Judge Stark recently considered Heartland’s motion to compel discovery on the subject of why Kraft and its agents failed to disclose the Ackilli reference to the PTO during prosecution of one of the patents-in-suit. Kraft Food Group Brands, LLC v. TC Heartland, LLC, et al., No. 14-028-LPS-CJB (D. Del. July 25, 2016). Judge Stark granted the motion, finding that Kraft intentionally waived attorney-client privilege when it responded to Heartland’s interrogatory, asking for facts of certain individuals’ awareness of the Ackilli reference and why he or she did not disclose the reference to the PTO, with information about what “what a single Kraft patent attorney [Ms. Mitchell] knew about Ackilli and why she did not disclose the application to the Patent Office.” Id. at 1-3. Judge Stark ordered the parties to submit additional briefs on the scope of such waiver as to other individuals:
given that Kraft has indicated that it may defend itself against Heartland’s inequitable conduct allegations by arguing that Kraft or its agents were unaware that Ackilli should have been disclosed, Kraft’s decision to put in the record evidence to support this view constitutes waiver of information about other individuals who may have had a different perspective.
Id. at 3.
As to scope, Heartland argued that the waiver should extend to all the subject matter of the interrogatory, including for the fourteen other individuals identified. Id. at 4. Kraft, on the other hand, argued that it was inappropriate to extend the waiver beyond what was already disclosed because Kraft was not relying on advice of counsel to defend against Heartland’s inequitable conduct claims. Id. Judge Stark agreed with Heartland:
Although Kraft’s disclosure is related exclusively to information about Ms. Mitchell’s state of mind, the Court is not persuaded that Kraft’s disclosure puts only her state of mind “at issue” in this case. Kraft disclosed information about Ms. Mitchell in response to an interrogatory directed to Kraft and seeking information about what anyone “who was substantively involved in the preparation or prosecution of the applications leading to the ‘299 patent” knew about Ackilli, and why any such individuals did not disclose Ackilli to the USPTO. Through Interrogatory No. 12, Heartland sought information regarding what Kraft as a whole knew about Ackilli, when it acquired that knowledge, and why Kraft did not disclose Ackilli to the PTO. By the time Kraft responded to Interrogatory No. 12, Heartland had already filed a motion for leave to serve an Amended Answer alleging inequitable conduct, citing in its motion Kraft’s failure to disclose Ackilli as the basis for its inequitable conduct claims. Given this context, Kraft cannot plausibly argue that, at the time it responded to the interrogatory with privileged information, it was unaware that the information regarding Ms. Mitchell would be relevant to Heartland’s claim that Kraft engaged in inequitable conduct by failing to disclose Ackilli to the USPTO.
Id.at 5 (emphasis in original). Therefore, Judge Stark held that Kraft’s waiver with respect to Ms. Mitchell extended to “all information relevant to whether her failure to disclose Ackilli constitutes inequitable conduct by Kraft, including information about (1) her awareness of Ackilli and (2) her reasons for opting not to disclose Ackilli to the patent office.” Id. at 6. Furthermore, Judge Stark held that, out of fairness, Kraft’s waiver also must extend to whether the other individuals listed in Interrogatory No. 12 were aware of Ackilli and, if so, why they did not disclose the reference to the PTO.” Id. Judge Stark declined to extend the waiver to commercial embodiments of Ackilli as those embodiments were not mentioned in the interrogatory or described as a basis for Heartland’s inequitable conduct claim. Id. at 8.