*1 225, 239, extent as with the same U.S. S.Ct. waiver to (However, (1975).4 disclosure other disclosure. L.Ed.2d party’s expert legal of the testifying contentions, while position and discover- IT THAT: IS ORDERED information, generally is not a waiver able underlying information since the dis- as to petition Pioneer’s for a writ of manda- privileged was not or information closed mus is to the extent stated above. place.) the first protected otherwise does not show the ex- Here the record testifying experts, and
tent of disclosure to record, proper such disclosure
absent ordering produc- the basis for
cannot be
tion. There is indeed an affidavit from stating Pioneer that he house counsel for INC., SYSTEMS, LITTON any discussions with Mr. “did not have Plaintiff-Appellant, expert relating my Milgrim [an witness] analysis of the financial benefit and tax merger original consequences INC., HONEYWELL Defendant- Pioneer shareholders or the relevance to Appellee. original analy- Pioneer’s merger No. 00-1241. merger’s sis of the ramifications for its licenses.” In further existing technology Appeals, United States Court of may allow
proceedings, Federal Circuit. inquiry into the matters disclosed to the witnesses, production and order expert Feb. 2001. compel testimony or oral with documents Rehearing Denied March 2001.
respect to the matters disclosed. suggest The district court also offering corporate
ed that counsel to testi 30(b)(6)
fy as a Rule witness on factual might privilege
matters have waived the product protection. We do See, agree. e.g., Motley v. Marathon (10th Cir.1995) Co., 71
Oil
(stating designation that mere of counsel corporate representative deposition
as 30(b)(6)
pursuant to Fed.R.Civ.P. attorney-client privilege).
waive Counsel respect
is often a fact witness events, may testify deposi
various by opposing party as to such
matters without waiver. A different result obtain, course,
would if counsel were testify privileged pro
offered to as to or might
tected matters and obtain if counsel
were offered as a fact witness at trial Nobles,
his client. See United States argues respond challenge, Pioneer also that the district court to Pioneer’s and we incorrectly it had determined that waived ground privi- consider that for waiver of the privilege due to communications with duPont lege to have been abandoned Monsanto. during merger negotiations. Monsanto does *2 2000).
(C.D.Cal. Because, light Jan. Corp. our Festo recent Co., Kogyo Kinzoku Kabushiki Shoketsu (Fed. Ltd., Cir.2000), infringement under was no there *3 as a of of matter the doctrine law, improp the and district because issues of material erly genuine resolved Roberts, Jr., Hogan & Hartson John G. determined fact have been should L.L.P., DC, argued Washington, of claims, law we jury regarding the state him brief on the With plaintiff-appellant. reverse-in-part, affirm-in-part, vacate-in- Of on E. counsel Catherine Stetson. was and part, remand. Lorig, A. and were the brief Frederick Brown, Los Lorig & of Bright L. Sidford Background CA; Rory Radding, Pennie & Angeles, J. L.L.P., NY; York, and of New Edmonds background to this case factual Lawrence, III, P. Carl T. and Stanton Honey fully Sys., set in Litton Inc. v. out L.L.P., Bretscher, of Pennie & Edmonds well, Inc.,
Washington, DC.
Cir.1996) (Litton
(Fed.
I), and
be dis
will
necessary to
cussed
to the extent
Taranto,
here
Taranto,
&
of
Farr
Richard G.
ob
DC,
appeal.
Litton
the current
Washington,
argued
defendant-
4,142,958
the
were
Patent No.
appellee. Of counsel on
brief
tained United States
(’958
Long
Raygor,
and Kent R.
Gregory
patent)
sputtering process
A.
claiming
Hampton, of
Sheppard Mullin Richter &
multiple
optical films us
layer
for making
CA;
Donofrio,
and John
Angeles,
beam,
Los
an
to a
without limitation
ion
International,
Inc.,
Morris-
of
sought
particular
ion beam source.
It
town,
counsel on
brief
NJ. Of
patent
reissue in 1985 because
'958
Lardner,
Quillin, Foley &
of
George E.
obviousness,
proposed
was invalid for
and
Washington, DC.
multiple
requiring
that the
of
layers have different indices
refraction.
MAYER,
Judge, RADER
Before
Chief
rejected
twice
The examiner
this amend
BRYSON,
Judges.
Circuit
and
art,
prior
ment as
over the
includ
obvious
Lit
ing that
the '958
disclosed
Opinion
court filed
Chief
(1)
argued specifically
ton
it used
Judge
Judge MAYER. Circuit
BRYSON
(2)
source,
it ob
Kaufman-type
part.
and
part
concurs in
dissents
unexpected
use
tained an
result from the
MAYER,
Judge.
Chief
produce
Kaufman-type
of
source
(Litton)
Systems,
appeals
Litton
Inc.
beam,
(3) its
required ion
and
claims were
judgment of the
States District
United
limited
ion
“only
Kaufman-type
of
Court for the Central District California
guns”
other
beam
beam
“to
ion
judg
summary judgment and
granting
but
Kaufman
The examiner
gun
gun.”
(JMOL)
matter
ment as a
conditioned
on Litton’s amend
allowance
in
Honeywell, Inc.
did not
(Honeywell)
Kauf
ment of
claims to limit them to
its
Pat
Reissue
fringe Litton’s United States
sources,
'849
man-type
and the
ion
(’849reissue)
32,849
No.
to a
ent
directed
following
required
reissue was issued
optical
fabricating multi-layer
“method for
amendment.
films,”
Lit
Honeywell and JMOL for
de-
just
before
events
ton’s state law tort claims
intentional
Louderback,
scribed, Anthony
one of the
interference with contractual relations
patent,
left his
co-inventors
'958
with prospective
intentional
interference
employment at
to form his own
Inc.
advantage.
See
Research,
optical coating company,
MRP
Honeywell,
No. CV 90-0093
(Ojai).
processes
Inc.
Louderback continued to work
literally
do not
infringe
under an
consulting
with Litton
exclusive
the '849 reissue. We vacated and remand-
agreement
gave
ownership
ed for consideration
inventions,
developments, or discover-
the doctrine
equivalents pursuant
he made based on the
ies
licensed
proper claim construction.
Id. Because
pat-
him
disclosing
forbade
jury
may
patent
have relied on
technology.
ented
He also entered a li-
fringement
wrongful
as the
sup-
means
censing agreement
per-
with Litton that
torts,
porting the state law
we reversed
practice
mitted him to
the '958
but
JMOL,
verdict,
vacated the
and re-
him
using
forbade
tech- manded for further
proceedings
accor-
nology
produce
anyone
mirrors for
oth-
dance with state law.
Id. at
er
consulting
than Litton. After the
con-
USPQ2d at 1333.
*4
1983,
expired
tract
from 1984 to 1990
II,
On remand from Litton
the district
provided
Louderback
Honeywell, one of
granted
summary judgment and
competitors,
with mirrors made
non-infringement
JMOL of
of the '849
using
method.
prosecution
reissue.
It held that the
histo-
1990,
In
Litton sued Honeywell, Loud-
ry precludes infringement under the doc-
erback,
and
for
trine of
Honeywell’s
for
hollow
'849 reissue. Litton
asserted
Loud-
cathode ion beam source and the all-ele-
infringed
erback had
the '849 reissue and
precludes
ments rule
infringement under
licensing
breached their
and consulting
the doctrine of equivalents for either
agreements.
Litton later amended the
complaint
Honeywell
Honeywell
to sue
for intentional
hollow cathode or RF ion beam
interference with contractual relations and sources. The
court also
JMOL
intentional
prospective
interference with
on the state law claims be-
advantage.
Ultimately, Honey-
cause Litton failed to establish the requi-
well and Litton went to trial.
spe-
site
appeals.
elements. Litton
form,
cial
jury reported
verdict
(1) Honeywell
prove
did
any
of the as-
Discussion
(2)
invalid,
serted claims
Litton had
“We review
a district court’s
proved the asserted claims infringed, and
summary judgment de novo.” Vanmoor v.
(3) Litton had met its burden on the state
Stores, Inc.,
1363,
Wal-Mart
201 F.3d
law claims.
(Fed.Cir.
1365,
1377,
USPQ2d
53
1378
This case now returns to us for the third
2000) (citing
Corp.
Petrolite
v. Baker
I,
time.
first judgment,
Our
Inc.,
1423,
Hughes,
1425,
96 F.3d
40
vacated and
Supreme
remanded
1201,
(Fed.Cir.1996)).
USPQ2d
1203
Court of the United States for reconsider
“Summary judgment
appropriate
is
when
ation in light of Warner-Jenkinson Co. v.
there
genuine
is no
issue as to
materi-
Co.,
17,
Hilton Davis Chem.
520
117
U.S.
al
and
moving party
fact
is entitled to
1040,
S.Ct.
137 L.Ed.2d
41
judgment as a matter of law.” Id. Sum-
(1997). Honeywell,
1865
Inc. v. Litton
mary judgment
improper
is
“if the evi-
Inc.,
1111,
Sys.,
1240,
520 U.S.
117 S.Ct.
dence is such
that a reasonable
could
(1997) (GVR order).
motion for by reapplying its contrary verdict of law following jury has since made a Air, Inc. v. review.” Tec standard of prior own to applicable the issue or when 1353, Mich., F.3d Mfg. 192 Denso wrong clearly decision was and would (Fed.Cir. USPQ2d 1296 52 injustice. a substantial Mendenhall 1999). Co., 1573, 1581, Barber-Greene 26 F.3d 31 (Fed.Cir.1994). Be narrowing “[A] adopted contrary cause we rule have reason related to the statuto made scope prosecution regarding give will rise requirements for ry limita history estoppel for amended claim re history estoppel with prosecution tions, the case law of the doctrine amended claim element.” spect applying complete preclude us from Festo, 566, USPQ2d at 1870. 234 F.3d at adopted id. bar en banc Festo. See support patentability limita claims with the “ion source” opinions Hughes Our Co. Aircraft tion, initially argued that “the term States, United original in its claims ‘ion beam source’ (Fed.Cir.1996) XIII) (Hughes be to refer ‘properly construed could States, Hughes Co. v. United Aircraft gun Kauf any other but the (Fed.Cir.1998) 1470, USPQ2d 1285 ” *5 1453, II, at gun.’ man Litton 140 F.3d XV) lead (Hughes do not to a different Later, nar USPQ2d 1323. Litton 46 at Hughes XIII that explicitly result. held the term amending rowed its claims States, v. 717 Hughes Co. United Aircraft “Kaufman-type to read “ion beam source” 1351, (Fed.Cir.1983) USPQ 473 F.2d 219 It in did direct ion beam source.” so VII) entirely (Hughes consistent rejection response a under 35 U.S.C. en banc in Penn intervening our ¶ 112, § 2 the examiner issued be that Corp. Durand-Wayland, 833 F.2d walt regard claim it what cause did 931, (Fed.Cir.1987). 4 USPQ2d 1737 1461, Id. at 46 ed as its invention. Hughes that XV held Wamer-Jenkinson USPQ2d “regards at A his inven 1330. no in provides basis to alter the decision rejection clearly to the tion” is related Hughes properly VII because court ¶ 112, statutory requirement 2 section at applied the all-elements 140 F.3d rule. therefore, and, narrow patent, a 1475, USPQ2d 46 1289. case at In neither prosecution rise gives ing id.; in Festo, controlling authority was there F.3d history estoppel. See 234 566, had USPQ2d contrary at 1870. interim a decision of at 56 made applicable We to the relevant issue. cre “When a claim amendment of of are aware no decision this court prosecution history estoppel with re ates applied in the face has the law of case element, range to a claim there is no gard controlling legal of a relevant in change amended equivalents of available authority. complete Festo’s bar Under Application claim element. of the doctrine rule, estopped claiming from equivalents claim element is com to the ion “Kaufman-type Festo, (a bar’).” ‘complete pletely barred gun” disputed limitation 569, USPQ2d F.3d at at 1872. 234 56 Festo, claims '849 reissue. 234 Festo, II had we observed that Litton 569, USPQ2d 56 at Neither of at at approach, bar id. followed flexible a literally possesses the accused devices 1877, expressly 56 at and we Kaufman-type gun, Litton is at repudiated approach. Id. completely barred as a of law matter USPQ2d at 1872. The law of the case is asserting meet the accused devices pre discretionary judicial doctrine that “Kaufman-type limita- gun” of an cludes issue decided reconsideration equivalents. doctrine litigation unless ex stage at an earlier correctly such The district JMOL ceptional circumstances exist. One non-infringement opinion of the '849 reissue when this case was first before the equivalents. under the doctrine of court. See Litton Inc. Honeywell, 1559, 1581-84, Based on the JMOL of non-in J., (Bryson, 1337-39 dissenting). I fringement, rely pat Litton cannot on the would affirm the district court in all re- support ent claims to spects. wrongful means element of its state tort Litton’s claim of intentional interfer- “Although appellate claims. an court must ence with contractual relations is based against sustain a verdict if JMOL contracts between Litton and Re- grounds there are reasonable search, Inc., company verdict, owned Antho- appellate court must also va Louderback, ny a former Litton employ- cate a jury verdict and remand for newa ee and one of the inventors of jury may trial if a have the '958 imper relied on an Ojai missible basis in its Litton execut- reaching verdict.” II, agreements ed two governing F.3d at at their rela- (citations omitted). tionship and Louderback’s use of Having entered patent process. JMOL of '958 non-infringement under doc The agree- first ment, equivalents, Contract,” trine of the “Consulting Services should have submitted the tort claims to a was effect between 1981 and 1983. jury to resolve the factual wrong agreement, issue of other the “Technical As- (Li- ful means. Because the JMOL on sistance ruling Agreement” and License the tort claims impermissibly decided dis Agreement), cense year which had a 15 puted fact, duration, issues of material we reverse prohibited Louderback us- JMOL, the trial court’s vacate the ring to make verdict, jury’s pro and remand for further laser gyroscope anyone mirrors for but ceedings accordance with state law. Litton. *6 Consulting Because the Services Con- Conclusion expired tract in February at least judgment of the United year Honeywell one before contacted States District Court for the Central Dis- mirrors, Louderback to only obtain trict of affirmed-in-part, California is re- agreement that is at issue here is the
versed-in-part, vacated-in-part, and re- License Agreement. Agree- The License manded. ment identifies the Consulting Services separate Contract as a agreement and COSTS purport to extend the terms of party Each shall bear its own costs. the Consulting Services past Contract February 1983. The district court noted AFFIRMED-IN-PART, REVERSED- only that the by conduct Louderback that IN-PART, VACATED-IN-PART, AND Litton asserted as breaching the License REMANDED
Agreement was alleged Louderback’s BRYSON, in Judge, concurring fringement Circuit of the reissue and his part and in dissenting part. use of the sliding-target to mechanism Honeywell make mirrors in 1985. Be- agree I with the court that the doctrine cause properly concluded case, inapplicable in this occurred, that infringement any no breach I and therefore in concur the court’s deci- Agreement License must be based sion to affirm the district court’s on Louderback’s use of the sliding-target judgment of non-infringement of the '849 mechanism. dissent, however, reissue I the court’s decision to reverse the district sliding-target Use of the mechanism did court’s with respect to the two not breach the Agreement. License It is claims, state law tort for essentially the not among specifically enumerated same reasons in my dissenting set forth items of “Technical Information” that that informa- identifies as Louderback did not disclose agreement B of the
Schedule Litton, to be was to because he believed it and it not proprietary to his trade own secret. design change based on to be shown that would consti- information protected claim, Litton’s second tort interference Improvement” tute a “Modification fails prospective advantage, The License agreement. Agree- under the does not contain sub- because record it that does reach ment makes clear Honeywell that used stantial evidence designs.” new or different “completely means,” “wrongful required by as is that tort. Both the district court and this court that the also no evidence slid- There is appeal the first determined that ing-target mechanism became wrongful means either an act alleged were Consulting property pursuant to Ser- infringement or an inducement Consulting The Services vices Contract. obli- breach Louderback’s contractual shall have provides that “Litton Contract gations F.3d at to Litton. See 87 inventions, develop- ... all all rights at now that 1332. We have held (whether ments, or not and discoveries and, no as infringement explained occurred may conceive patented) which Consultant above, the record fails to show that there during ... Consul- or make “in- was inducement breach. Litton.” Both Litton and Loud- tant for unsupported terference” claim is therefore erback, however, recognized even by the at trial. evidence consulting period two-year during means, wrongful issue of Aside independent doing would be Louderback requires tort a show- interference also work, Consulting and the Services Con- intentionally acted developments made tract not reach does disrupt relationship with Litton’s business independently. working Louderback This court in the first Litton Louderback. sliding-tar- that the prove Litton did case found evidence of that conduct get developed during mechanism the acts of and intentional testified work for Litton. Louderback be- interference with contractual relations mecha- regarded sliding-target he tween Louderback Litton. See property, nism his and that he as own at at As from the separately maintained it proved, neither of those acts has been operated license he interference tort fails on that basis as well. Moreover, from Litton. the mechanism *7 in a previously had disclosed been the district court was cor- publicly and was therefore known. rect in as a matter of entering claims; state I there- law on two tort also that Louderback contends dissent this fore court’s decision obligations breached his contractual when portion reverse that of the district court’s improvements he certain failed to disclose judgment. mirror-making process to Litton. record, however, contains no evidence induced Louderback not to in question the information to Lit- disclose Rather,
ton. suggests the record