Sterne Kessler Goldstein & Fox, P.L.L.C. v. Eastman Kodak Company
276 F.R.D. 376
| D.D.C. | 2011Background
- Kodak subpoenaed Sterne to depose it on reexamination and related topics concerning the 074 patent and Kodak-Apple litigation.
- Sterne previously represented Apple in USPTO reexamination of the 074 patent; the reexamination resulted in a May 31, 2011 certificate that all claims were patentable.
- Kodak sought information on petitioner’s analysis, prosecution, communications, knowledge of related litigation, and USPTO practices (Topics 1-23) and asked about claim construction.
- Petitioner objected that deposition would breach attorney-client privilege and work product; motion to quash filed under Rules 26 and 45.
- Court granted quash, finding deposition not warranted because information could be obtained from other sources and balance of interests favored protecting privilege and avoiding burdens.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Shelton applies to permit deposing opposing counsel | Shelton applies when deposing opposing trial counsel | Petitioner not trial counsel; Shelton not applicable | Shelton does not apply to this situation |
| Whether deposition of former counsel is appropriate given privilege/work-product concerns | Information sought would illuminate inequitable conduct and related defenses | Deposition risks disclosure of privileged communications; not warranted | Deposition of petitioner quashed due to privilege/work-product risks |
| Whether information sought can be obtained from other sources | Relevant to USPTO reexamination and prosecution history | Record evidence and examiner/witness depositions suffice | Yes; other sources available; deposition unnecessary |
| Whether the deposition would be burdensome or unjustified | Information needed for defense | Burden outweighs benefit; discovery already extensive | Burden outweighed by benefits; quash allowed |
| Whether the inequitable conduct defense is properly at issue in Kodak v. Apple | Inequitable conduct defense contemplated with leave to amend | No proper pleading of inequitable conduct; not at issue here | Inequitable conduct defense not properly at issue; deposition not warranted |
Key Cases Cited
- Hickman v. Taylor, 329 U.S. 495 (U.S. 1947) (confidentiality and privilege protect attorney work product in discovery)
- Shelton v. American Motors Corp., 805 F.2d 1323 (8th Cir. 1986) (deposition of opposing counsel allowed only in limited circumstances; protects privilege and strategy)