Articles Posted in Discovery

Published on:

by

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.'”
Continue reading

Published on:

by

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.”
Continue reading

Published on:

by

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.”
Continue reading

Published on:

by

In this patent infringement action between Industrial Technology Research Institute (“ITRI”) and LG Corporation (“LG”), LG moved to compel ITRI to make a Taiwanese citizen, who was also the inventor of the patent-in-suit, but no longer an employee of ITRI, to sit for a deposition in the United States. The district court noted that “Courts have previously been called upon to address disputes over whether an agreement in which a non-U.S. resident inventor assigns patent rights to a business entity that subsequently becomes involved in patent enforcement litigation obligates the inventor to appear in the United States for a deposition in connection with the patent litigation.”

Here, the language of the assignment agreement provided: ” [Sheen] hereby agrees to execute any documents that legally may be required in connection with the filing, prosecution and maintenance of said application or any other patent application(s) in the United States for said invention . . . . [Sheen] also agrees, without further consideration and at [ITRI’s] expense, to identify and communicate to [ITRI] at [ITRI’s] request documents and information concerning the invention that are within [Sheen’s] possession or control, and to provide further assurances and testimony on behalf of [ITRI] that lawfully may be required of [Sheen] in respect of [sic] the prosecution, maintenance and defense of any patent application or patent encompassed within the terms of this instrument.”
Continue reading

Published on:

by

The district court began its opinion with a simple direction to the parties: “Stop the shenanigans at depositions. Period.” The district court went on to explain that “[t]his Court has no patience for behavior like that exhibited at the deposition . . . It is unnecessary and unacceptable.”

Showing that videotape evidence may be the best evidence of what occurs at a deposition, the district court also wanted to know if there was a videotape in existence: “Is there a videotape of the Batten deposition? If so, please provide it to the Court immediately on a CD-ROM/DVD.”
Continue reading

Published on:

by

In one of several patent battles that Apple is waging across the country against Google’s Android operating system, Motorola moved to exclude the testimony of one of the inventors of the patent-in-suit. As part of determining this motion, the district court, Judge Posner, requested that Apple answer several questions in camera, including why the inventor retained certain counsel and under what circumstances the inventor retained the additional counsel provided by Apple.
Continue reading

Published on:

by

Apple noticed the depositions of several high-ranking employees at Samsung and moved to compel their depositions. As the district court explained, “Apple argues that it entitled to these depositions because each SEC witness has unique, firsthand, non-repetitive knowledge of facts and events central to this litigation. The SEC witnesses acted in their authoritative, decision making capacities regarding certain Samsung policies that directed other employees to consider and compare Apple products when designing or re-designing the accused products or features. The STA witnesses are personally knowledgeable of or responsible for development, marketing, and finance decisions relating to the U.S. market for the accused products. Because Samsung has not produced any discovery from these witnesses, all of the evidence it relies upon has been pieced together from other witness sources.”
Continue reading

Published on:

by

Plaintiff moved to compel the production of documents that were listed on the defendants’ privilege logs. The district court explained the disputed documents as follows: “The disputed documents at issue were either authored by Ablation Frontiers, Inc.’s (“AFI”) outside counsel for AFI, or Medtronic’s outside counsel for Medtronic. The documents were subsequently turned over to each respective party by the other during Medtronic’s negotiations to acquire all of AFI’s products and related intellectual property.”
Continue reading

Published on:

by

Samsung moved to shorten time for briefing and a hearing on a motion pertaining to an expert witness, while just a few days earlier Apple had filed a motion to shorten time on its motion relating to the production of foreign-language and other documents in advance of depositions. The court noted that a little more than two weeks earlier, both parties moved to shorten time on a total of nine discovery motions and in the past four months, the parties submitted eighteen discovery motions, all on shortened time.
Continue reading

Published on:

by

Plaintiff Gerber Scientific International (“Gerber”) filed a patent infringement action against Roland DGA Corporation (“Roland”), asserting that Roland infringed Gerber’s patent covering a method and apparatus for computerized graphic production. Roland filed a motion for protective order with respect to the depositions of three of its Japanese employees and its president.

In its motion for protective order, Roland argued that the depositions of its three Japanese employees should take place in Japan and that the deposition of its president should not take place at all because he is a senior executive with no unique or specialized knowledge relevant to the case. With respect to the employees in Japan, Roland argued that witnesses should be deposed near their residence or their place of business and both parties could equally bear the costs, as such Gerber could not satisfy its burden of proving that circumstances exist that warrant taking the depositions in the United States.
Continue reading

Contact Information

California Consumer Privacy Act (CCPA) Opt-Out IconYour Privacy Choices Cookie Policy Manage Cookies

Please do not include any confidential or sensitive information in a contact form, text message, or voicemail. The contact form sends information by non-encrypted email, which is not secure. Submitting a contact form, sending a text message, making a phone call, or leaving a voicemail does not create an attorney-client relationship.

Copyright © 2016 – 2026, Jeffer Mangels & Mitchell LLP
JUSTIA Law Firm Blog Design