“Difficult Burden” for Inequitable Conduct Justifies Second Deposition of Prosecution Counsel

The court granted defendants' motion to compel a second deposition of plaintiff's original patent counsel and produce documents withheld as work product because of defendants' difficult burden under Therasense. "[Counsel] already has been deposed, but his deposition took place before the court entered its orders addressing work product issues and the defendants’ entitlement to discovery surrounding their inequitable conduct claims. . . . [W]ork product objections to questions asked [counsel] and requests for the production of documents have unfairly limited [defendants'] discovery of information that may be critical to their inequitable conduct theories. . . . Given the especially difficult burden imposed under Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011), and in light of the information the defendants have presented to date surrounding their inequitable conduct theories, the court finds it reasonable to permit the defendants to take a second deposition of [counsel] and to require him to produce documents originally withheld solely on work product grounds."

ICM, Inc. v. GS Cleantech Corporation et al, 1-10-cv-08000 (INSD January 15, 2015, Order) (Lynch, M.J.)