Richards Layton & Finger
 

Judge Robinson Denies Summary Judgment but Grants Adverse Inference Regarding Infringement

September 1, 2016

In Intellectual Ventures I LLC v. Ricoh Americas Corp., C.A. No. 13-474-SLR/SRF (D. Del. Aug. 17, 2016), Judge Robinson issued an order in response to the parties’ ongoing dispute about documents held by Ricoh’s Japanese parent company and on cross-motions for summary judgment. Intellectual Ventures had tried—unsuccessfully—to collect the parent company’s documents; first, by asking that Ricoh voluntarily produce them and, when they were denied access, by issuing Letters Rogatory, which were denied by the Japanese Ministry of Foreign Affairs. After undertaking these efforts, Ricoh disclosed to Intellectual Ventures that it had a Technical Assistance Agreement (the “TAA”) with its Japanese parent, which mandated that the parties share information that will assist in the defense of lawsuits, such as the Delaware action. Nonetheless, Ricoh took the position that only defense-related information, not information to assist Intellectual Ventures, was to be shared. Based on the TAA, Intellectual Ventures moved to compel and for a Rule 30(b)(6) deposition; that request was denied by Magistrate Judge Fallon. Although she found no legal errors in the magistrate judge’s opinion, Judge Robinson declined to allow Ricoh to use the TAA as “both a sword and a shield.” Thus, she ordered that Ricoh show cause why they should not be precluded from using information obtained from the Japanese parent under the TAA in their defense.  (To view summary of Intellectual Ventures I LLC v. Ricoh Americas Corporation, et al., please click HERE.)  After briefing, Judge Robinson reasoned that because the pertinent information to prove (or disprove) infringement was held primarily by the Japanese parent, and Ricoh’s request for information from the Japanese parent was not specific to the document requests served upon it (making the collection less than robust or transparent), the Court could not determine how the sword-and-shield usage of the TAA would prejudice Intellectual Ventures. Thus, Judge Robinson ruled that “absent a consensual resolution to this lingering dispute, the court will use an adverse inference jury instruction regarding infringement” of the identified accused products. Judge Robinson declined to grant summary judgment in light of her ruling.

Key Points: This ruling underscores the importance of a robust and transparent document collection, particularly when dealing with foreign parent entities. Judge Robinson will not allow parties to use foreign-parent ownership as both a sword and a shield to discovery in the District of Delaware.