Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (D. Mass. 19-cv-11193).

Judge Talwani denied Ice River’s motion to compel additional information relating to the conception, diligence and reduction to practice the claimed invention.  Ice River asserted that the responses and documents provided failed to explain what transpired in the eight months between conception and reduction to practice.  Judge Talwani indicated that the response answered the question posed by the interrogatory, and noted that Plastipak would be limited to the evidence disclosed in its responses at trial.  She further noted that, where Plastipak’s counsel certified that they had performed a reasonably diligent search and Ice River can point to nothing more than a suspicion that unproduced documents exists, Ice River is not entitled to an order compelling more.

Judge Talwani denied Ice River’s motion to compel documents that were produced by a third party in an earlier litigation with Plastipak and were deemed confidential under a protective order in that case.  She had previously entered a protective order shielding these documents from production but requiring Plastipak to identify all such documents in a privilege log.  Judge Talwani determined that Ice River would have to subpoena the third party, who could then move to quash, and a determination could then be made as to the need for their production. 

Judge Talwani denied Ice River’s motion to compel the production of all prior art in Plastipak’s possession.  Ice River had requested all “material” prior art, and Plastipak had produced only references cited on the face of the subject patent, taking the position that anything not cited to the PTO was not material, particularly with respect to confidential materials in its possession. While Judge Talwani did not find this interpretation of the request to be unreasonable, she noted that non-public materials can be material at least with respect to obviousness.  Accordingly, while not granting Ice River’s motion, she allowed Ice River to rephrase the request to make clear what information it sought.  Judge Talwani had earlier struck Ice River’s invalidity contentions, finding them non-compliant with Local Rule 16.6.  Ice River had cited 163 prior art references and more than 3000 exemplary obviousness combinations, but had not provided claim charts for roughly half of the references and not articulating specific reasons to make the obviousness combinations.  Because Ice River had relied on the scheduling order, which it contended modified the Local Rule, Judge Talwani allowed Ice River leave to refile its disclosures.  Given that the invalidity contentions remained pending, Ice River would not be prejudiced by the delay in the production of any additional art.

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