Delaware IP Law Blog

It’s always a looming question in patent litigation – who goes first in responding to contention interrogatories and how much information must be provided? Special Master Bechtle addressed just this issue in XPoint Technologies, Inc. v. Intel Corporation, C.A. No. 09-26-SLR, Special Master Order 14 (D. Del. June 25, 2010). In this case, the parties simultaneously exchanged responses to contention interrogatories, however, defendant argued that while it provided full and complete answers to the contentions plaintiff propounded on it, that plaintiff only provided some information and then waited until after receipt of defendant’s contentions to use that information and then supplement its own responses. Id. at 2. First, Special Master Bechtle stated that although the court’s scheduling order required that responses to contention interrogatories be filed on or before a date certain, there was no requirement that the responses be exchanged simultaneously. Id. at 3. Second, the Special Master disagreed with the plaintiff’s “theory that use of the word ‘first’ and the other words by the court in ¶2(c)(3) of its scheduling order means that a party with Rule 33 interrogatory answering responsibility can answer those interrogatories by providing a partial response.” Id. at 5. Rule 33 requires that the interrogatory “be answered completely and truthfully” and “must use all of the information a party has at that time…that allows the interrogatory to be fully responded to. The plain meaning of the Rule does not allow a knowing half answer, or a knowing partial answer, or some sort of temporary response.” Id. at 6. In this case, however, the defendant did not show any harm by plaintiff’s failure to comply to warrant dismissal of the claims and issues concerning products other than those included in its original interrogatory response. Id. at 12.

XPoint Technologies, Inc. v. Intel Corporation, C.A. No. 09-26-SLR, Special Master Order 14 (D. Del. June 25, 2010).

Special Master Seitz recently decided Defendants’ Objections to Plaintiff’s Instructions Not to Answer Questions at Deposition of Plaintiff’s Rule 30(b)(6) Witness. One of the four issues decided involved counsel for Plaintiff instructing the witness not to answer questions regarding communications between himself and a U.S. attorney employed as General Counsel of another entity. Id. at 2. Plaintiff argued that the communication was protected by the attorney-client privilege or, alternatively, the community of interest privilege. Id. Defendants objected because there was no attorney-client relationship, the communications were not described with particularity as required under Fed. R. Civ. P. 26(b)(5)(A)(ii) and the community of interest privilege does not apply because there is not a direct parent-subsidiary relationship between plaintiff and the other entity. Id. Special Master Seitz found that the attorney-client privilege did not apply and that the Plaintiff and its “sister subsidiary” could not be treated as a single entity for purposes of the community of interest privilege. Id. at 3. Moreover, Special Master Seitz noted that the witness, as Plaintiff’s corporate representative at a 30(b)(6) deposition may have spoke to the attorney to gather facts regarding the issues in dispute, but “those facts cannot be protected from disclosure simply because a lawyer provides that information to a corporate witness.” Id. at 4.

Special Master Seitz also addressed objections to counsel for Plaintiff’s instruction that the witness not answer questions regarding conversations with an employee of its sister subsidiary, questions regarding communications with a Swiss attorney employed as in-house counsel at Plaintiff, and questions relating to the witness’s preparation to testify about Plaintiff’s asserted reasonable royalty. Id. at 4-9.

Inventio AG v. ThyssenKrupp Corporation, et al., C.A. No. 08-874-ER (D. Del. June 3, 2010)

Special Master Poppiti ordered defendant Chi Mei Optoelectronics Corporation to produce its worldwide sales data and technical information because such information is relevant to: "(i) inducing infringement liability; (ii) determining direct infringers; (iii) commercial success; and (iv) a reasonable royalty determination." Apeldyn Corporation v. AU Optronics Corporation et al., C.A. No. 08-568-SLR, Special Master's Report and Recommendation Regarding CMO's Production of Worldwide Sales and Technical Information for All VA Mode Products, at 2 (D. Del. Apr. 12, 2010). The Special Master further found that Chi Mei must produce the information with the following data fields: "date, customer, product, quantity, price and shipping destination." Id. This discovery was not limited to products known by the defendant to enter the United States, but instead covers all worldwide sales, regardless of whether the defendant knows where its products are going. Id. Defendant Chi Mei was required to produce this data starting 6 years prior to the filing of the Complaint to the present because such data could be instructive on such issues as commercial success. Id. Finally, Special Master Poppiti noted that he does not believe the law regarding inducing infringement has become "more restrictive" as argued by defendant Chi Mei, and the scope of such liability will not "dictate the scope of discovery." Id. at 3-4.

Apeldyn Corporation v. AU Optronics Corporation et al., C.A. No. 08-568-SLR, Special Master's Report and Recommendation Regarding CMO's Production of Worldwide Sales and Technical Information for All VA Mode Products (D. Del. Apr. 12, 2010).

Negotiating protective orders can be a mundane affair. But the D. Del. litigator may want to take notice of an attorneys-eyes-only provision recently fashioned by a special master appointed by distict judge Sue L. Robinson. In his report and recommendation, the special master adopted the following passage to address the parties' concerns over handling the use of confidential information during the course of both reexamination and separate prosecutions:

"No attorney or other individual who has access to the other parties' [confidential information] . . . shall be involved thereafter in the prosecution or drafting of patent applications, claim language for patent applications, or arguments made in support of patent applications, excluding a patent in reexamination [involving an] . . . opposing party in this case, before the [PTO or foreign agencies], and proceedings related to [the patent-in-suit] . . . . [A]ny individual's participation in reexamination proceedings(s) also is expressly conditioned on his/her/its legal obligation, established by Order of the Court, not to use in any way an opposing party's [confidential information] to draft new claims, or to amend previously existing claims, through the reexamination process. The above conditions and exclusions continue for a period of one year following the final resolution [of the case]."

Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. March 1, 2010) (Poppiti. S.M.).

In Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009), Honeywell filed a motion to dismiss Defendant InnoLux without prejudice under Fed. R. Civ. P. 41, while InnoLux, in addition to previously filing a motion for summary judgment, requested that InnoLux be dismissed from the litigation with prejudice. Id. at 1-2. Special Master Poppiti denied both requests for dismissal. Instead, Special Master Poppiti gave Honeywell two days to decide whether they would “either (1) accept dismissal of InnoLux with prejudice or (2) withdraw the Motion and proceed to a resolution of InnoLux’s pending Motion for Summary Judgment.” Id. at 2, 14. Special Master Poppiti reasoned that the factors evaluated to determine whether voluntary dismissal without prejudice would prejudice the dismissed defendant weighed in InnoLux’s favor. Id. at 6-12.

Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009)