NOKIA CORPORATION v. APPLE INC.

Filing 5

Memorandum in opposition to re 1 MOTION to Compel Deposition Testimony filed by SALVADOR M. BEZOS, RICHARD COLLER, GLENN PERRY, ROBERT STERNE. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit, # 8 Exhibit, # 9 Exhibit, # 10 Exhibit, # 11 Exhibit, # 12 Exhibit, # 13 Exhibit, # 14 Exhibit, # 15 Exhibit, # 16 Exhibit, # 17 Exhibit, # 18 Exhibit, # 19 Exhibit, # 20 Exhibit, # 21 Exhibit, # 22 Exhibit, # 23 Exhibit, # 24 Exhibit, # 25 Exhibit, # 26 Certificate of Service)(Pickard, Byron)

Exhibit 20

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(Cite as: 361 F.Supp.2d 770)

United States District Court,
N.D. Illinois,
Eastern Division.
aaiPHARMA, INC., Plaintiff,
v.
KREMERS URBAN DEVELOPMENT CO.,
Kremers Urban, Inc., Schwarz Pharma, Inc., Schwarz
Pharma USA Holdings, Inc., Schwarz Pharma Manufacturing, Inc., and Schwarz Pharma AG, Defendants.
No. 05 C 0537.
March 21, 2005.
Background: Alleged infringer accused of infringing
patents through its sale of a generic version of heartburn medication served subpoena on patentee's trial
counsel, and patentee and counsel moved to quash the
subpoena.
Holdings: The District Court, St.Eve, J., held that:
(1) alleged infringer's requested discovery was reasonably calculated to lead to the discovery of admissible evidence;
(2) objection that information sought was protected by
attorney-client privilege and work product immunity
did not require district court to quash alleged infringer's entire subpoena; and
(3) discovery sought was not unduly burdensome
because it was duplicative of previously-produced or
available evidence.

[2] Courts 106

West Headnotes
9

410 Witnesses
410I In General
410k7 Subpoena
410k9 k. Application and proceedings
thereon. Most Cited Cases

96(7)

106 Courts
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
106k88 Previous Decisions as Controlling
or as Precedents
106k96 Decisions of United States
Courts as Authority in Other United States Courts
106k96(7) k. Particular questions or
subject matter. Most Cited Cases
The law of the regional circuit, not the Federal
Circuit, applies to procedural issues not unique to
patent law.
[3] Patents 291

97.8

291 Patents
291IV Applications and Proceedings Thereon
291k97.7 Unenforceability of Patent; Inequitable Conduct or Fraud on Office
291k97.8 k. In general. Most Cited Cases
(Formerly 291k97)
The law requires patent applicants before the
Patent and Trademark Office (PTO) to prosecute patent applications with candor, good faith, and honesty.
[4] Patents 291

Motion denied.

[1] Witnesses 410

Motions to quash subpoenas are within the sound
discretion of the district court. Fed.Rules
Civ.Proc.Rule 26, 28 U.S.C.A.

97.8

291 Patents
291IV Applications and Proceedings Thereon
291k97.7 Unenforceability of Patent; Inequitable Conduct or Fraud on Office
291k97.8 k. In general. Most Cited Cases
(Formerly 291k97)
A breach of the duty of candor when prosecuting
patent may constitute inequitable conduct. 37 C.F.R. §
1.56(c).

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[5] Patents 291

291k292.3 Production of Documents

97.12
and Things

291 Patents
291IV Applications and Proceedings Thereon
291k97.7 Unenforceability of Patent; Inequitable Conduct or Fraud on Office
291k97.12 k. Failure to disclose material
information. Most Cited Cases
(Formerly 291k97)
Inequitable conduct when prosecuting patent can
arise from a failure to disclose information that is
material to patentability, along with an intent to deceive or mislead the Patent and Trademark Office
(PTO). 37 C.F.R. § 1.56(c).
[6] Patents 291

292.2

291 Patents
291XII Infringement
291XII(B) Actions
291k292 Discovery
291k292.2 k. Examination of parties and
others. Most Cited Cases
Alleged infringer in patent infringement case did
not have burden of showing that there were no other
means of obtaining requested information before it
could depose patentee's trial counsel regarding counsel's prior representation of patentee during prosecution of the patents in suit, for purposes of obtaining
information in support of its inequitable conduct defense. 37 C.F.R. § 1.56(c).

291k292.3(2) k. Subject matter. Most
Cited Cases
Alleged infringer's requested discovery regarding
which of patentee's attorneys were involved in prosecution of patents involved in underlying infringement
litigation, whether that involvement subjected those
attorneys to duty of candor before Patent and Trademark Office (PTO), and extent of their knowledge of
particular prior art was reasonably calculated to lead to
the discovery of admissible evidence regarding the
extent of attorneys' involvement in the prosecution of
the applications resulting in the patents in suit, and
whether those attorneys may have violated any duty of
candor that applied to any of patentee's attorneys or
agents. 37 C.F.R. § 1.56(c).
[9] Patents 291

291 Patents
291IV Applications and Proceedings Thereon
291k97.7 Unenforceability of Patent; Inequitable Conduct or Fraud on Office
291k97.12 k. Failure to disclose material
information. Most Cited Cases
(Formerly 291k97)
Duty of candor before Patent and Trademark Office (PTO) is not strictly limited to inventors and
prosecuting attorneys. 37 C.F.R. § 1.56(c).
[10] Patents 291

[7] Federal Civil Procedure 170A

97.12

292.3(2)

921

170A Federal Civil Procedure
170AVII Pleadings and Motions
170AVII(I) Motions in General
170Ak921 k. In general. Most Cited Cases
A party fails to properly raise an argument when it
makes the argument for the first time in its reply brief.

291 Patents
291XII Infringement
291XII(B) Actions
291k292 Discovery
291k292.3 Production of Documents
and Things
291k292.3(2) k. Subject matter. Most
Cited Cases

292.3(2)

Privileged Communications and Confidentiality
151
311H

291 Patents
291XII Infringement
291XII(B) Actions
291k292 Discovery

311H Privileged Communications and Confidentiality
311HIII Attorney-Client Privilege
311Hk144 Subject Matter; Particular Cases

[8] Patents 291

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311Hk151 k. Patents and trademarks. Most
Cited Cases
(Formerly 410k198(1))
Objection that testimony and documents sought
by alleged infringer regarding involvement of patentee's counsel in prosecuting patents involved in
underlying infringement litigation were protected by
attorney-client privilege and work product immunity
did not require district court to quash alleged infringer's entire subpoena; entire categories of requested
non-privileged information existed, and even within
the categories of discovery for which patentee and its
attorneys objected on the basis of privilege, there
appeared to be responsive information not subject to
any privilege.
[11] Patents 291

292.3(2)

291 Patents
291XII Infringement
291XII(B) Actions
291k292 Discovery
291k292.3 Production of Documents
and Things
291k292.3(2) k. Subject matter. Most
Cited Cases
Discovery requested by alleged infringer regarding involvement of patentee's counsel in prosecuting
patents involved in underlying infringement litigation
was not unduly burdensome because it was duplicative of previously-produced or available evidence;
even if alleged infringer had already received certain
information from patentee, the question of nature of its
attorneys' knowledge of that same information was a
separate issue relevant to alleged infringer's inequitable conduct theory.
*772 Paul H. Berghoff, James Carl Gumina, Kevin
Edward Noonan, McDonnell, Boehnen, Hulbert &
Berghoff, Ltd., Chicago, IL, for Plaintiff.
Beth A. O'Connor, Jones Day, Chicago, IL, Eric C.
Stops, Francis D. Cerrito, Jones Day, New York, NY,
for Defendants.
MEMORANDUM OPINION AND ORDER
ST. EVE, District Judge.
Plaintiff aaiPharma, Inc. (“AAI”) sued Defend-

ants Kremers Urban Development Co., Kremers Urban, Inc., Schwarz Pharma, Inc., Schwarz Pharma
USA Holdings, Inc., Schwarz Pharma Manufacturing,
Inc., and Schwarz Pharma AG (collectively “Defendants”) for patent infringement in the Southern
District of New York. Defendants served a subpoena,
issued from the Northern District of Illinois, on the
law firm of McDonnell Boehnen Hulbert & Berghoff
(“MBHB”), who serves as AAI's trial counsel in the
underlying action. AAI and MBHB move to quash
Defendants' subpoena under Federal Rule of Civil
Procedure 45. For the reasons discussed below, the
Court denies AAI and MBHB's Motion to Quash
Defendants' subpoena. As discussed in Section III of
the Analysis, the Court modifies Defendants' subpoena.
BACKGROUND
I. The Underlying Action in the Southern District
of New York
AAI sued Defendants for patent infringement in
the Southern District of New York, Case No. 02 CV
09628, pending before District Court Judge Barbara S.
Jones. In particular, AAI alleges that Schwarz Pharma's sale of a generic version of heartburn medication, Prilosec®, infringes two of AAI's patents.
MBHB is trial counsel for AAI in the underlying
action.
II. Defendants' Claims of Inequitable Conduct
Among other defenses, in the underlying action,
Defendants claim that AAI's asserted patents are unenforceable due to inequitable conduct. In general,
Defendants argue that during the prosecution of the
patents in suit, AAI knew about, but intentionally did
not disclose to the United States Patent & Trademark
Office (“USPTO”), the prior art activity of a third
party, AstraZeneca (“AZ”). The prosecution of the
patents in suit began at least as early as August 26,
1999, when AAI filed a provisional patent application.
The first of the patents in suit issued on July 31, 2001,
and the second such patent issued on December 4,
2001. During that period of time, Defendants contend
that MBHB was substantively involved in the prosecution of the patents in suit. In support of this theory,
Defendants point to several documents produced by
AAI in the underlying litigation, attached as Exhibits
2-8 to Defendants' Opposition. Based on this involvement in the prosecution of the patents in suit,
Defendants argue that MBHB may have been subject

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to a duty of candor before the USPTO relating to its
involvement with the AAI patent applications.
III. Defendants' Subpoena
Allegedly in order to determine the extent of
MBHB's involvement in the prosecution of the patents
in suit before the USPTO, Defendants served a Rule
45 subpoena on MBHB on January 7, 2005. Defendants' subpoena seeks deposition testimony from
MBHB related to the memorandum referenced in
entry number 123 on AAI's privilege log (Topic 1),
MBHB's work in formulating that memorandum
(Topics 1, 2, and 5), MBHB's *773 knowledge of
certain prior art and certain features of the technology
of the patents in suit (Topics 3, 4, and 6), the scope of
MBHB's work for AAI relating to the technology at
issue in the underlying action (Topic 7), MBHB's
process for complying with any duty of candor owed
to the USPTO for patent applications for AAI involving the technology in question (Topic 8), and
communications between MBHB and AAI's prosecution counsel regarding patent applications relating to
the technology in question (Topic 9). Defendants also
seek documents that, in general, correspond to the
above deposition topics.
IV. The Parties' Disputes Over AAI's Assertion of
Privilege in the Underlying Action
In the underlying litigation, the parties have had
multiple disputes regarding AAI's assertions of privilege regarding documents requested in that litigation
by Defendants. After an in camera review of a subset
of AAI's allegedly privileged documents, Magistrate
Judge Ellis, in the Southern District of New York,
ordered AAI to produce all documents that it was
withholding on the basis of privilege. AAI has produced most of those documents, but has requested that
Magistrate Judge Ellis clarify his order with respect to
a portion of those documents that AAI believes clearly
fall within the scope of the attorney-client privilege.
Magistrate Judge Ellis has agreed to review for a second time those documents in question. One of these
documents is the memorandum identified as entry 123
on AAI's privilege log. AAI's privilege log indicates
that this memorandum was dated June, 26, 2000, and
related to “patent prosecution strategy for Whittle/Sancilio patent application.” (Def.'s Corrected
Opp. Mot. at 9.) AAI's privilege log further describes
the memorandum as being “from outside counsel
providing legal advice regarding omeprazole patent
prosecution strategy.” (Id.)

LEGAL STANDARD
I. Motions to Quash
[1][2] The Federal Rules of Civil Procedure provide that a court shall quash or modify a subpoena if it
requires disclosure of privileged information or subjects a person to undue burden. FED.R.CIV.P.
45(c)(3)(A). A district court may quash or modify a
subpoena if it seeks discovery that is “unreasonably
cumulative or duplicative, or is obtainable from some
other source that is more convenient, less burdensome,
or less expensive; [or] the party seeking discovery has
had ample opportunity by discovery in the action to
obtain the information sought [ ].” FED.R.CIV.P.
26(b)(2). Motions to quash are within the sound discretion of the district court. Wollenburg v. Comtech
Mfg. Co., 201 F.3d 973, 977 (7th Cir.2000) (citing U.S. v. Ashman, 979 F.2d 469, 495 (7th
Cir.1992)).FN1
FN1. The law of the regional circuit, not the
Federal Circuit, applies to procedural issues
not unique to patent law. Lamle v. Mattel,
Inc., 394 F.3d 1355, 1358 (Fed.Cir.2005).
The Federal Circuit has stated that a motion
to quash a subpoena generally does not involve issues unique to patent law and therefore regional law governs such a
tion. Truswal Sys. Corp. v. Hydro-Air Eng'g,
Inc., 813 F.2d 1207, 1209 (Fed.Cir.1987).
II. Inequitable Conduct
[3][4][5] The law requires patent applicants before the USPTO to prosecute patent applications with
candor, good faith, and honesty. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed.Cir.1995). This
“duty of candor” applies to not only the inventor and
the prosecuting attorney or agent, but also “[e]very
other person who is substantively involved in the
preparation or prosecution of the application and who
is associated with the inventor, with the assignee or
with anyone to whom there *774 is an obligation to
assign the application.” 37 C.F.R. § 1.56(c). A breach
of the duty of candor may constitute inequitable
conduct. Molins, 48 F.3d at 1178. Inequitable conduct
can arise from a failure to disclose information that is
material to patentability, along with an intent to deceive or mislead the USPTO. Bruno Independent
Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394
F.3d 1348, 1351 (Fed.Cir.2005).

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ANALYSIS
AAI and MBHB first argue that deposition topics
1-4, and 8 and document requests 1-10 seek testimony
and documents that are not relevant to any claim or
defense raised by Defendants and not stayed in the
underlying case. Second, AAI and MBHB argue that
deposition topics 1, 5, 6, 7, and 9 and document requests 11-14 seek testimony and documents protected
by the attorney-client privilege and work product
immunity. Third, AAI and MBHB argue that deposition topics 2, 3, and 4 and document requests 3-10
seek testimony and documents that are unduly burdensome and unreasonably cumulative or duplicative,
or that Defendants can obtain from some other source
that is more convenient, less burdensome, or less
expensive.FN2
FN2. The Court notes that neither party offers any alternative to either quashing the
entire subpoena or allowing the entire subpoena to stand. Although the Federal Rules
permit the Court to modify the
na, FED.R.CIV.P. 45(c)(3)(A), neither party
has requested that, or provided any guidance
on how the Court may do so. As discussed in
Section III of this analysis, this limits the
Court's ability to specifically modify Defendants' subpoena.
I. Depositions of Trial Counsel
[6] As an initial matter, the Court addresses the
issue of the standard that it should apply in analyzing a
motion to quash a subpoena of trial counsel. For the
first time in their Reply brief, AAI and MBHB argue
that the Court should follow Shelton v. American
Motors Corp., 805 F.2d 1323 (8th Cir.1986). The
Eighth Circuit, in Shelton, held that before a party may
depose trial counsel, it must show that: “(1) no other
means exist to obtain the information than to depose
opposing counsel [ ]; (2) the information sought is
relevant and nonprivileged; and (3) the information is
crucial to the preparation of the case.” Id. at 1327. AAI
and MBHB further note that multiple courts in this
district have followed Shelton in certain circumstances
and placed a heavy burden on the party seeking to
depose opposing trial counsel.
[7] The Court first notes that AAI and MBHB did
not raise their argument regarding Shelton until their
Reply Brief. A party fails to properly raise an argument when it makes the argument for the first time in

its Reply Brief. Kelso v. Bayer Corp., 398 F.3d 640,
643 (7th Cir.2005). For that reason alone, the Court
declines to apply the strict standard of Shelton to the
facts here. The Court also notes that the Seventh
Circuit has not addressed the issue of whether the
Shelton rule applies in this circuit. Some courts in this
circuit have declined to follow Shelton. See Cook Inc.
v. CR Bard Inc., No. IP 00-1791, 2003 WL 23009047
(S.D.Ind. Sept.18, 2003) (affirming the Magistate
Judge's order allowing a deposition of trial counsel to
go forward, and decline to follow Shelton.) Judge
Shadur has also rejected the reasoning of Shelton and
allowed a party to depose opposing trial counsel.
See qad.inc. v. ALN Assocs., Inc., 132 F.R.D. 492
(N.D.Ill.1990).FN3
FN3. The Second Circuit, the location of the
underlying litigation, has also recently disagreed with the reasoning of Shelton. See In re
Subpoena Issued to Dennis Friedman, 350
F.3d 65 (2d Cir.2003); Resqnet.Com, Inc. v.
Lansa, Inc., No. 01 Civ. 3578, 2004 WL
1627170 (S.D.N.Y. July 21, 2004) (holding
in a patent case that the fact that the subpoenaed third party is trial counsel is just one
factor to consider in deciding whether to
quash that subpoena.) The analysis in in
Resqnet.Com, is particularly instructive.
There, the district court granted the motion to
quash the patentee's trial counsel who also
prosecuted the patents in suit. The court
made clear, however, that it granted the motion because the defendant in that case was
not asserting the defense of inequitable
conduct and therefore, there was little relevant information that the attorney could
provide. In this case, Defendants are asserting inequitable conduct and therefore the
discovery from attorneys involved in the
prosecution of the patents in suit is directly
relevant.
*775 As the court in the Cook case also recognized, the Court notes that the Eighth Circuit has limited Shelton to the depositions of trial counsel regarding their knowledge about the particular case in
which they served as trial counsel. Pamida, Inc. v. E.S.
Originals, Inc., 281 F.3d 726, 730 (8th Cir.2002)
(holding that the Shelton rule does not apply to depositions of attorneys about matters separate from the
matter in which the attorney is serving as trial coun-

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sel); Cook, 2003 WL 23009047, *1 n. 1. This reasoning is particularly compelling here, where Defendants seek discovery form MBHB about MBHB's
representation of AAI regarding the prosecution of the
patents in suit, and not about the underlying litigation.
Indeed, it would be unfair to accused patent infringers
if patentees could shield potentially harmful discovery
related to their knowledge of prior art merely by using
their prosecution counsel, or patentability opinion
counsel, as trial counsel. FN4
FN4. AAI and MBHB, themselves, refer to
the memorandum listed as entry 123 on
AAI's privilege log as an “opinion.” This
terminology suggests that counsel provided
the document in question to its client as part
of a legal service separate and apart from
MBHB's role as trial counsel. Indeed, courts
have developed a significant body of case
law regarding opinions-of-counsel in the
context of accused infringers using opinions
as a defense against a charge of wilful infringement. In that context, other courts have
noted that firms take on certain risks when
they choose to wear the dual hats of opinion
counsel and trial counsel. Novartis Pharmaceuticals Corp. v. EON Labs Mfg., Inc., 206
F.R.D. 396, 399 (D.Del.2002) (referring to
the arrangement of having opinion counsel
and trial counsel from the same law firm as
“risky” and “unconventional”).

those attorneys subject to the duty of candor before the
USPTO. Topics 2-4 relate to MBHB's knowledge of
particular prior art. Topic 8 relates to MBHB's actions
taken to comply with any duty of candor owed to the
USPTO. In particular, AAI and MBHB argue that
MBHB did not prosecute the patents in suit and
therefore was not subject to any duty of candor before
the USPTO. Therefore, according to AAI and MBHB,
any discovery related to MBHB's knowledge of prior
art is irrelevant. Defendants counter that under *776
USPTO Rule 56, MBHB attorneys could have been
subject to the duty of candor even though they did not
prosecute the patents in suit, as long as they were
substantively involved in that prosecution. Further,
Defendants argue that discovery in the underlying
action has shown that MBHB attorneys were in fact
substantively involved in that prosecution. In any
event, Defendants argue that the requested discovery
will show whether or not MBHB attorneys were substantively involved in the prosecution of the patents in
suit, and if so, what knowledge the attorneys had, if
any, regarding certain prior art.

Accordingly, the Court declines to require that
Defendants meet the heavy burden of Shelton in order
to obtain discovery from MBHB. The Court factors
MBHB's status as trial counsel and the associated risks
of obtaining discovery from trial counsel into its
analysis of AAI and MBHB's Motion to Quash under
the Federal Rules of Civil Procedure. See ALN Assocs., 132 F.R.D. 492; Resqnet.Com, 2004 WL
1627170.

[9] The Court agrees with Defendants that the
duty of candor is not strictly limited to inventors and
prosecuting attorneys. USPTO Rule 56 makes clear
that the duty also extends to anyone “substantively
involved in the preparation or prosecution of the application.” 37 C.F.R. § 1.56(c). While MBHB argues
that the duty of candor “does not extend to counsel
whose role is merely to opine on possible prosecution
strategies, and who is not involved in preparing or
prosecuting the patent-in-suit,” MBHB does not set
forth any authority showing that rendering a patentability opinion does not constitute “substantive involvement” in patent prosecution. Further, the Court
has examined the documents produced by AAI in the
underlying litigation, attached to Defendants' Opposition as Exhibits 2-8, and it is apparent that MBHB was
involved in AAI's prosecution of the patents in suit, at
least at some level. FN5

II. AAI and MBHB's Relevance Objections
[8] AAI and MBHB argue that the information
sought by Defendants' subpoena in Topics 1-4, and 8
and Document Requests 1-10 is not reasonably calculated to lead to the discovery of admissible evidence. Topic 1 seeks information regarding which
MBHB attorneys were involved in the prosecution of
AAI's patents involved in the underlying litigation and
whether that involvement was sufficient to render

FN5. The Court does not reach the conclusion that based on the evidence before it
MBHB was “substantively involved” in the
prosecution of the patents in suit such that it
was subject to the USPTO's duty of candor
for those patent applications. That is a decision ultimately for the district court in the
underlying action. Rather, the Court, here,
merely recognizes that there is evidence that

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tends to show that MBHB assisted AAI, in at
least a small way, in obtaining the patents in
suit. Therefore, there is a question in the
underlying litigation, as to whether MBHB
was subject to the duty of candor under
USPTO Rule 56. The requested discovery
from MBHB is likely to lead to the discovery
of admissible evidence related to that question of MBHB's duties.
The Court is not holding that it will permit defendants in patent infringement suits that are asserting
the defense of inequitable conduct to depose any law
firms associated with the patentee to determine
whether attorneys from the firm were “substantively
involved” in the prosecution of asserted patents. Here,
however, Defendants have produced significant evidence indicating that MBHB was involved, at least at
some level, with AAI's patent prosecution strategy for
the technology at issue in the underlying case. Accordingly, the discovery sought by AAI is likely to
lead to the discovery of admissible evidence regarding
the extent of MBHB's involvement in the prosecution
of the applications resulting in the patents in suit, and
whether MBHB may have violated any duty of candor
that applied to any of AAI's attorneys or agents.
III. AAI and MBHB's Privilege Objections
[10] AAI and MBHB argue that deposition topics
1, 5, 6, 7, and 9 and document requests 11-14 seek
testimony and documents protected by the attorney-client privilege and work product immunity and
therefore the Court should quash the subpoena. Defendants respond that not all of the requested information is privileged and therefore AAI and MBHB
can specifically object to deposition questions that are
privileged, where appropriate, and provide a privilege
log identifying responsive privileged documents.
*777 The Court agrees with Defendants that AAI
and MBHB's privilege objections are, in this case, not
sufficient to quash the entire subpoena. First, AAI and
MBHB do not raise a privilege objection to every
category of discovery. In other words, entire categories of requested non-privileged information exist.
Second, even within the categories of discovery
for which AAI and MBHB object on the basis of
privilege, there appears to be responsive information
not subject to any privilege. For instance, deposition
Topic 1, to which AAI and MBHB object on the basis

of privilege, requests information not only about the
memorandum referenced in entry number 123 on
AAI's privilege log, but also additional non-privileged
information about that memorandum, such as: the
client matter numbers used by MBHB, any legal fees
charged to AAI by MBHB, and all individuals of
MBHB who participated in drafting that memorandum. This information, specifically identified by Defendants in their subpoena, is likely to be
non-privileged, responsive information that is relevant
to the issue of whether MBHB's level of involvement
in the prosecution of the patents in suit subjected it to
the duty of candor before the USPTO.
Third, as both parties explain, the Magistrate
Judge in the Southern District of New York is currently reviewing AAI's claim to privilege regarding
the memorandum listed as entry 123 on AAI's privilege log, and other similar documents. The Southern
District of New York is the proper court to rule on the
privilege of these documents. It is more familiar with
the underlying facts, especially because it has already
reviewed in camera many documents from AAI's
privilege log. That court is also better situated to rule
on AAI's claims to privilege because AAI is already a
party in an action pending in that court, and AAI, as
the client of MBHB, is the owner of any privilege
attached to the memorandum in question. Because a
review of AAI's claims to privilege is underway, it
would not make sense to quash Defendants' subpoena
on the basis of that privilege, if it is possible that no
such privilege may exist.
Accordingly, the best procedure is for AAI to
assert its privilege objections for each particular
question or responsive document.FN6 See Hunt Int'l
Resources Corp. v. Binstein, 98 F.R.D. 689
(N.D.Ill.1983); see also Kaiser v. Mutual Life Ins. Co.
of
New
York,
161
F.R.D.
378,
380
(S.D.Ind.1994); Cooper v. Welch Foods, Inc., 105
F.R.D. 4, 6 (W.D.N.Y.1984).FN7
FN6. Similar to the issue of MBHB's involvement in the prosecution of the patents in
suit, the Court does not reach the issue of
whether any of the requested information is,
in fact, privileged. The Court understands
that the district court in the underlying action
has provided guidance on this issue and is in
the process of providing further guidance.
The Court expects the parties to closely abide

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361 F.Supp.2d 770
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by the Magistrate Judge's rulings regarding
privilege.
FN7. The Seventh Circuit, in reversing a
district court that quashed a subpoena on a
blanket privilege objection, has cited these
and other cases requiring a party to assert
privilege objections in a privilege log and for
the
appropriate
deposition
tions. National Labor Relations Bd. v. Modern Drop Forge Co., 108 F.3d 1379 (7th
Cir.1997). Because the Seventh Circuit did
not publish that decision, the Court does not
rely on it.
IV. AAI and MBHB's Objections that the Discovery Sought is Unduly Burdensome, Duplicative,
and Cumulative
[11] AAI and MBHB argue that the Court should
quash Defendants' subpoena as unduly burdensome
because the requested discovery is substantially duplicative of previously-produced or available evidence. Defendants respond that the *778 requested
discovery is not duplicative because it seeks to determine which documents were in the files of MBHB,
information it can only obtain from MBHB.
The Court agrees with Defendants that the requested discovery is not unduly burdensome because
it is duplicative. As Defendants explain, even if they
have already received certain information from AAI,
the question of the nature of MBHB's knowledge of
that same information is a separate issue relevant to
Defendants' inequitable conduct theory. Because there
is no clear manner for Defendants to discover this
information regarding MBHB's knowledge from
sources other than MBHB, the burden to MBHB in
providing the requested discovery is not undue.
See ALN Assocs., 132 F.R.D. at 495.
The Court also notes that an accused infringer
rarely proves a patentee's intent to deceive through
direct evidence. Abbott Labs. v. TorPharm, Inc., 300
F.3d 1367, 1380 (Fed.Cir.2002) (“intent to deceive
may be inferred from the surrounding circumstances
rather than by direct evidence”); Paragon Podiatry
Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1189-90
(Fed.Cir.1993) (noting that “smoking gun” evidence
of intent to deceive is rarely available and therefore
this element “must generally be inferred from facts
and circumstances surrounding the applicant's overall

conduct”). Therefore, the mere fact that Defendants
did not discover “smoking gun” evidence of intent to
deceive in discovery from AAI and prosecution
counsel, does not render cumulative all subsequent
discovery related to the issue of intent to deceive.
Accordingly, some overlap in the discovery requested
from MBHB and the discovery already taken from
AAI and its prosecution counsel does not render the
burden to MBHB undue.
AAI and MBHB specifically call the Court's attention to deposition topics 2, 3, and 4 in arguing that
these topics are facially overbroad and request information that is not limited to the underlying action or
the patents in suit. The subpoena limits Topic 2 to
relevant information given that the request is limited
to information “relating to the memorandum identified
by entry 123 on AAI's privilege log.” (AAI and
MBHB's Mot. to Quash at Ex. A, Sched. A.) Topics 3
and 4, however, extend to information unrelated to the
patents in suit because the subpoena does not limit
those topics to work related to the patents in suit. AAI
and MBHB have not proposed any modification to the
specific topics they contend are unduly burdensome.
Rather, they ask the Court to quash the entire subpoena on the basis of the undue burden imposed on
them. The Court will not quash the entire subpoena,
for all the reasons discussed in this Opinion. Also, the
Court is not inclined to specifically modify the language of Defendants' subpoena given that the parties
have not proposed any alternatives and due to the
Court's lack of familiarity with the underlying litigation. In general, however, the Court limits Defendants'
subpoena FN8 to information related to MBHB's work
for AAI related to the patents in suit FN9 or the technology involved in the patents in suit. It would be
unduly burdensome for MBHB to gather and provide
discovery related to its institutional knowledge of
certain information, unrelated to its representation of
AAI.
FN8. This relates to Deposition Topics 3 and
4, as well as any other Topic or Document
Request that requests information beyond the
scope of MBHB's work for AAI related to
either the patents in suit or the technology at
issue.
FN9. This includes any application or patent
related to the patents in suit, including foreign applications, continuation applications,

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361 F.Supp.2d 770
(Cite as: 361 F.Supp.2d 770)
divisional applications, or provisional applications.
*779 CONCLUSION
The Court denies AAI and MBHB's Motion to
Quash Defendants' subpoena. To the extent Defendants' subpoena seeks information beyond MBHB's
representation of AAI relating to either the patents in
suit or the technology involved in the patents in suit,
the Court modifies Defendants' subpoena to include
such limits.
N.D.Ill.,2005.
aaiPharma, Inc. v. Kremers Urban Development Co.
361 F.Supp.2d 770
END OF DOCUMENT

© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.