Motion to Compel

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Rembrandt Techs., LP v. Comcast Corp., No. 07 C 1010, 2007 WL 1598003 (N.D. Ill. Apr. 25, 2007) (Moran, J.).
Judge Moran granted defendants’ motion to compel documents from third party Zenith Electronics Corp. (“Zenith”), but restricted access to the documents by plaintiff, Rembrandt Technologies’ (“Rembrandt”) inhouse counsel. In the underlying action, E.D. Texas Case No. 05 C 443, Rembrandt alleged that defendants infringed its patents. Zenith was identified as a leading licensor of Rembrandt’s technology. So, defendants subpoenaed Zenith to determine what Zenith paid for its license. Zenith essentially agreed to produce the documents pursuant to the subpoena, but wanted to restrict access to the documents so that no party’s inhouse counsel received access. Defendants agreed to the restriction, but Rembrandt argued that its chief patent counsel, John Meli, was a chief decisionmaker in the case and, therefore, required access to the documents. The Court acknowledged that Meli was a decisionmaker in the case and noted that the Texas court’s protective order allowed Meli access to highly confidential documents. Therefore, the Court granted Meli access to any license agreements produced by Zenith pursuant to the subpoena. But the Court denied Meli access to any other documents produced by Zenith.
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Continue Reading Inhouse Counsel’s Access to Third Party Documents Limited

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).
Judge Moran denied plaintiff Trading Technologies’ (“TT”) motion to compel additional production from third party Chicago Mercantile Exchange (“CME”). TT served CME with a subpoena seeking, among other things, anything referring or relating to potential prior art to the patents at issue and communications between CME and any other entity regarding the patents at issue, including any joint defense agreement between CME and such parties. After TT filed the motion to compel, CME produced thousands of pages, including what it stated were all documents in its possession regarding possible prior art. Because all prior art documents had been produced, the Court denied TT’s motion to compel additional prior art-related documents.
The Court also denied TT’s motion to the extent it sought communications regarding the possible prior art. First, the Court considered any communications CME might have had with defendants in the currently pending cases. The Court referred to its May 1, 2007, order which required defendants to produce a list of all members in their joint defense agreement (that opinion and order, as well as numerous other opinions from this and its related cases, are in the Blog’s archives). The Court held that defendants’ list would allow TT to discover whether CME was involved in a joint defense and that no further discovery from CME was necessary.
Second, the Court considered CME’s communications, including potential joint defense agreements, with any parties not involved in TT’s pending suits. The Court held that the common interest doctrine could attach to communications even before the filing of a suit, so long as the parties anticipated litigation. Furthermore, the Court held that regardless of whether CME’s communications with other third parties were part of a joint defense, they were not discoverable because they were “irrelevant” to this case. The Court explained that while relevance is broadly defined, it does have boundaries and TT’s motion ran “up against such a boundary.”
* Because Westlaw has not published this opinion yet, here is a copy of Judge Moran’s original, signed opinion.
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Continue Reading Third Parties’ Communications With Other Third Parties Are Not Relevant

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 05 C 4120, (N.D. Ill. May 16, 2007) (Moran, Sen. J.).
Judge Moran granted in part and denied in part plaintiff Trading Technologies’ (“TT”) motion to compel additional production from defendants GL Consultants, Inc. and GL Trade SA (collectively “GL”). The Court required GL to update certain interrogatory responses and to produce documents based upon a priority date GL had argued for, as opposed to stopping at TT’s alleged priority date. The Court also required GL to provide TT access to original source code and certain electronic archives, without regard to whether TT had provided GL similar access. Finally, the Court denied TT’s request to lower the confidentiality designation of the source code for GL’s GL Tradepad software. But what is most interesting about the Court’s opinion is its reminder to the parties about how the Court expects them to conduct discovery:
At the outset, we reiterate some of the points regarding discovery that we have stressed throughout this complicated and contentious litigation. First, parties should err on the side of over-production; relevance should he argued sparingly. Second, counsel are officers of the court and their word is generally sufficient. Third, there will always be additional persons to interview, additional documents to discover, and alleged prior art to be found; we must, however, put an end to discovery at some point. . . . With such guidelines in mind, we address the current dispute.
* Because Westlaw has not published this opinion yet, here is a copy of Judge Moran’s original, signed opinion.
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Continue Reading Court Reminds Parties of Their Discovery Obligations

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, 05 C 1079, 05 C 4088, 05 C 4120, 05 C 4811 & 05 C 5164, 2007 WL 704525 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).
Judge Moran granted in part and denied in part plaintiff Trading Technologies’ (“TT”) motion to compel production of defendants’ communications between themselves (more on this case in the Blog’s archives). Defendants asserted claims of attorney-client and work product privileges regarding various communications and information exchanged as part of a joint defense agreement among, at least, the various defendants and DJ-plaintiff (collectively “defendants”) in the patent suits regarding TT’s patents. The Court explained that the joint defense privilege protects communications and exchange of information between parties that have expressly decided to cooperate in a litigation — with or without a written agreement. The Court held that defendants had expressed a sufficient intent to cooperate in their respective litigations against TT and, therefore, held that defendants need not produce communications made in relation to their joint defense. The Court required that defendants produce any written joint defense agreement or, in the absence of a written agreement, the identities of all members of the joint defense. The Court further held that third parties need not be identified to the extent that their identities are protected as work product, but that third parties should be identified if defendants’ communications with them are allegedly protected by attorney-client privilege. The Court also required that defendants produce all prior art in their possession, regardless of how it was located. And finally, the Court noted that “it must rely on the integrity of counsel to determine what is and is not privileged.” As a result, the Court required that defendants produce “any communications not protected by a legitimate privilege . . . .”
You can download the opinion here.
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Continue Reading Joint Defense Agreement May Protect Third Party Communications

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 704525 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiff Trading Technologies’ ("TT") motion to compel production of documents and answers to interrogatories regarding defendant eSpeed’s patent licenses (more on this case in the Blog’s archives).  The Court…