Apple’s Reexamination Counsel Avoids Deposition

Scott Daniels | August 16, 2011

Apple is currently suing Kodak in the Western District of New York for infringing a series of patents, among them, U.S. Patent No. 5,634,074.  Kodak initially replied with the customary defenses, but has now sought permission from the court to amend its pleadings to include an inequitable conduct defense, specifically that the “074 patent is unenforceable due to inequitable conduct committed by Apple, an inventor of the 074 patent and/or it attorneys during reexamination of the ‘074 patent.”  The ‘074 reexamination was requested in April 2010, and completed at the end of May 2011, when the PTO issued a reexamination certificate confirming the validity of all the ‘074 claims.

In support of its new defense, Kodak subpoenaed Apple’s reexamination counsel, asking for documents and a deposition on:

(1)   reexamination counsel’s analysis of the issues involved in the reexamination of the ‘074 patent;

(2)   prosecution of the ‘074 patent, including its reexamination;

(3)   reexamination counsel’s communications with Apple, other attorneys who prosecuted the ‘074 patent, and the USPTO;

(4)   reexamination counsel’s knowledge of the Kodak-Apple litigation and other litigation concerning the ‘074 patent; and

(5)   reexamination counsel’s understanding of reexamination practice before the USPTO.

Apple’s reexamination counsel promptly moved to quash, and on Friday Judge Beryl Howell granted the motion (2011 U.S. Dist. LEXIS 89564). 

Judge Howell acknowledged that the reexamination counsel’s representation of Apple had ended with the conclusion of the reexamination, but cautioned that “[d]eposing an opposing party’s former counsel on the same matter at issue in the pending litigation, should not be done lightly.”  She then listed the potential problems that Kodak’s requested discovery might create: chill of future attorney-client communications, harassment of counsel, unnecessary disqualification of counsel, unnecessary litigation on collateral issues. 

Speaking more precisely to the present case, Judge Howell added that Kodak had not yet received permission to pursue its inequitable conduct defense, that the risk to attorney-client privilege and work-product exception outweighed any benefits from the discovery, and that the written record of the reexamination prosecution was a better source of relevant information than discovery directed to the reexamination counsel.  Judge Howell therefore quashed Kodak’s subpoena.

In this post-Therasense world, where the bona fides of inequitable conduct allegations are scrutinized as never before, lawyers asserting that defense need to act with restraint and show deference for the attorney-client privilege.  One wonders whether the aggressive discovery tactics used by Kodak’s lawyers here might hurt it on the substantive issues to be tried in the case.

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