Developments in Early June

Scott Daniels | June 10, 2010

(1) Attorney’s Assertion of “Good Faith” Waives Privilege

Judge E. Thomas Boyle has ordered the patentee in Pall Corp. v. Cuno Inc. to produce hundreds of documents disclosing attorney-client communications regarding the reexamination of the patent-in-suit.  2010 U.S. Dist. LEXIS 55992 (E.D.N.Y. June 8, 2010).

The accused infringer has alleged that the patentee committed inequitable conduct by withholding certain information during an earlier reexamination proceeding.   The patentee replied by submitting a declaration by the attorney disclosing “his thoughts, mental impressions, opinions and conclusions as evidence of [the patentee’s] good faith” before the PTO.  Judge Boyle has now ruled that the assertion of good faith in the attorney’s declaration places the patentee’s state of mind in issue, thereby waiving any attorney-client privilege that may have existed.

The patentee has ten days to produce all documents pertaining to the reexamination, which it has withheld on the basis of attorney-client privilege.

(2) Stay Denied in DNA Sequencing Case

In Life Technologies Corp. v. Illumina, Inc. and Solexa, Inc., Defendant Illumina has counter-claimed that Plaintiff Life Technologies infringes four Illumina patents.  2010 U.S. Dist. LEXIS 55623 (D. Del. June 7, 2010).  Life Technologies filed inter partes reexamination requests against each of the four patents.  The PTO has granted each request and rejected all claims asserted in the litigation.  Life Technologies therefore moved to stay Illumina’s counterclaims pending completion of the reexaminations.

Senior Judge Robert F. Kelly has now denied the motion, applying the familiar trilogy of factors: prejudice to the patentee, simplification of issues, and the stage of the litigation.  Judge Kelly’s denial of the stay is noteworthy, however, in his skepticism regarding the duration of the reexaminations, which he estimates at 6.5 to 8 years.  Judge Kelly also emphasized that Life Technologies and Illumina are direct competitors, so that a stay of the counter-claim could result in “irreparable harm” to Illumina.

(3) Judge Changes Claim Construction Because of Remarks in Reexamination

The potential impact of a copending reexamination on a District Court action was demonstrated anew last week in Beneficial Innovations, Inc. v. AOL LLC, et al.  2010 U.S. Dist. LEXIS 54151 (E.D. Tex. June 3, 2010).  On April 12, 2010, Judge T. John Ward issued a claim construction order favorable to the patentee.  Unbeknownst to Judge Ward, the patentee had filed a reply to an Office Action one week earlier in which it attempted to distinguish certain prior art by construing the claim in a manner that appears to contradict its earlier arguments to the judge.

Two of the accused infringers (AOL and YouTube) therefore requested reconsideration of the claim construction order.  Judge Ward has now granted that motion and adopted a claim construction consistent with the patentee’s remarks to the PTO.

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