Wednesday, July 31, 2013

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.).

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