Articles Posted in Discovery

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In the Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., the Patent Owner moved for additional discovery to depose a third party witness whose declarations were relied upon by Petitioner in its Reply to the Patent Owner’s Response. The witness originally submitted declarations in reexamination proceedings involving a patent related to the challenged patent.

In its motion, the Patent Owner argued that the Garmin factors each strongly support granting the deposition. In particular, the Patent Owner argued that ” (Factor 1) there is credible, concrete evidence (more than a possibility and mere allegation) that the deposition of [the witness] will provide significant evidence regarding the non-obviousness of and teachings away from the invention in the [challenged] patent;” that (Factor 2) the deposition does not seek Petitioner’s litigation positions or their underlying basis;” that (Factor 3) the “Patent Owner has no ability to obtain information from [the witness] by other means;” that “(Factor 4) the deposition will follow common deposition protocols and easily understandable instructions;” and, that “(Factor 5) the deposition only requires production of [the witness] and is not overly burdensome.
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Plaintiff Dri-Steem Corporation (“Dri-Steem”) sought production of documents in the possession and control of the defednant’s parent company National Environmental Products, Ltd. (“National”), via its wholly-owned subsidiary NEP Inc., dba Neptronic (“NEP”). Dri-Steem asserted that NEP has custody and control of the requested documents because it can secure them from National to meet its business and litigation needs, as demonstrated by NEP’s ability to obtain highly confidential National documents and information at will.

Although NEP had already been given an opportunity to brief the issue, NEP did not dispute the relevancy of the requested discovery under Rule 26, nor did it provide any argument or evidence to dispute that it has access or control over these documents in order to meet its own business needs. Instead, NEP asserted that it does not have possession and control of the documents.
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In inter partes proceeding Apple Inc. v. Rensselaer Polytechnic Institute et al., IPR2014-00320, Petitioner Apple sought a second request for rehearing, before an expanded panel of the PTAB, on the Board’s decision not to institute an inter partes review of RPI’s U.S. Patent No. 7,177,798 (“the ‘778 Patent”). The Board held that Apple’s request was unauthorized and therefore ordered it expunged from the record of the proceeding.

On January 3, 2014, Apple initially filed its IPR petition seeking invalidity of the ‘798 Patent based three pieces of prior art that Apple alleged anticipated and/or rendered obvious certain claims of the ‘798 Patent. On April 17, 2014, RPI filed its preliminary response asserting that the Board should deny the petition just as it denied Apple’s first petition for inter partes review of the ‘798 Patent. In its preliminary response, RPI asserted that the Board already considered (and rejected) the same grounds and prior art that Apple now relies on in the second petition. Accordingly, RPI argued that the second petition should be denied because “[t]he Board denied the first petition [which included the same prior art asserted in the second petition] as to all challenged claims because Apple failed to establish that it would prevail in showing that even a single claim of the ‘798 Patent is unpatentable.”
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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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