Discovery

Disqualifying an Expert: When Is an Expert’s Prior Relationship Prejudicial to the Opposing Party?

Opinion Regarding Disqualification of Plaintiff’s Expert, Tabaian v. Intel Corp., D. Or. (September 22, 2018) (Judge Marco A. Hernandez) 

Expert witnesses play a critical role in patent litigation, particularly where the subject matter is highly technical.  The more specialized the technology, the more common it is for an expert witness to have had some prior relationship with the opposing party.  To determine whether such an expert should be disqualified, courts analyze the relationship under a three-part test: (1) whether the relationship between the expert and the opposing party was confidential; (2) whether the confidential information that the expert obtained under that relationship is relevant to the present lawsuit; and (3) how granting or denying a disqualification motion may prejudice the parties or affect the integrity of the legal process.  A recent opinion from the District of Oregon sheds light on this test. READ MORE

Third-Party Litigation Financing: When Can a Defendant Follow the Dollar Signs?

Order Denying Discovery Regarding Litigation Financing, Space Data Corp. v Google LLC, N.D. Cal. (June 11, 2018) (Magistrate Judge Nathanael M. Cousins)

In recent years, third-party litigation financing has become increasingly common.  Funding by an outside investor in exchange for a stake in any recovery has raised questions about the ethics of this practice as well as about whether such information must be disclosed in the litigation.  With the exception of class actions, courts often have concluded that information about actual or potential litigation funding is immune from disclosure under the attorney work product doctrine or common interest privilege.

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Texas Supreme Court First to Extend Attorney-Client Privilege to Patent Agents

In re Andrew Silver, Tex. (February 23, 2018) (Justice John Phillip Devine)

Last week, the Texas Supreme Court ruled that a client’s communications with his registered patent agent are protected under the attorney-client privilege as defined by the state’s evidence rules. READ MORE

Court Cites Risk of Competitive Misuse to Deny Modification of Protective Order

Order Denying Motion to Modify Protective Order, PhishMe, Inc., v. Wombat Security Technologies, D. Del. (September 18, 2017) (Judge Christopher J. Burke)

As demonstrated by Judge Burke’s order, courts are reluctant to alter protective orders that have been in place for months and were specifically negotiated in an effort to protect against inadvertent disclosure and competitive misuse of confidential information. This is especially true when the parties are direct competitors and have capable outside counsel to manage the litigation.

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Inadequate Disclosures Preclude Monetary Damages Recovery in Trademark Infringement Suit

Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)

As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted.  But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE

When Strategy Backfires: A Plaintiff Pays the Price for Dumping Too Much Information Into a Trade Secret Disclosure

Order Regarding Discovery Dispute Joint Report #1, VIA Tech., Inc. v. ASUS Computer Int’l et al., Case No. 14-cv-3586 (Magistrate Judge Howard Lloyd)

There is a tension in many IP cases between disclosure rules that require a plaintiff to identify its liability theories early in the case, and the understandable desire of the plaintiff to keep open its options for seeking recovery. Some plaintiffs respond to these tensions by stating their allegations in highly general terms, often leading defendants to ask for more specifics. Other plaintiffs attempt to overwhelm their opponents with detail, triggering calls by their opponents to narrow the relevant claims.  Sometimes such obfuscatory tactics work, but they can backfire too. That was the recent result in VIA Tech., Inc. v. ASUS Computer Int’l et al., in which a plaintiff seeking recovery for misappropriation of trade secrets was ordered not only to trim its case, but also to disclose the alleged trade secrets to the defendant (rather than only to defense counsel). READ MORE

Simple Beats Precise: No Need for Carve-Outs Before Using Previously Produced Discovery

Discovery Order, Richtek Technology Corp. v.. uPI Semiconductor Corp., et al., Case No. 09-cv-05659-WHA (Magistrate Judge Laurel Beeler)

Here is a riddle for you: when can an interest in reducing cost and burden justify broader discovery? The answer: when documents previously produced in a related case are at issue. That’s what Magistrate Judge Beeler concluded in Richtek Technology Corp. v. uPI Semiconductor Corp., in ruling that documents produced in an ITC investigation would be treated as if produced in the district court patent case, while simultaneously rejecting defendant uPI’s request to carve out trade secret discovery and discovery about non-accused products. READ MORE

Missed Deadline Leads to Missed Opportunity at Discovery

Order Denying Further Discovery, Enplas Display Device Corp., et al. v. Seoul Semiconductor Co., Ltd., Case No. 13-cv-05038 (U.S. Magistrate Judge Nathanael M. Cousins)

A recent order by Magistrate Judge Cousins in Enplas v. Seoul, a case which the NorCal IP Blog previously reported on here, illustrates the perils of failing to diligently pursue discovery. Magistrate Judge Cousins previously permitted the parties to meet and confer and request further discovery, but set a deadline of January 6, 2016. Neither party sought further discovery by that date. READ MORE

Don’t Bury the Lede: Failure to Explicitly List Prior Art Witnesses Can Preclude Them from Testifying

Order Striking Witnesses from Supplemental Initial Disclosures, Finjan, Inc. v. Proofpoint, Inc. et al., Case No. 3:13-cv-05808-HSG (HRL) (Magistrate Judge Howard Lloyd)

How much disclosure is sufficient when you want the author of a prior art reference to testify at trial? Magistrate Judge Lloyd offers one possible answer: invalidity contentions and prior art disclosures alone only identify references that defendants find important, but do not put plaintiff on notice that all the prior art authors and inventors are potential trial witnesses. Therefore, relying on contentions alone may place a defendant at risk that it will not be permitted to call the relevant prior art witnesses. While this order comes with a cautionary tale, will it lead to more meaningful disclosures? READ MORE

CEOs May Be at the “Apex” of Their Companies, But They Can Still Be Deposed

Order Re: Discovery Dispute, Finisar Corp. v. Nistica, Inc., Case No. 13-cv-03345-BLF (Magistrate Judge Jacqueline Scott Corley)

One of the more contentious issues in civil litigation involves the question of under what circumstances can the highest ranking officer in a corporation find himself or herself answering questions at a deposition related to the business activities of the company.  In a recent order in a patent infringement suit, Magistrate Judge Corley examined this “apex” deposition doctrine and compelled the deposition of the CEO of the plaintiff Finisar Corp., subject to several limitations on how the deposition was to be conducted. READ MORE