Lear Corporation v. NHK Seating of America Inc.
Filing
172
OPINION and ORDER Granting in Part Defendants' Motion to Compel 158 . Signed by District Judge Laurie J. Michelson. (EKar)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
LEAR CORPORATION,
Plaintiff,
Case No. 2:13-cv-12937
Honorable Laurie J. Michelson
v.
NHK SEATING OF AMERICA INC.,
NHK SPRING COMPANY, LTD and
NHK INTERNATIONAL INC.,
Defendants.
OPINION AND ORDER
GRANTING IN PART DEFENDANTS’ MOTION TO COMPEL [158]
Lear Corporation holds several patents directed toward an active headrest restraint
system in vehicles. Basically, these inventions use the force that the occupant’s back places
against the seatback during a car crash to move the headrest toward the occupant’s head, thus
reducing the whiplash the occupant experiences during the crash. Lear believes that three
related companies, NHK Seating of America, NHK Spring Company, and NHK International
(collectively “NHK”), are involved in making an active headrest restraint system that infringes
its patents. So, in 2013, Lear sued NHK.
The parties’ current dispute arises out of NHK’s inequitable conduct defense and
NHK’s desire to discover facts supporting that defense. NHK believes that Lear did not
disclose material information to the patent office during reexamination of one of the patents it
is accused of infringing. NHK wants to know why the information was not disclosed. So it
asks the Court to compel the deposition of the attorneys that handled the reexamination on
Lear’s behalf. The rub is that one of those attorneys is one of Lear’s attorneys in this case.
NHK also believes that Lear did not disclose material information to the patent office in
prosecuting three other patents that Lear has asserted in this lawsuit. So NHK also seeks to
depose the attorneys that prosecuted those patents. Having considered the parties’ briefs, the
Court will grant in part NHK’s motion to compel attorney depositions.
A brief explanation of inequitable conduct provides a backdrop for NHK’s motion. “To
prevail on the defense of inequitable conduct, the accused infringer must prove that the [patent]
applicant misrepresented or omitted material information with the specific intent to deceive
the [patent office].” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed.
Cir. 2011) (en banc). If, more likely than not, the information would have changed the patent
examiner’s decision to issue a patent or to permit a claim amendment, that information is
“material.” See id. at 1291–92 (“In making this patentability determination, the court should
apply the preponderance of the evidence standard.”). And “specific intent” means that when
examining all the circumstances, the “single most reasonable inference” is that the patent
applicant intended to deceive the patent examiner. Id. at 1290–91. The accused infringer must
present clear and convincing evidence of materiality and intent. Id. at 1287. Although that is a
tough task, completing it is a big win for the accused infringer: “the remedy for inequitable
conduct is the ‘atomic bomb’ of patent law. Unlike validity defenses, which are claim specific,
inequitable conduct regarding any single claim renders the entire patent unenforceable.” Id. at
1288 (internal citations omitted).
With that background, NHK’s motion to compel is more easily understood. As to three
of the patents it is accused of infringing—U.S. Patent Nos. 6,631,949 (the ’949 patent),
6,655,733 (the ’733 patent), and 7,455,357 (the ’357 patent)—NHK says that Lear did not
2
disclose a patent previously issued to James Schubring. In NHK’s view, had Lear disclosed
that prior art reference during prosecution, more likely than not, the patent examiner would
have found the inventions claimed in the ’949, ’733, and ’357 patents were not novel or were
obvious. (Schubring’s “invention relates to a dynamically responsive vehicle head restraint
assembly.” U.S. Patent No. 5,938,279.) And NHK says that it has proof that Lear knew about
the Schubring reference when it was prosecuting those three patents (according to NHK, the
Schubring patent was owned by Lear and prosecuted by the law firm that has done other work
for Lear). (ECF No. 158, PageID.5581.) So NHK concludes, it should be allowed to depose
the attorneys that prosecuted the ’949, ’733, and ’357 to determine why the Schubring
reference was not disclosed.
As a first step, depositions are disproportionate to NHK’s needs in this case. See Fed.
R. Civ. P. 26(b). NHK can instead serve interrogatories on Lear regarding the non-disclosure
of the Schubring reference during the prosecution of the ’949, ’733, and ’357 patents. Several
reasons support this ruling. For one, NHK has made little argument about the ’949, ’733, and
’357 patents and the Schubring reference—the focus of NHK’s motion to compel is the need
to depose the attorneys that handled the reexamination of the fourth patent that NHK believes
is not enforceable. (See generally ECF No. 158.) Indeed, NHK spends much effort explaining
why it should be able to depose Lear’s attorneys in this case, but it is not even clear that Lear’s
current counsel prosecuted the ’949, ’733, and ’357 patents. Second, while the Court
acknowledges Lear’s claim that it is not plausible that the Schubring reference was material or
that it had any intent to deceive, it appears that Lear has little objection to answering
interrogatories. Indeed, Lear argues that one reason that NHK should not be able to depose the
attorneys that prosecuted the ’949, ’733, and ’357 patents is because NHK could obtain the
3
information another way: through interrogatories. (ECF No. 160, PageID.5671.) Third, this
discovery option is well suited to provide the requested information. So, as a first step, the
Court will permit NHK to serve interrogatories directed to the non-disclosure of the Schubring
reference during the prosecution of the ’949, ’733, and ’357 patents. Those interrogatory
responses may well be enough for NHK. And if NHK believes they are insufficient, it may set
up a conference with the Court to explain the insufficiencies.
That leaves U.S. Patent No. 5,378,043 (the ’043 patent). Some backstory is again
helpful to understand NHK’s claim that the ’043 patent is unenforceable because of Lear’s
inequitable conduct.
The ’043 patent was issued in January 1995. When it issued, Claim 2 of the patent
stated in part:
A vehicle seat and headrest arrangement comprising:
a seat bun frame having fore and aft ends;
a seatback frame joined to the bun frame means adjacent the aft end of the bun
frame; and
a headrest pivotally attached with the seatback frame . . . wherein the headrest
has a cushion portion and an impact target operatively associated with the
cushion portion and pivotally associated with the seatback frame . . . .
U.S. Patent No. 5,378,043 col. 3 ll. 43–47 (Jan. 3, 1995) (emphasis added). The relevance of
the emphasized language, and in particular, the “headrest has . . . an impact target,” will
become apparent in a moment.
Skip ahead 11 years. In 2006, Lear accused NHK of infringing the ’043 patent. In
response to Lear’s accusation, NHK wrote a letter to Lear explaining why, in its view, the
active headrest restraint system it was developing did not infringe. NHK’s system had a lower
unit, which converted the passenger’s movement to power, and an upper unit, which moved
4
the head restraint. (ECF No. 158, PageID.5632) One line of NHK’s response to Lear stated,
“Upper and Lower units are installed to [the] seat back frame separately.” (Id. (emphasis
added).)
Skip ahead two more years. In August 2008, the patent office agreed to reexamine its
decision to issue the ’043 patent (the request may have been related to Lear’s then-pending
lawsuit against TS Tech). See Public Patent Application Information Retrieval, Control No.
90/009,250. For present purposes it suffices to know that “claims amended and issued during
reexamination cannot be broader than the original claims,” John Bean Techs. Corp. v. Morris
& Assocs., Inc., 887 F.3d 1322, 1327 (Fed. Cir. 2018). The reexamination of the ’043 patent
continued for years, finally concluding in 2013.
During the reexamination proceedings, Lear sought to amend Claim 2. Unlike the
version of Claim 2 when the ’043 patent issued, Lear’s proposed amendment expressly
separated the “impact target” from the headrest by adding (1) “; and” and (2) a new paragraph:
Claim 2 of the ’043 Patent in 1995
Lear’s Proposed Amendment
Reexamination of the ’043 Patent
During
A vehicle seat and headrest arrangement A vehicle seat and headrest arrangement
comprising . . .
comprising . . .
a headrest pivotally attached with the
seatback frame . . . wherein the headrest has
a cushion portion; and
a headrest pivotally attached with the
seatback frame . . . wherein the headrest has
a cushion portion and an impact target
operatively associated with the cushion
portion and pivotally associated with the
seatback frame . . . .
an impact target operatively associated with
the cushion portion and pivotally associated
with the seatback frame . . . .
U.S. Patent No. 5,378,043 col. 3 ll. 43–47.
(ECF No. 161, PageID.5787 (emphasis
added).)
5
Ultimately the patent examiner permitted an amendment to Claim 2 where the headrest
and impact target are expressly separated by a semicolon and a new paragraph. See Ex Parte
Reexamination Certificate, U.S. Patent No. 5,378,043 col. 1 ll. 38–39 (Dec. 11, 2012).
With that background, here is NHK’s claim of inequitable conduct. NHK argues that
when it responded to Lear’s claim of infringement by stating that its upper and lower units
were installed “separately,” it “explicitly explain[ed]” to Lear that its headrest and impact
target were two separate parts. (See ECF No. 158, PageID.5579.) In NHK’s view, Claim 2
originally claimed an invention where the headrest and impact target were one part: “the
headrest has a cushion portion and an impact target.” NHK says that only after it explained in
its letter that its headrest and impact target were two parts, did Lear amend Claim 2 during
patent reexamination to add “; and” and the new paragraph. In other words, NHK thinks Lear
attempted to broaden Claim 2 during the reexam by separating the impact target from the
headrest and thus cover NHK’s product. And the kicker, says NHK, is that Lear never told the
patent examiner that the reason it was trying to amend Claim 2 was that it was attempting to
cover NHK’s product. Instead, Lear merely told the examiner, “Claim 2 has been amended for
clarification by adding punctuation and removing a redundant conjunction (first recitation of
‘and’ succeeding a semi-colon).” (ECF No. 161, PageID.5781.) So, says NHK, Lear
intentionally withheld material information—the reason for the amendment of Claim 2—from
the examiner. And that’s inequitable conduct in NHK’s view. NHK thus seeks to depose the
attorneys that shepherded the ’043 patent through the reexamination process to back up its
theory.
Lear argues that because NHK’s inequitable-conduct theory is not even plausible, NHK
has no basis for discovering facts to support it (or, at least, not discovering them from the
6
attorneys that handled the reexamination of the ’043 patent). Lear believes that NHK’s theory
plainly fails on both materiality and intent. Lear argues that any statements that it made to the
examiner in support of its amendment of Claim 2 were not material because the examiner had
before him the text of the original and amended versions; the examiner could thus determine
for himself whether Lear’s proposal broadened the claim. (ECF No. 160, PageID.5662.) And
Lear points out that “the specific intent to deceive must be the single most reasonable inference
able to be drawn from the evidence.” (ECF No. 160, PageID.5663 (quoting Therasense, 649
F.3d at 1290).) Lear points out that the examiner permitted its amendment to Claim 2 and so
he must have found that the amendment did not broaden the claim (recall that claims cannot
be broadened during reexamination). This necessarily implies that “another reasonable
inference is possible, namely, that Lear believed the amendment did not enlarge the claim
scope.” (ECF No. 160, PageID.5663.)
But Lear overlooks an important aspect of NHK’s argument. To be sure, NHK
complains that Lear broadened Claim 2 during reexamination. But that is not NHK’s only gripe
about Claim 2. NHK also asserts that it was inequitable for Lear not to disclose to the examiner
that Lear had accused NHK of infringing the ’430 patent and that in response, NHK told Lear
that its headrest and impact target were separate. (ECF No. 158, PageID.5579; ECF No. 161,
PageID.5759.) In other words, NHK thinks that had the examiner known of its response to
Lear’s assertion of infringement, that the examiner would have viewed Lear’s addition of “;
and” as less than innocent. (ECF No. 158, PageID.5579.) In NHK’s view, the examiner would
have scrutinized Lear’s proposal more closely knowing that the motivation might be to cover
NHK’s product, and, in the end, would have found the change to have been impermissibly
broadening. Lear’s argument that the examiner could compare the text of the original claim
7
and the proposed amendment does not address NHK’s claim that the examiner’s view of the
amendment would have been affected by the reason for the amendment.
That said, the Court does have doubts about NHK’s theory. NHK responded to Lear’s
claim of infringement in 2006. Reexamination proceedings did not start until two years later,
in 2008. See Public Patent Application Information Retrieval, Control No. 90/009,250. Lear’s
“and ;” amendment to Claim 2 came still two more years later, in 2010. See id. Jan. 15, 2010
Office Action Response. Moreover, during the early part of the reexamination, Lear proposed
claim amendments but did not propose adding “and ;” and a new paragraph to Claim 2. See id.
May 6, 2009 Office Action Response. It was only after the examiner rejected Claim 2 in light
of a prior art reference, see id. Jan. 15, 2010 Office Action at 5, and stated that “the target is
part of the headrest,” id., that Lear proposed expressly separating the headrest from the target,
see May 6, 2009 Office Action Response. So on this limited record, it seems unlikely that what
motivated Lear to amend Claim 2 was NHK’s response to an infringement accusation four
years earlier.
But the record is limited and now at issue is discovery, not merits. And whatever doubts
the Court has about the inequitable conduct theory, it is not so implausible that NHK should
not have a chance to collect underlying facts.
So the question shifts from whether NHK should be allowed to discover facts about
why Claim 2 of the ’043 patent was amended to how NHK should discover those facts. The
means NHK proposes is the deposition of Michael Turner and Frank Angileri, attorneys that
represented Lear during the reexamination of the ’043 patent.
The Court does not believe that NHK should depose Angileri as a first step. Angileri is
representing Lear in this very litigation. And NHK concedes that because Angileri is counsel
8
in this case, it must satisfy the three elements of Shelton v. Am. Motors Corp., 805 F.2d 1323
(8th Cir. 1986), to depose him. (ECF No. 158, PageID.5583.) Namely, NHK must show “(1)
no other means exist to obtain the information; (2) the information sought is relevant and
nonprivileged; and (3) the information is crucial to the preparation of the case.” Nationwide
Mut. Ins. Co. v. Home Ins. Co., 278 F.3d 621, 628 (6th Cir. 2002) (ellipses omitted) (quoting
Shelton, 805 F.2d at 1327). Yet, NHK has not shown that deposing Turner, the other attorney,
is not another means to obtain the information that Angileri has. Turner signed the office action
responses during the reexamination (including the one where the amendment was proposed)
and so he may have been Lear’s primary attorney on the ’043 reexamination. And while
Angileri and Turner both met with the examiner about the amendment, NHK has not explained
why they think Turner’s recall of that meeting will be any less than Angileri’s. Perhaps after
deposing Turner, NHK can show why it needs to depose Angileri too. But at this point, the
Court is not convinced that it is necessary.
Permitting NHK to depose Turner as a first step would be the end of the matter except
for the fact that Lear thinks Shelton shields Turner too—even though Turner is not its counsel
in this case.
The Court is not persuaded. Lear cites Jaguar Land Rover Ltd. v. Bombardier
Recreational Prod., Inc., No. 16-CV-13386, 2018 WL 2276640 (E.D. Mich. May 18, 2018),
in support of its claim that Shelton shields non-litigation counsel. True, Jaguar says, “[t]he
Shelton opinion itself suggests that the applicability of the rule extends beyond trial counsel.
The Shelton court considered the application of the Shelton rule to a company’s supervising
in-house counsel, and not trial counsel.” Id. at *1. But in both Shelton and in Jaguar, in-house
counsel contributed significantly to the litigation strategy. See Shelton, 805 F.2d at 1328
9
(noting that in-house counsel “identified, selected, and compiled documents that are significant
to her client’s defenses in this case” and that “the selection and compilation of documents is
often more crucial than legal research”); Jaguar, 2018 WL 2276640, at *1 (finding that inhouse counsel was “properly categorized as litigation counsel because she oversees all
litigation for Plaintiff”). Here, it does not appear that Turner is involved in litigating this case
in any way.
Moreover, NHK’s deposition of Turner gives rise to none of the concerns that animate
the Shelton rule. In Shelton, the Eighth Circuit explained that courts should be reluctant to
allow an attorney to depose her counterpart in the case because permitting the deposition would
be a short cut to her counterpart’s strategy, would be disruptive to the litigation, would pull
opposing counsel’s attention away from the litigation, and would discourage the client from
speaking frankly to her counsel about the case (for fear that her counsel would be deposed).
Shelton, 805 F.2d at 1327. Because Turner does not represent Lear in this case, deposing him
does not present these concerns.
Moreover, the Eighth Circuit subsequently narrowed Shelton. It explained, “The
Shelton test was intend[ed] to protect against the ills of deposing opposing counsel in a pending
case which could potentially lead to the disclosure of the attorney’s litigation strategy. . . .
Shelton was not intended to provide heightened protection to attorneys who represented a client
in a completed case and then also happened to represent that same client in a pending case
where the information known only by the attorneys regarding the prior concluded case was
crucial.” Pamida, Inc. v. E.S. Originals, Inc., 281 F.3d 726, 730 (8th Cir. 2002); see also
aaiPharma, Inc. v. Kremers Urban Dev. Co., 361 F. Supp. 2d 770, 775 (N.D. Ill. 2005) (finding
Pamida “compelling” where “Defendants seek discovery [from Plaintiff’s law firm] about [the
10
firm’s] representation of [the Plaintiff] regarding the prosecution of the patents in suit, and not
about the underlying litigation”). Here, NHK seeks to depose Turner about reexamination
proceedings that long ago concluded; it does not seek to ask him anything about Lear’s
litigation strategy in this ongoing case.
* * *
In short, the Court will permit NHK to serve interrogatories directed to what Lear knew
about the Schubring reference during the prosecution of ’949, ’733, and ’357 patents. The
Court will also permit NHK to depose Turner for no more than three hours about the
amendment of Claim 2 of the ’043 during patent reexamination.
One last note. The Court anticipates that during the deposition of Turner or in answering
interrogatories, Lear will, at points, object based on privilege or work product. The Court hopes
that these will be used judiciously. Indeed, NHK has stated that it “will seek only nonprivileged discoverable information during the depositions.” (ECF No. 161, PageID.5762.)
SO ORDERED.
Dated: September 30, 2020
s/Laurie J. Michelson
LAURIE J. MICHELSON
UNITED STATES DISTRICT JUDGE
11
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?