The court affirmed the magistrate judge's decision to deny defendant's motion to deem certain RFAs admitted. The RFAs asked plaintiff to "admit that '[plaintiff] did not Disclose [a certain prior art reference] to the United States Patent and Trademark Office in connection with the prosecution of [certain patent applications]'" and defined "disclose" to mean "bringing a patent, publication, application, or other information to the attention of the United States Patent and Trademark Office during the pendency of a patent application by listing the patent, publication, application, or other information in an Information Disclosure Statement. . . ." Plaintiff objected to the definition of "disclose" but answered that the prior art reference was not listed in an IDS. "While [plaintiff's] response splits a hair pretty finely, it had good reason to be careful. The word 'disclose' implies a duty to disclose. However, [plaintiff] itself had no such duty – it was only the people involved in the patent prosecution that had such a duty. . . . [Plaintiff's] admission that the people involved in the prosecution of this patent did not provide these references in an IDS does not also require [plaintiff] to imply that it should have provided them. [Plaintiff] admitted these statements to the extent that was appropriate and [defendant] may use that admission at trial. As such, [the magistrate judge] did not abuse her discretion when she found that these responses were appropriate."
LG Electronics U.S.A., Inc., et. al. v. Whirlpool Corporation, et. al., 2-09-cv-05142 (NJD June 29, 2011, Order) (Brown, J.)