Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 22, 2012) (Dow, J.).
Judge Dow held that plaintiff’s U.S. Patent No. 6,903,083 (the “’083 patent”) was invalid based upon a sale more than one year before the ‘083 patent’s filing date and denied defendants’ motion to find the case exceptional and award attorney’s fees, in this case related to vitamin D2. As an initial matter, Judge Dow, although he would have been within his rights to do so, did not deem admitted facts that were not properly contested pursuant to Local Rule 56.1. The Court did, however, explain that it would not consider improper denials.
The Court held that two sales by plaintiff more than one year before the filing date invalidated the ‘083 patent. Plaintiffs argued that they were not in fact sales because while money changed hands, pursuant to a Supply Agreement, plaintiffs retained ownership of the goods. But that argument “fail[ed] to get out of the gate.” The Supply Agreement was for the manufacture of vitamin D2, for which hundreds of thousands of dollars were paid.
“[I]nference upon inference” favored finding the case exceptional and awarding defendants their attorney’s fees. Plaintiffs lacked a plausible explanation for how they were unaware of the invalidating sales. And instead of disclaiming the ‘083 patent and avoiding a large document production, plaintiffs continued asserting it. But there remained a question of fact regarding what information plaintiffs’ executives had regarding the sales and when they had it. The Court, therefore, allowed the parties to take further discovery on those issues before bringing the issue back to the Court.
Pactiv Corp. v. Multisorb Techs., Inc., No. 10 C 461, Slip Op. (N.D. Ill. May 18, 2012) (Leinenweber, J.).
Judge Leinenweber granted plaintiff Pactiv’s motion to reconsider the Count’s oral order requiring production of all items on Pactiv’s privilege log in this patent dispute involving oxygen scavengers. During the hearing, the Court “lost in the din of the parties’ squabbling” that there had not been a Local Rule 37.2 meet and confer between service of Pactiv’s latest log and defendant Multisorb’s motion. The Court, however, held that Pactiv’s log was deficient and required that Pactiv re-examine each document on its log to assure that the documents are in fact privileged. And because Pactiv had been given five attempts at a privilege log, the Court ordered that the log include the following information:
- The names of authors and recipients;
- A description of who the parties, including both name and title;
- “[M]ore thorough” descriptions of its documents. For example, if a document is not between counsel it should be stated that it is relaying legal advice.
The Court also held that there was no discovery privilege regarding settlement negotiations, although admissibility of settlement discussion was a separate issue.
Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 12, 2012) (St. Eve, J.).
Judge St. Eve granted in part plaintiff Sloan’s motion to strike defendant Zurn’s “late asserted” invalidity defense, to compel discovery and for sanctions in this patent case involving dual mode flush valves.
Worn Zurn Flush Valve
Sloan seeks production of information regarding certain worn Zurn flush valves. While the worn valves may have been created for litigation, the work product doctrine would not cover the valves themselves or factual data regarding their fabrication and testing. Furthermore, Zurn lost any work product protection to the factual information by claiming that the worn Zurn flush valves invalidate the patent in suit. The Court, therefore, ordered Zurn to produce the worn valves, all non-privileged, factual information about them and a detailed privilege log. The Court also ordered a Rule 30(b)(6) deposition on the worn valve and that Zurn pay the costs and reasonable attorney’s fees of the deposition, the motion to compel and one Sloan attorney to attend the deposition because of Zurn’s continued refusal to produce the documents and answer deposition questions.
Community Center Worn Valve
A “plethora of rules” including LPR 2.1(b), 2.3 and 3.2 and Fed. R. Civ. P. 26(e), required Zurn to produce information regarding its Community Center Worn Valve invalidity defense before it did – after serving Zurn’s Final Invalidity Contentions. And the Community Center and Zurn worn valves were similar, but different. As such, it was a “close call” whether to allow Zurn to use the Community Center defense. The Court allowed Zurn to use its defense, but sanctioned Zurn requiring Zurn to pay Sloan’s reasonable attorney’s fees and costs for any necessary Community Center Worn Valve-related discovery.