Intellectual Property – Discovery

July 31, 2013

Publication| Intellectual Property

Chief Judge Sleet Orders Production of Attorney-Client Privileged Documents Under the Crime-Fraud Exception

In Shelbyzyme, LLC v. Genzyme Corporation, C.A. No. 09-768-GMS (D. Del. May 22, 2013), Chief Judge Sleet ordered the plaintiff to produce privileged documents dated between November 2001 and February 2002 related to the revival of a U.S. patent application under the crime-fraud exception to the attorney-client privilege.  While the Court rejected the defendant’s evidence of an intent to abandon the patent application as mere speculation, the Court found that the defendant met its burden of demonstrating a prima facie case of fraud based on reasonable inferences that the applicants to the revival knew about the patent application’s abandonment stemming from knowledge that the issue fee had not been paid, and intended to present false information when representing to the PTO that the entire delay of revival was unintentional.  In reaching this conclusion, the Court stated that there was no reason that “‘clear evidence of deceptive intent’ cannot take the form of a well-supported inference.”  On June 25, 2013, Chief Judge Sleet denied the plaintiff’s motion for reconsideration by rejecting the two alleged legal errors argued by the plaintiff relating to the intent and causation/materiality prongs of the crime-fraud inquiry.  In doing so, the Court rejected a June 2, 2013 declaration in support of the plaintiff’s position, reasoning that a motion for reconsideration should not be used “as a means to argue new facts or issues that inexcusably were not presented to the court in the matter previously decided.”

Judge Robinson Grants in Part Motion to Compel

In Cradle IP, LLC v. Texas Instruments, Inc., C.A. No. 11-1254-SLR (D. Del. Apr. 29, 2013), Judge Robinson granted in part and denied in part each of third party Nokia Siemens Networks US LLC’s (“Nokia”) motion to quash and plaintiff Cradle IP, LLC’s (“Cradle”) motion to compel.  Cradle subpoenaed Nokia for testimony and documents regarding transceiver base stations that, according to Cradle, incorporated the products accused of infringement in the litigation.  Cradle moved to compel Nokia to produce documents in the possession of affiliate Nokia Siemens Networks Oy, a Finnish company and the manufacturer of the base stations.  Judge Robinson found that Nokia had no “control” over the documents and information of its sister company.  But because Nokia described its corporate role in part as “maintaining” the base stations, Judge Robinson directed the company to produce a witness located within the enforcement limits of the Court’s subpoena power to sit for a deposition on the noticed topics and to produce any documents responsive to the subpoena held by the company.

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