & n.7, 598 (1978)).

The district court explained that “[t]here is a strong presumption of public access to documents falling outside a narrow class of documents—such as grand jury transcripts and warrant materials in pending pre-indictment investigations—that have ‘traditionally been kept secret for important policy reasons.’ See id. To overcome the strong presumption of public access to judicial documents, a party seeking to seal such documents in dispositive motions must ‘articulate[] compelling reasons supported by specific factual findings that outweigh the general history of access and the public policies favoring disclosure, such as the public interest in understanding the judicial process.’ Id. at 1178-79 (internal citations and quotation marks omitted). For non-dispositive motions, the party must provide good cause to seal. See Ctr. For Auto Safety v. Chrysler Grp., LLC, 809 F.3d 1092, 1096 (9th Cir. 2016). “Good cause is established on a showing that disclosure will work a clearly defined and serious injury to the party seeking closure. The injury must be shown with specificity.” Pansy v. Borough of Stroudsburg, 23 F.3d 772, 786 (3d Cir. 1994) (quoting Publicker Indus., Inc. v. Cohen, 733 F.2d 1059, 1071 (3d Cir. 1984)). Continue reading

In this patent dispute, Apple sought an order requiring that 11 depositions of Apple employees, noticed by Plaintiffs Masimo Corporation and Cercacor Laboratories, Inc. (“Plaintiffs”) for May and June 2021 to proceed in-person, in San Francisco, California, instead take place remotely by videoconference under Rule 30(b)(4) of the Federal Rules of Civil Procedure due to the continuing COVID-19 pandemic.

Although Apple did not provide declarations from the deponents or evidence upon which to conclude that the deponents themselves had concerns about appearing in-person for depositions or were only required to work remotely for the foreseeable future, due to the seriousness of the issues raised, the district court did not deny the request outright but instead provided Apple with an opportunity to make an appropriate showing.  As part of this showing, the district court required Apple’s counsel to submit a declaration that “identifies by name each of the 11 Apple employee-deponents who are the subject of the Application, and, for each deponent, attests that counsel has either spoken with or received an electronic communication directly from each such deponent, and answers, for each such deponent based on such communication: (a) whether the deponent states the deponent uncomfortable proceeding with an in-person deposition due to COVID-19; (b) whether the deponent has, for the preceding 30 days, worked for Apple remotely-only; (c) whether the deponent has attended any in-person work-related meeting during the preceding 30 days; and (d) whether the deponent has been advised that Apple requires the deponent to work remotely for the next 60 days. Confirmation of items (b), (c), and (d) are included based on the arguments and assertions made by Apple in the Application.” Continue reading

The district court previously granted summary judgment in favor of the plaintiff, Red Carpet Studio (“Red Carpet”), finding that Defendants Midwest Trading Group Inc. (“MTG”), Walgreen Company and CVS Pharmacy Inc. infringed the patent-in-suit. The parties agreed that two issues remained: (1) determining the relevant “article of manufacture,” and (2) calculating the “total profit” on that article of manufacture. Red Carpet argued that the district court should decide the second issue without a jury because it seeks disgorgement of profits, which Red Carpet maintained is an equitable remedy with no right to a jury trial.

As the district court explained, determining a damages award under 35 U.S.C. § 289 “involves two steps. First, identify the ‘article of manufacture’ to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture.” Samsung Elecs. Co. v. Apple Inc., 137 S.Ct. 429, 434, 196 L.Ed. 2d 363 (2016). The district court acknowledged that “neither the Court nor the parties were able to find authority which directly resolves the question of whether a jury or a judge must make this determination,” but concluded that “there [is] sample support for the conclusion that a claim for damages under § 289 is one for equitable relief.” Continue reading

Plaintiff Global Tubing, LLC (“Global”) filed a motion to compel production of documents withheld as privileged by Defendant Tenaris Coiled Tubes, LLC (“Tenaris”). As explained by the district court, in its motion to compel, Global claimed that Tenaris obtained its patents by deceiving the Patent and Trademark Office (“PTO”), withholding prior art in prosecuting the main patent, and then altering and withholding a key piece of the prior art. Global contended that Tenaris’ actions withholding the material from the PTO amounted to fraud, vitiating any attorney-client privilege under the crime-fraud exception. Global sought to compel documents withheld as privilege that were in the possession of the prosecution counsel relating to the prior art materials and those relating to inventorship of the three patents at issue. Global also sought to compel production of an affidavit submitted in support of the patent that Tenaris clawed back asserting that the privilege, if any, was waived and the affidavit contained direct evidence of Tenaris’ fraud on the PTO, vitiating any privilege under the crime-fraud exception to the attorney-client privilege.

In support of the motion to compel the affidavit, Global presented evidence of Tenaris’ knowledge of the prior art materials, the inventors’ review and discussion of those materials and the overlapping specifications with the patent-in-suit. As explained further by the district court, Global also showed that Tenaris tendered the materials to prosecuting counsel, and counsel reorganized the material, removing the title page, divider pages, and entire specifications section, which purportedly contained information on overlapping chemistries, particularly significant in light of the PTO’s previous rejection of the patent based on obviousness that included overlapping chemistries. Continue reading

In this patent infringement action, the plaintiff, Payrange, sought to withhold as privileged a PowerPoint presentation (the “Proposal”) prepared by its current litigation counsel, Wilson Sonsini. Prior to representing Payrange, but in the hope that it would be retained, Wilson Sonsini prepared the presentation and then forwarded it to Payrange. Payrange asserted that the Proposal was a privileged communication protected by both the attorney-client and work-product privileges, that it was inadvertently produced, and that it was clawed back promptly when Defendants raised their intention to rely on the presentation in a filing.

As explained by the district court, the Proposal primarily contains background regarding Wilson Sonsini’s litigation experience, its experience in the intellectual property and patent space, information regarding attorney experience, and a proposed fee arrangement. Additionally, the Proposal contains a comparison of possible venue districts for this litigation. On the executive summary page, the Proposal recommends a preference for one of those venues, and, finally, also on the executive summary page, the Proposal offers a suggestion that Payrange discourage other companies from working with the Defendants. Continue reading