DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 C 1531, Slip Op. (N.D. Ill. Jan. 12, 2011) (Nolan, Mag. J.)
Judge Nolan granted in part defendant 3D System’s motion to compel further Fed. R. Civ. P. 30(b)(6) testimony from plaintiff DSM Desotech ("DSM") in this patent dispute regarding 3D Systems Zephyr recoater. First, the Court held that the rules, responsibilities and dates of prosecution counsel’s involvement was neither privileged, nor work product. Similarly, whether prosecution counsel was aware of the Zephyr recoater during prosecution was not privileged.
The Court held that a Local Rule 83.51.10 screen of DSM’s former counsel, which had moved to a firm representing 3D Systems, did not prevent DSM from contacting its counsel to determine what they knew about the Zephyr recoater at the relevant time. Local Rule 83.51.10 does literally require that plaintiff have no contact "for or against" 3D Systems. But that reading is inconsistent with the purposes of the Rule.
Desotech was not required to gather information from a company it acquired, for the period before the acquisition. Pre-acquisition knowledge would not be imputed to the acquiring entity, DSM in this case. The Court also held that the fact that 3D Systems could or had gathered the requested information from other witnesses or documents did not relieve DSM of its duty to provide Rule 30(b)(6) testimony.
Finally, the Court denied both parties’ requests for sanctions because there was room for reasonable disagreement between the parties.