Plaintiff Ordered to Produce Prosecution Counsel’s Non-Privileged Billing Records as Relevant to Inequitable Conduct and Prosecution Laches

The court granted in part defendant's motion to compel the production of billing records from plaintiff's prosecution counsel because some discovery was relevant to defendant's prosecution laches and inequitable conduct defenses. "⁠[N]on-privileged billing records that regard her work on the patents alleged in this claim are relevant to the extent they demonstrate when each particular prosecution matter was opened, how long it took between the initial opening and when the application was first filed, what activities occurred during prosecution of each application, when each activity occurred, and how much time was spent on the activity. . . . The annual amount of compensation [counsel] received from [plaintiff] to work on the patents at issue [the counterclaims], could raise an inference of [her] financial motive to deceive. [Defendant] is entitled to know how much annual compensation [she] received to work on these two patents."

Finjan, Inc. v. ESET, LLC et al, 3-17-cv-00183 (CASD June 25, 2018, Order) (Skomal, MJ)