Qualified Response To RFA Seeking Admission That Specified Prior Art Was Not Disclosed During Examination Was Appropriate

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.)