Deposition of Trial Counsel Justified Where Counsel Participated in Prosecution

The court denied in part plaintiff's motion to quash defendant's deposition and documents subpoena to plaintiff's litigation counsel. "[B]ecause of [plaintiff's counsel's] participation in the prosecution of the patents through his apparent roles in providing information to [plaintiff's patent counsel], drafting [an inventor's] declarations, his testimony regarding disclosures (or nondisclosures) of the inventors’ various interactions with [the inventor's potential customer] . . . is relevant to the defendants’ proof of the inequitable conduct defense. . . . In fact, the heightened standards of [Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011)] make inquiry into counsel’s and client’s patent prosecution decisions -- and the knowledge base underlying them -- a natural avenue of discovery. Indeed, that sort of inquiry will often be unavoidable when the accused infringer must supply clear and convincing evidence of specific intent to deceive or of a deliberate decision to withhold material information. . . . The court does not see why information disclosed (or not disclosed) to the PTO becomes irrelevant when it is supplied or edited by litigation counsel."

In Re: Method of Processing Ethanol Byproducts and Related Subsystems ('858) Patent Litigation, 1-10-ml-02181 (INSD July 23, 2013, Order) (Lynch, M.J.).