Dyson, Inc. et al v. Euro-Pro Operating LLC et al

Filing 278

ORDER: For the reasons more fully discussed below, the Motion to Compel 244 filed by Defendants SharkNinja Operating LLC and SharkNinja Sales Company (collectively, "Shark") is granted in part and denied in part. [For further details see order] - Signed by the Honorable Susan E. Cox on 9/28/2016. Mailed notice (np, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
DYSON, INC. and DYSON
TECHNOLOGY LIMITED,
Plaintiffs,
v.

SHARKNINJA OPERATING LLC and
SHARKNINJA SALES COMPANY
Defendants.

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1:14-cv-0779

Magistrate Judge Susan E. Cox

ORDER
For the reasons more fully discussed below, the Motion to Compel [244] filed by
Defendants SharkNinja Operating LLC and SharkNinja Sales Company (collectively, “Shark”) is
granted in part and denied in part.
I.

Background

For the purposes of the instant motion, the Court assumes familiarity with the background
facts in this suit, which were covered in Judge Darrah’s Memorandum Opinion and Order
denying Defendants’ Motion for Summary Judgment of Noninfringement entered on September
2, 2015. (Dkt. 125.) Shark filed the instant motion to compel, seeking to compel responses to
Shark’s Interrogatories Nos. 10 and 17.
During the pendency of this suit, Plaintiffs Dyson, Inc. and Dyson Technology Limited
(collectively, “Dyson”) “filed paperwork to correct the inventorship” of two of the design patents
at issue in this suit (the “’010 and ‘823 patents”). (Dkt. 241 at 3.) Dyson had previously alleged
that a foreign priority date of August 27, 2010 applied to the ‘010 and ‘823 patents, and listed the

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inventors as Timothy Stickney, James Dyson, and Peter Gammack. (Dkt. 241 at 2-3.) On March
31, 2016, in response to Shark’s interrogatories, and more than a year after Dyson’s Final
Infringement Contentions were filed, Dyson claimed that the ‘010 and ‘823 patents had a priority
date of March 6, 2006. (Dkt. 244 at 4.) Shark contends these changes are intended to avoid
prior art that would render Dyson’s patents invalid. (Dkt. 244 at 2.) Dyson asserts that these
changes resulted from information gleaned from notebooks and sketches reviewed during the
course of discovery. (Dkt. 241 at 7.)
On April 25, 2016, Dyson filed two Requests to Correct Inventorship Under 37 C.F.R. §
1.324 with the United States Patent and Trademark Office (“PTO”) that sought to remove
Timothy Stickney as a named inventor on the ‘010 and ‘823 patents. (Dkt. 244, Exs. 6-7.) Both
of these requests included statements from Mr. Stickney, Mr. Gammack, and Mr. Dyson, which
read: “I agree to the change of inventorship to delete [Mr. Stickney] as an inventor.” (Id.) At his
deposition, Mr. Dyson testified that he was asked to sign these statements by his attorneys, and
that the reason for the change in inventorship was “probably” explained to him by his attorneys
before he signed the statement. (Dkt. 244, Ex. 8 at 90:10-91:5.)
Needless to say, Shark feels that it is entitled to additional discovery on inventorship,
priority dates, and Dyson’s reasoning for changing them years into the instant suit. At issue in
the instant motion are Shark’s Interrogatory 10 and Interrogatory 17. Interrogatory 10 seeks to
have Dyson “identify and describe each Named Inventor’s and any other person’s contribution to
the claimed design . . . including . . . the date(s), location(s), the relevant portion(s) of the
claimed design involved, an identification of all witnesses who can corroborate such
contribution, and an identification of all documents corroborating such contribution.” (Dkt. 244,
Ex. 4.) In response, Dyson provided a table with each named inventor, their contribution, and

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the location. (Id.) The location for all ‘010 and ‘823 patents is Malmesbury, Great Britain. (Id.)
As for the contribution, each entry states “[c]ollective contribution to overall design.” (Id.)
Interrogatory 17 appears to seek information regarding the decision to remove Timothy
Stickney as a named inventor on the ‘010 and ‘823 patents. It demands certain information
regarding “each and every determination by Dyson of who does or does not qualify as a proper
inventor” of the patents in the suit, including “(a) the specific date of each such determination;
(b) the complete factual and legal basis for each such determination; (c) each individual involved
in making each such determination . . .; (d) all documents considered in making or otherwise
relating to each such determination; and (e) all communications relating to each such
determination.” (Dkt. 244, Ex. 5.) After objecting to the Interrogatory on the basis of attorneyclient privilege and the work product doctrine, Dyson responded that “around February and
March 2016, Dyson’s investigation during discovery in this case revealed that the invention
claimed in the ‘010 and ‘823 patents was conceived and reduced to practice before Tim Stickney
was involved and that he was incorrectly included as an inventor.” (Id.) In other words, the new
priority date alleged by Dyson would make it impossible for Mr. Stickney to have been involved
with the conception of the inventions embodied in the ‘010 and ‘823 patents. Therefore, the
change in inventorship is directly related to Dyson’s relatively new claim that priority date is
March 6, 2006, not August 27, 2010. Shark has moved for an order compelling Dyson to
provide more complete responses to Interrogatory Nos. 10 and 17.
II.

Discussion
A.

Interrogatory 10

Shark moves for this Court to enter an order compelling Dyson to “provide a thorough
and detailed response to Interrogatory No. 10” because “Dyson’s five-word response is facially

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deficient.” (Dkt 244 at 9.) The information sought by Shark is clearly relevant, and Dyson does
not argue otherwise. Section 102(f) of the patent code “mandates that a patent accurately list the
correct inventors of a claimed invention,” and misjoinder or nonjoinder of inventors will render a
patent invalid. Pannua v. Iolab Corp., 155 F.3d 1344, 1349 (7th Cir. 1998). “[A] joint invention
is simply the product of a collaboration between two or more persons working together to solve
the problem addressed” by their invention, and Section 116 of the patent code “sets no explicit
limit on the quantum of quality of inventive contribution required for a person to qualify as a
joint inventor.” Fina Oil and Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).
“However, a joint inventor must contribute in some significant manner to the conception of the
invention,” and each joint inventor “must contribute to the joint arrival at a definite and
permanent idea of the invention as it will be used in practice.” Id. Thus, if Shark can prove that
James Dyson or Petter Gamack did not meet the necessary quantum of contribution to be named
a co-inventor on the ‘010 or ‘823 patents (i.e., misjoinder), or that Tim Stickney or some other
Dyson employee was not named as a co-inventor despite having contributed in a way that would
qualify them to be so named (i.e., nonjoinder), the patents will be rendered invalid.
According to Shark, it “is entitled to know the factual basis for Dyson’s contention that
Mssrs. Dyson and Gammack, and only those two, jointly conceived the claimed designs,” and “it
would be fundamentally unfair to permit Dyson to dramatically change its invention story
without being required to provide the facts that allegedly support its new theories.” (Dkt. 244 at
9.) However, Shark’s argument presupposes that the only manner of uncovering the “facts” or
the “factual basis” underlying Dyson’s decisions and theories is through interrogatory responses.
In its brief in response to the instant motion, Dyson notes that it has produced scores of
laboratory notebooks, emails from several Dyson employees (including James Dyson and Peter

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Gammack), and its patent prosecution files, among other materials.

(Dkt. 241 at 8.)

Additionally, at the time the motion was filed, Shark had had the opportunity to take the
depositions of James Dyson and Peter Gammack, 1 and several additional Dyson employees. In
other words, Shark is not being denied any facts.
Although Shark may not like the answer it received to this interrogatory, this Court does
not believe that Dyson’s response to Interrogatory Number 10 is obscuring facts related to
inventorship from Shark, or that the response in inaccurate. The testimony in the case suggests
that Mr. Dyson and others cannot recall who contributed what during the invention process, and
Dyson’s response to Interrogatory Number 10 is consistent with that testimony. Other courts
have recognized that precise recollection of each individual’s contribution to a design may be
difficult to come by when an invention is created in a group setting. See Canon Comp. Sys. Inc.
v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998). None of the cases that Shark cites
stand for the proposition that a party must articulate with exacting detail each co-inventor’s
contribution in an interrogatory response, and the Court does not believe that such a response is
required. Moreover, to the extent that Mr. Dyson or any other witness produced by Dyson is
unable to provide a coherent, consistent version of how the designs underlying the ‘010 and ‘823
patents were created at trial, that failure is just as likely to cut in favor of Shark’s potential
invalidity defenses (i.e., by tending to prove that the inventors themselves have no recollection as
to their supposed contributions, which is indicative of misjoinder) as it is to prevent Shark from
proving those defenses. Therefore, the motion is denied as to Interrogatory Number 10.
B.

Interrogatory 17

Shark makes two arguments related to Interrogatory Number 17: 1) the “underlying

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Mr. Dyson’s deposition took place after the Request to Correct Inventorship had been filed, and Shark had ample
opportunity question Mr. Dyson on the issues raised by Interrogatory Number 10.

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technical facts provided for use in preparing submissions to the Patent Office” are not protected
by attorney-client privilege or the work product doctrine, and 2) Dyson waived any claim to
attorney-client privilege or the work product doctrine “by petitioning the Patent Office to change
inventorship of the asserted patents and relying on the supporting inventor declarations of Mr.
Dyson.”

(Dkt. 244 at 10-11.) The Court believes that Dyson has waived the attorney-client

privilege as it relates to issues of inventorship over the ‘010 and ‘823 patents for the period of
time between February 1, 2016 (when Dyson claims to have discovered that its priority date
March 6, 2006, thereby necessitating the inventorship change) and April 21, 2016 (the date of
Mr. Dyson’s statement before the PTO).
Controlling Federal Circuit precedent holds that a party puts its attorney’s advice “at
issue” in a case – and waives its rights to assert the attorney-client privilege – when it relies on a
statement based on the advice of an attorney in an effort to obtain a certificate of correction, and
the party uses that certificate of correction to prove issues related to enforceability in a patent
suit. 2 In Winbond Electronics Corp. v. International Trade Commission, 262 F.3d 1363, 1368
(Fed. Cir. 2001), the patent owner filed a complaint with the International Trade Commission
(“ITC”) alleging that the defendants had violated the Tariff Act of 1930 by importing and selling
products that infringed on the relevant patent. The defendants argued that the patent was invalid
for nonjoinder because the patent failed to list an engineer who qualified as a co-inventor. Id.
Following a hearing, the administrative law judge (“ALJ”) “concluded that an incorrect listing of
inventors prevented enforcement” of the patent; the ITC upheld the ALJ’s opinion. Id. The
month after the ITC’s decision, the patent holder petitioned the PTO to add the missing engineer
as an inventor on the patent. Id. at 1368-69. The petition included a statement from the engineer
2

The law of the Federal Circuit is controlling here because the issue of inventorship and priority dates are
substantive patent law issues. In re Method of Processing Ethanol Byproducts, 2014 WL 2938183, at *1 (S.D. Ind.
June 30, 2014).

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that: “the standard for inventorship as it relates to the '903 patent has been explained to me.
Based on my understanding of that standard, I hereby state that I have made an inventive
contribution to the subject matter claimed in the '903 patent, whereby I am a co-inventor of the
claimed subject matter of the '903 patent.” In re Certain Eprom, Eeprom, Flash Memory, and
Flash Microcontroller Semiconductor Devices, and Products Containing Same, USITC Inv. No.
337-TA-395, USITC Pub. No. 3392, 2001 WL 242553, at *9 (Oct. 16, 2000). The petition was
granted, and the patent owner sought a rehearing before the ITC on the issue of proper
inventorship; the ITC remanded the case to the ALJ, who ordered the patent holder “to produce
attorney-client privileged and work product protected documents concerning the inventors” of
the patent. Winbond, 262 F.3d at 1369. On review of the ALJ’s second decision, the ITC
determined that the patent holder “placed at issue the advice of counsel by its affirmative act of
petitioning the Commission for reconsideration of the inventorship issue based on a certificate of
correction . . . issued by the PTO.” Id. On appeal, the Federal Circuit affirmed the ITC’s
decision on the issue of waiver.
In this case, Dyson filed two Requests to Correct Inventorship Under 37 C.F.R. § 1.324,
each of which included statements from Mr. Stickney, Mr. Gammack, and Mr. Dyson. The
statements all state: “I agree to the change of inventorship to delete [Mr. Stickney] as an
inventor.” 3 At his deposition, Mr. Dyson testified that he did not recall the precise conversation

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Dyson argues that it has not waived the privilege because Mr. Dyson’s statement does not specifically divulge any
privileged information. A similar argument was raised and rejected in Winbond before the ITC. In relevant part,
that decision states: “Atmel does not seriously dispute that the explanation referred to in Gupta's statement to the
PTO was given by counsel. Rather, Atmel contends that because Gupta's statement to the PTO did not specifically
state that he was relying on counsel's advice, it did not place that advice in issue. We are not persuaded by Atmel's
argument that particular language is necessary to place counsel's advice at issue. The circumstances of this case
allow for no interpretation other than that Gupta relied on the advice of counsel in coming to his conclusion that he
was an inventor of the ' 903 patent. In deposition testimony taken in related district court litigation between Atmel
and Macronix, Gupta expressly admitted that his statement to the PTO, as well as his change of position on the
inventorship issue, was based solely on his reliance on advice provided by Atmel's attorneys.” In re Certain Eprom,

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with his attorneys, but that the explanation for the change in inventorship was “probably”
explained to him by his attorneys before he signed the statement. Put another way, the reason
that Mr. Dyson “agree[d]” to the change of inventorship was his attorneys’ explanation.
Although the statement in Winbond explicitly stated that inventorship standard had been
“explained” to the engineer (presumably by his attorneys), the Court believes that the one-degree
of removal in the instant suit is a distinction without a difference. There is no meaningful
difference between stating that an attorney has “explained” the inventorship standard and stating
that you “agree” with an attorney’s conclusion that an co-inventor did not meet the legal
threshold necessary to be a named inventor on a patent.
Like the patent holder in Winbond, Dyson has placed the advice of counsel at issue by
petitioning the PTO to correct the inventors of the ‘010 and ‘823 patents during the pendency of
a law suit that Dyson initiated to enforce its rights under those patents.

The change of

inventorship was precipitated by the new priority date that Dyson is now claiming, and may have
drastic effects on the enforceability of the ‘010 and ‘823 patents. As such, it has waived its
protections under the attorney-client privilege or the work product doctrine. As noted above, the
scope of that waiver is limited to the subject matter and temporal scope implicated by Dyson’s
attempt to change the inventors on the relevant patents. Therefore, the Court finds that the
privilege is only waived on the issue of inventorship and only between February 1, 2016, and
April 21, 2016.
Dyson argues that Winbond is not applicable to this case because the declaration to
correct inventorship in that case was submitted at a time when 35 U.S.C. § 256 “required the
patent owner to prove that the inventorship error ‘arose without any deceptive intent’ by the

Eeprom, Flash Memory, and Flash Microcontroller Semiconductor Devices, and Products Containing Same, 2001
WL 242553, at *13.

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patent owner.” (Dkt. 241 at 13.) The Court does not see why the change in law is relevant to the
issue of waiver, and Dyson does not offer an explanation on this front. Neither the ITC nor the
Federal Circuit based their opinion on the deceptive intent issue; the crucial issue in Winbold was
that the petition sought to correct inventorship, which is a legal issue, based on the advice of
counsel, and that the patent holder had put that advice of counsel at issue in the case by seeking
to argue enforceability of the patent based on the corrected inventorship.
The case cited by Dyson also does not support its position.

See in re Method of

Processing Ethanol Byproducts, 2014 WL 2938183, at *3-4 (S.D. Ind. June 30, 2014). Dyson
selectively quotes and highlights language regarding good faith dealings with the PTO and
argues that those passages are evidence that courts “have recognized that [Winbond] applies only
to express waiver and reliance on advice of counsel.” First, the Ethanol Byproducts case
concerned waiver in the context of disclosures to the PTO in the prosecution of a patent, not in
the context of seeking a correction of inventorship. This is important because consulting with an
attorney to determine what is disclosed to the PTO in the initial patent prosecution is “nothing
more than a routine state of affairs for every patent prosecution client who is represented by an
attorney before the PTO.” Id. at *3. Conversely, deleting a co-inventor from a patent is not a
routine state of affairs, and submitting a statement to the PTO based on advice of counsel
regarding inventorship in order to change the priority of a patent that is the subject of a severalyears-old patent law suit it is substantively different than the factual scenario in Ethanol
Byproducts.
Furthermore, this Court disagrees with the description of Winbond in the Ethanol
Byproducts case that “the client had voluntarily used the fact and content of his attorney’s advice
to explain away the alleged inequitable conduct before the PTO.” Id. That statement conflates

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the two issues; a review of the ITC’s decision in Winbond demonstrates that the issues of
inequitable conduct and waiver were separate issues. See In re Certain Eprom, Eeprom, Flash
Memory, and Flash Microcontroller Semiconductor Devices, and Products Containing Same,
2001 WL 242553, at *14 (“Our decision to find waiver is not based simply on the fact that
Amtel’s attorneys explained the inventorship issue to Gupta and Gupta acted upon that
explanation. . . or the fact that inequitable conduct on the part of Amtel was alleged”). The ITC
found that the patent holder had waived the attorney-client privilege by relying on the certificate
of correction and the underlying engineer statement (which was based on advice of counsel) in
an attempt to have the ITC reconsider the enforceability of the patent. Id. at *14. Dyson is
engaging in similar activity here. Dyson’s change of inventorship is borne from its claim that it
has discovered a newer, earlier priority date for the ‘010 and ‘823 patents. As such, Dyson is
taking affirmative steps that have changed its allegations in the instant suit, which were based on
the advice of counsel, thereby putting that advice “at issue.” This case fits squarely within the
principles articulated by Winbond, and this Court sees no compelling reason to depart from that
ruling.

Dyson has waived attorney client privilege over the issue of inventorship for

communications between February 1, 2016, and April 11, 2016, and is ordered to respond fully
to Interrogatory Number 17. 4

CONCLUSION
For the reasons more fully discussed above, the Motion to Compel [244] filed by
Defendants Shark is granted in part and denied in part. The motion is denied as to Interrogatory
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The Court also notes that much of the information requested in Interrogatory Number 17 would not be privileged
in any event. For example, simply identifying the factual and legal basis for its determination regarding
inventorship does not require Dyson to divulge privileged communications. Likewise, naming the individuals
involved in making the determination (even if some are lawyers) does not impinge on any privilege. Nor would
listing the documents considered call for privileged information, any documents are that are privileged can be
identified and listed on Dyson’s privilege log without requiring their production. Dyson should be sure to provide a
complete answer to Interrogatory Number 17 that includes this non-privileged information as well.

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Number 10, and granted as to Interrogatory Number 17.

ENTERED:

DATED: September 28, 2016

_____________________________
Susan E. Cox
United States Magistrate Judge

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