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.
Following construction of the claims, Judge Capser denied Philips’ motion for summary judgment of validity. WAC had sought inter partes review on several grounds, some of which were denied. Judge Casper, citing to Shaw Industries Group v. Automated Creel Systems, found that the Federal Circuit had determined that the estoppel resulting from an unsuccessful IPR did not apply to grounds that were not instituted by the PTO. Judge Casper denied WAC’s motion to compel the deposition of the named inventor of one of the patents-in-suit for lack of relevance. WAC had asserted that the inventor’s testimony was relevant on patent practices at the time the application was filed, prior art, the problem the patent allegedly solves, the underlying development of the technology claimed in the patent, the alleged contribution of each inventor to the patent, and the facts and circumstances surrounding the alleged invention. The problem was that none of these issues related to any claims or defenses of WAC, thus making these issues irrelevant. The court specifically noted, however, that the inventor was no longer an employee and was a resident of France, suggesting that the relevancy might have been sufficient had the witness been more readily available, but did not outweigh the inconvenience of making the witness appear.
Magistrate Judge Boal granted in part and denied in part Plaintiff’s motion to compel in a case involving claims of patent infringement, correction of inventorship and breach of contract. With respect to requests relating to customer identification information, she determined such information was relevant to infringement and damages, as well as to the breach of the non-disclosure agreement alleged, but limited the scope of the interrogatories to exclude communications with third parties who were not customers, potential customers, or distributors, and limited the subject of the communications to the accused products. Similarly, Judge Boal allowed the motion to compel sales information that underlies the summary spreadsheets produced by the defendants, but limited other requests that sought “all documents and things pertaining to” requests and requests seeking sales information on non-accused products as overly broad – “[c]ourts may find requests overly broad when they are couched in such broad language as to make arduous the task of deciding which of numerous documents may conceivably fall within their scope.” Finally, Judge Boal denied requests for information on each named inventor’s contribution to the specification and drawings of the disputed patents, finding that, as the inventorship dispute focusses on the claims, evidence on contributions to the specification is not proportional to the burdens imposed by the request.
Abiomed sued Maquet seeking a declaratory judgment that its Impella intracardiac heart pumps do not infringe Maquet’s patents, and Maquet counterclaimed for infringement. Abiomed, believing that Maquet’s parent company, Getinge AB, controls the litigation, moved to compel the deposition of Abraham Roani, Getinge’s General Counsel, on valuation, commercialization, validity and enfoceability of the patents-in-suit. Maquet opposed, arguing that any information Roani has would be protected by the attorney-client privilege and work product doctrine, and Maquet offered a non-attorney alternative witness. Magistrate Judge Boal, noting the red flags that are raised by the noticing of deposition of the opposing party’s attorney, referred to the Shelton test adopted by the Eight Circuit, which requires there be no other means to obtain the sought information, the information be relevant and non-privileged, and the information be crucial to the development of the case. She found that Abiomed had not met the first of these criteria, particularly given the proffer of a non-attorney witness, and denied the motion without prejudice.
Maquet fared better with its motion to compel. Abiomed unsuccessfully sought to limit production to documents relating to features of the accused products that are alleged to meet the claim limitations, rather than technical information on all features of the accused products. While Judge Boal compelled production of documents related to the accused products and not just the accused features, she sided with Abiomed that requests seeking all documents “related to” particular topics were overly broad, and limited these requests to the specific examples of types of documents contained in the requests. Finally, Judge Boal required Abiomed to produce technical documents that predate the six-year limitation on damages period set forth in 35 U.S.C. § 286, because such documents go to infringement and not just to damages.