MedIdea sued Depuy for patent infringement connected with total knee replacement prostheses in the Northern District of Illinois. Following the TC Heartland decision, the case was transferred to Massachusetts, where it has undergone contentious discovery. Judge Sorokin denied MedIdea’s request for detailed royalty reports, in light of MedIdea’s expert acknowledging that documents already produced provided sufficient information to calculate damages. He also refused to compel production, at no cost to MedIdea, of different sizes of the accused products, finding no authority to require the provision of thousands of dollars of products for free when the sole difference was the size. Judge Sorokin also denied MedIdea’s demand that DePuy produce a 30(b)(6) witness t otestify on the nature of DePuy’s search for documents and choice of keywords for searching electronic records, in light of DePuy’s statement that only outside counsel participated in that task and in light of MedIdea’s delay of eight months form the time when the schedule required the parties to meet and confer on electronic discovery issues. Finally, Judge Sorokin granted DePuy’s motion to quash subpoenas to two inventors of prior art identified by Depuy and that served as the basis for institution of an IPR proceeding. Judge Sorokin noted that MedIdea had been obliged to identify any relevant witnesses in its initial disclosures more than a year prior, and had failed to seek to supplement its disclosures. Moreover, the reference was more than ten years old, and was but one of many references cited by DePuy, but was the sole reference on which the IPR was granted, creating an inference that MedIdea was seeking their depositions in the litigation to circumvent rules that would prohibit such in the IPR proceeding itself.
Judge Saylor granted in part SiOnyx’s renewed motion to compel in this patent infringement, correction of inventorship, and breach of contract case. SiOnyx had entered into an agreement with Hamamatsu to explore a possible business relationship surrounding laser-textured infrared-sensing silicon photonic devices. The business relationship never came to fruition, and Hamamatsu subsequently applied for patents directed to similar technology. A discovery dispute arose over whether SiOnyx could obtain information on products that were textured by some means other than a laser, with Hamamatsu taking the position that the infringement contentions did not accuse such products and the former SiOnyx founder now working for Hamamatsu did not contribute to the invention of non-laser-textured devices. SiOnyx’s initial motion to compel was denied without prejudice, because at the time there was insufficient evidence to support a charge of infringement; since then, SiOnyx was able to develop sufficient information that the products infringe, and that an offer for sale of the accused products has been made that, if accepted, would generate significant sales. Judge Saylor found that SiOnyx’s evidence related to the breach of contract and use of confidential information claims (that the Hamamatsu engineers who were exposed to this information developed the non-laser-textured products) was insufficient to overcome the significant differences in the resulting textures that negate an inference that they were developed using SiOnyx’s confidential information. Because the motion was granted only with respect to the patent claims, Hamamatsu was compelled to produce information relating only to U.S. sales or imports.
In a turn from his response to a previous similar motion, Judge Stearns denied defendant Johns Hopkins Hospital’s motion for costs for responding to a third party subpoena from NeuroGrafix, finding the costs incurred were not unreasonable given that the subpoena was quashed and Johns Hopkins did not have to fully respond, and the subpoena was not found to be vexatious.
The Crane/Rolling Optics case continues rolling towards trial, with Judge Sorokin excluding proposed testimony from Rolling Optics’ technical expert. The court construed claim terms in February 2016, and the parties briefed and argued summary judgment motions based on the Court’s constructions. Rolling Optics never sought reconsideration of the construction of a particular term, “shaped posts,” which had been construed to mean “shaped as pieces fixed in an upright position,” but argued at summary judgment that this construction precluded portions that were wider than they were tall. Judge Sorokin rejected this secondary construction and noted at the time that Rolling Optics had failed to contend that the Court’s actual construction required any further discovery. In February, Rolling Optics indicated it intended to secure a supplemental expert report to address the Court’s shaped post ruling at summary judgment, but failed to seek an extension of the expert discovery period, to make the expert available for deposition, to explain how such a supplemental disclosure might impact the trial date, or identify the portion of the expert’s initial report that required amendment. Judge Sorokin ruled on February 13 that no further expert discovery would be allowed, effectively rejecting the proposed supplemental disclosure. Rolling Optics nevertheless indicated at the final pretrial conference that it intended to elicit testimony from the supplemental disclosure, which Crane promptly opposed. In addition the reasons laid forth above, Judge Sorokin noted that the supplemental declaration’s stated understanding of the construction of “shaped posts” from the summary judgment order was “so plainly wrong as to render his entire Second Supplemental Declaration inadmissible as unreliable, irrelevant, and posing too great a risk of confusion,” and the proposed testimony was excluded.
Judge Kelley continued to hammer at the litigation misconduct of Xiao Wei Yang Catering, this time granting the defendant’s motion that their requests for admissions be deemed admitted. She noted that the plaintiffs never responded to correspondence received on two separate occasions from the defendants relating to deficiencies in the objections and responses to the admissions, and filed a supplemental response (only after being threatened with motion practice) that contained no amended answers, only legal arguments about why the plaintiff would not agree to any of the admissions. Judge Kelley characterized these arguments as “baseless,” and specifically criticized the plaintiffs’ refusal to admit several things that were clearly beyond dispute. For example, the plaintiffs refused to admit that it had entered into a Cooperation Agreement with the defendants despite having repeatedly so alleged in is complaint. Judge Kelley also faulted the plaintiffs for refusing to answer clearly relevant requests because they were “beyond the scope” of the litigation, and for making several responses that were “nearly incomprehensible.” In addition to deeming all of the requests admitted, Judge Kelley indicated she will schedule a hearing regarding whether the plaintiffs should be sanctioned.
Judge O’Toole ruled on a pair of privilege disputes in this trade secret litigation, finding some claims of privilege to be without merit while upholding others. Lynx accuses Zebra of misappropriating real-time player tracking technology and used it to obtain a deal with the NFL that did not include Lynx. During discovery, certain e-mail chains were produced by Zebra in both keyword-searchable and non-searchable formats; redactions based on privilege were made in only one of the formats. The parties could not resolve whether the privilege claim was legitimate, leading to the filing of a motion to remove the redactions by Lynx. A first set of e-mails included communications between Zebra, Zebra’s counsel, and non-employee consultants hired by Zebra o assist in reaching agreement with the NFL. Following en camera review of the communications in question, Judge O’Toole determined that Zebra had waived privilege in these communications by sharing them with the consultants. He found that the Kovel doctrine, which extends privilege to communications with third parties that are necessary, or at least highly useful, for effective consultation between the client and the attorney, did not apply, because the redacted communications were not made for the purpose of obtaining legal advice, and instead concerned business advice. The communications also did not demonstrate that the consultants were necessary to interpret matters beyond the lawyers’ reach. He also rejected Zebra’s attempted reliance on the “functional equivalent” doctrine, by which non-employee agents of a corporation can be considered functionally equivalent to corporate employees by virtue of their close connection to the corporation, such that privilege would extend. Here, the consultants were not so closely tied to Zebra as to be equivalent to employees – they lacked longstanding relations with the company, worked remotely, were not Zebra’s sole representatives in negotiations, and were free to work for others. Judge O’Toole further noted that neither the First Circuit nor the District of Massachusetts had ever adopted or applied the doctrine. The results were different with respect to a different set of communications, with Judge O’Toole upholding the privilege in communications between Zebra executives and in-house counsel. He noted that such communications would only be privileged if they revolved around legal, as opposed to business, advice, but noted that the communications in question did address legal perspectives on issues being discussed.
A number of discovery disputes boiled over in a suit involving a Chinese hot-pot restaurant chain and a Boston restaurant who had tried to become its first American franchisee, resulting in the award of sanctions against plaintiffs’ attorney. Magistrate Judge Kelley is requiring the attorney to pay the defendants’ reasonable fees and costs for their work on a motion for a protective order and to quash subpoenas issued by the plaintiffs. Limited discovery had been allowed, to determine whether a forum selection clause in the franchise agreement had been triggered, which would require the bulk of the claims to be brought in China. A series of disputes over discovery arose, in which plaintiffs’ attorney repeatedly refused to meet and confer. Among the charges were that the attorney noticed numerous third party subpoenas seeking financial discovery well outside the bounds of the limited discovery that had been permitted at a time when the defendants were negotiating a resolution of a dispute concerning plaintiffs’ attempt to get this information directly from the defendants. Judge Kelley indicated that this is an improper attempt to circumvent the legitimate objections of the defendants to the discovery, and that plaintiffs should have moved to compel if they believed the objections to lack validity. She criticized plaintiffs’ arguments that defendants lacked standing to challenge third party subpoenas as “plainly without merit.” Perhaps most damaging, plaintiff itself cross-moved for sanctions, accusing defendants’ attorney of frivolous and vexatious conduct, obstruction of discovery, and “potentially falsifying discovery documents,” an allegation that he admitted at oral argument was entirely without basis.