No Lost Profits For Violation of Protective Order

The court denied defendants' motion for contempt for plaintiff's violation of a protective order, and denied defendant's request for lost profits resulting from such violation, but instead granted an award of attorneys' fees under Rule 37. "[Plaintiff's] violation of the Protective Order, while not contempt, is still sanctionable under Federal Rule of Civil Procedure 37 . . . . The defendants argue that the Court should order [plaintiff] to reimburse the defendants $573,149 for lost profits from sales to four distributors that were allegedly 'destroyed' as a result of [plaintiff's] letters. . . . The only evidence proffered by the defendants is [defendant's CFO's] bald assertion; there are no declarations or communications from the distributors reflecting that the letters from [plaintiff] had any impact on the distributors, much less that the letters caused them to cancel the purchase orders. [The CFO's] unsupported assertion is an insufficient evidentiary basis for the monetary remedies the defendants seek."

LifeScan Scotland, Ltd. v. Shasta Technologies, LLC et. al., 3-11-cv-04494 (CAND November 6, 2013, Order) (Orrick, J.)

Ownership Dispute Undermines Common Interest Privilege

The court granted in part defendant's motion to compel the production of documents withheld as privileged. "Plaintiffs maintain that communications between [an individual plaintiff and his brother] pertaining to litigation strategy or advice of counsel fall squarely within the Common Interest Doctrine and are privileged. Plaintiffs predicate this assertion on their argument that [the individual plaintiff and his brother] have a common interest in the prosecution of the infringement of the patent at issue. . . . [I]t appears that [the individual plaintiff and his brother] are adverse to each other. They are currently engaged in litigation in [another action] over ownership of [a] closely allied . . . patent which embraces claims similar to those in the immediate case. Direct communications between [the individual plaintiff and his brother] pertaining to rights and title to the [patents in both actions] or litigation strategy in the case presently before this Court would also be subject to disclosure. [Plaintiffs] are obviously not engaged in a joint strategy for the prosecution of this case. They are clearly at loggerheads and simply do not share a common interest."

Porto Technology, Co., Ltd. et. al. v. Cellco Partnership d/b/a Verizon Wireless et. al., 3-13-cv-00265 (VAED November 5, 2013, Order) (Hudson, J.)

No Privilege for “Litigation Funding Agreement”

The court granted defendants' motion to compel the production of a litigation funding agreement and rejected plaintiff's claim that the agreement was privileged. "[Plaintiff] maintains that ownership of the [patent-in-suit] and who is funding the instant litigation are not relevant issues in the case, and that turning over the litigation funding agreement would not lead to the discovery of relevant evidence. [Plaintiff] also believes that the litigation agreement is privileged material. . . . This Court finds that the litigation funding agreement is relevant and is not privileged, and [plaintiff] is ordered to produce it. . . ."

Cobra International v. BCNY International, et. al., 0-05-cv-61225 (FLSD November 4, 2013, Order) (Matthewman, M.J.)

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No Privilege for Communications with “Astrologist”

The court granted in part plaintiff's motion to compel discovery regarding defendant's consulting astrologist and rejected defendant's claim of privilege. "[D]efendant cites no authority for the proposition that astrology constitutes a religion or belief system to which a privilege could attach. . . . [Defendant's founder's] consultations with [an astrologer] about the astrological wisdom of using certain attorneys, or about taking litigation or business actions on certain dates, is not the type of communication to which a religious privilege would attach. . . . Defendant offers no evidence that [the astrologer] was 'hired,' or the scope of any purported 'consulting' arrangement. And, if there really was some consulting arrangement for the purposes of this litigation, defendant fails to explain why it allowed the emails to be produced and [its founder] to be questioned about this communications with [the astrologer]."

Trading Technologies International, Inc. v. CQG, et. al., 1-05-cv-04811 (ILND November 4, 2013, Order) (Schenkier, J.)

“Hourly Rates, Total Hours, and Total Fees” May Not Be Submitted Under Seal

The court denied without prejudice defendant's motion to file under seal declarations in support of its motion for attorneys' fees. "The Court is unable to hold that good cause exists on the submitted papers. The Application provides only a perfunctory assertion that [the exhibits] contain 'proprietary business information for both [defendant] and [its counsel] and reflect the relationship and communication between attorneys and client.' [Defendant] does not discuss in any detail why the invoices and summary chart should not be revealed to the public, nor why any danger cannot be mitigated by redacting confidential information or privileged communications. District courts in this circuit have refused to seal documents relating to the hourly rates, total hours, and total fees paid to attorneys. . . . The Court notes that it has granted [a co-defendant’s] Application to File Under Seal . . . [That] Application sought only to seal detailed records of attorneys’ actions in the matter, while leaving public summaries showing hourly rates and total hours. [The co-defendant] convincingly argued that good cause exists to protect the detailed information because review of those records may provide insight into how [the co-defendant] pursues patent litigation. [Movant] may wish to proceed in the same manner.

SmartMetric Inc. v. MasterCard International Incorporated, et. al., 2-11-cv-07126 (CACD November 1, 2013, Order) (Fitzgerald, J.)

Licensing Practices Not Protected from Discovery by Attorney-Client Privilege

The court granted in part plaintiff's motion to compel the production of licensing documents defendant withheld as privileged. "Plaintiff requests 'All Documents Relating To [defendant’s] corporate licensing policy or procedures.” “Defendant claims its licensing practices are developed by attorneys and are therefore protected by attorney-client privilege. Plaintiff’s RFP is overbroad insofar as it relates to defendant’s generic licensing practices not specifically related to plaintiff’s location technology. However, the attorney-client privilege doctrine only protects 'confidential communications between lawyer and client made to facilitate legal services for the client.' It is questionable whether licensing practices are developed to facilitate legal services. Defendant shall produce documents that reflect its licensing practices or procedures relative to location technology."

Skyhook Wireless, Inc. v. Google, Inc., 1-10-cv-11571 (MAD October 31, 2013, Order) (Zobel, J.)

Discovery of cffDNA Not Patentable

The court granted plaintiff's motion for summary judgment that defendant's pre-natal testing patent contained ineligible subject matter and rejected defendant's argument that the patent claimed the use of DNA and not the DNA itself. "[Defendant] argues that the claims are patentable because although cffDNA is not patentable, the use of cffDNA is patent eligible. The Court disagrees. The Supreme Court has never stated that any use of a natural phenomenon is patentable. . . . It is only an innovative or inventive use of a natural phenomenon that is afforded patent protection. . . . [B]ased on the undisputed facts before the Court, the only inventive part of the patent is that the conventional techniques of DNA detection known at the time of the invention are applied to paternally inherited cffDNA as opposed to other types of DNA. Thus, the only inventive concept contained in the patent is the discovery of cffDNA, which is not patentable."

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 3-11-cv-06391 (CAND October 30, 2013, Order) (Illston, J.)

Consent Judgment Should Not Make Findings as to Contested Issues in Related Proceedings

The magistrate judge recommended that plaintiff's consent motion for judgment and a permanent injunction be denied without prejudice where plaintiff had pending lawsuits involving the same patent-in-suit. "The proposed judgment is troubling in that it asks the Court to 'confirm' certain stipulations between the parties regarding invalidity, enforceability, and infringement of the [patent-in-suit]. [Plaintiff] is correct that the parties are free to agree to resolve such issues as between themselves and that the stipulations would not be binding on anyone other than [the parties to this action]. . . . The problem with the proposed judgment’s wording, however, is that it does not just state that the parties agree that the [patent] is valid, enforceable and infringed by [a nonparty's] Accused Products but that the Court 'confirms' such findings. While the parties are free to agree on these issues, the District Court should not make actual findings as to issues that have not been litigated and are hotly contested in other related proceedings."

Trustees of Boston University v. Vyrian, Inc., 1-13-cv-11963 (MAD October 29, 2013, Order) (Boal, M.J.)