In a recent Memorandum Order, Judge Sue L. Robinson resolved various disputes, including defendant’s motion for leave to amend with antitrust counterclaims, limitations on asserted claims and prior art, and whether a certain affidavit was protected under the work product doctrine. Quest Integrity USA, LLC v. Clean Harbors Industrial Services, Inc., C.A. Nos. 14-1482, 14-1483-SLR (D. Del. Nov. 1, 2016).
First, Judge Robinson granted defendant Cokebuster USA Inc.’s motion for leave to file Walker Process antitrust counterclaims, as it was “timely filed and sufficiently pled.” Id. at 1. Judge Robinson ruled, however, that “consistent with the court’s practice, the antitrust counterclaims are hereby bifurcated, to be tried (if at all) after the Federal Circuit has had the opportunity to review the merits of the patent litigation on appeal. Any issues related to discovery shall be addressed at that time.” Id. at 1-2.
Second, Judge Robinson denied plaintiff’s motion for reconsideration, in which plaintiff (“Quest”) complained that “placing limits on the number of claims it can assert through expert discovery and trial is prejudicial.” Id. at 2. Judge Robinson found that “by the time the claim limits were imposed . . . , Quest had sufficient information to choose representative claims: (a) fact discovery was substantially completed; (b) the court’s claim construction order had issued; and (c) Quest initiated the litigation with a preliminary injunction proceeding, giving the parties a substantial amount of information at the outset.” Id. at 2-3.
Third, Judge Robinson rejected Quest’s complaint, raised by way of emergency email, that “while it is complying with the above claim limits, defendants . . . have proposed more than the allowed three prior art references per claim.” Id. at 3. As Judge Robinson explained, the “fact that a single prior use/sale may require more than one document to prove its existence and substance does not mean that defendants are relying on more than a single allegedly anticipatory event.” Id. at 3.
Finally, Judge Robinson found that an “affidavit executed by a third party for submission to the Patent & Trademark Office (‘PTO’) in connection with the prosecution of the ‘874 patent” need not be produced. Id. at 4. As Judge Robinson explained, “[i]t appears . . . that the affidavit was never submitted to the PTO and was prepared by someone other than the affiant, presumably the attorneys.” Id. Judge Robinson therefore concluded that the affidavit was protected by the work product doctrine “as trial preparation materials, comparable to a draft report or the facts and opinions held by an expert not expected to be called as a witness at trial.” Id.