Clayton Corporation v. Momentive Performance Materials, Inc. et al

Filing 132

MEMORANDUM AND ORDER IT IS HEREBY ORDERED that Defendants Motion to Compel is GRANTED. (Doc. No. 118.) IT IS FURTHER ORDERED that the Plaintiff shall produce the requested information within seven (7) days of the date of this Order, subject to any ne cessary amendments to the protective order agreed upon by the parties. IT IS FURTHER ORDERED that Defendants motion for leave to file a supplemental memorandum in support of their motion to compel is DENIED as moot. (Doc. No. 128.) The Court did not rely on Defendants proposed supplemental memorandum in ruling on Defendants motion to compel. ( Response to Court due by 4/28/2015.) Signed by District Judge Audrey G. Fleissig on 4/21/15. (JWJ)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

CLAYTON CORPORATION,
Plaintiff,
v.
ALTACHEM NV, et al.,
Defendants.

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Case No. 4:12-cv-01349-AGF

MEMORANDUM AND ORDER
This matter is before the Court on the motion (Doc. No. 118) of Defendants Lindal
North America, Inc. and Altachem NV (collectively, “Defendants”) to compel Plaintiff
Clayton Corporation (“Clayton”) to produce the complete laboratory notebooks for the
named inventors of the patent-in-suit, U.S. Patent No. 7,984,834 (“the ’834 Patent”). For
the reasons set forth below, the Court shall GRANT Defendants’ motion.
BACKGROUND
Plaintiff’s ’834 Patent describes and claims a valve stem made of a glass-filled
polyolefin that resists the adherence of a moisture curable foam, such as polyurethane
foam, to the valve seal even if the foam in the containers has hardened. The claimed
invention purports to improve on previous valve designs by adding glass to the valve
stems to avoid valve-sticking problems. Defendants have made several requests for
Clayton to produce all documents concerning the ’834 Patent, including all laboratory
notebooks concerning the conception, design, testing, reduction to practice, and

development of the claimed invention. In response to these requests, Clayton produced
“portions” of its inventors’ laboratory notebooks which Clayton identified as “related” to
the invention described in the ’834 Patent. (Doc. No. 123 at 4.)
Defendants assert that Clayton has only produced “a few pages” from the
notebooks, “on the basis that ‘only pages dealing with the non-sticking valve
development’ are relevant to this case.” (Doc. No. 119 at 1.) Specifically, Defendants
assert that Clayton has only produced excerpts from eight of the laboratory notebooks,
and has entirely refused to produce the remaining twelve notebooks, all of which
Clayton’s notebook directory indicates belong to the named inventors of the ’834 Patent.1
Defendants argue that all of the notebooks are relevant to the design, development,
conception, diligence, and inventorship of the alleged invention of the ’834 Patent, and
must therefore be disclosed in accordance with Local Patent Rule 3-2(b). Defendants
also argue that all of the notebooks are relevant to their defense that the asserted claims of
the ’834 Patent are obvious. Defendants have alleged that persons of skill in the art
would have been motivated to add glass to the valve stems to increase the strength of
those valve stems, and Defendants dispute Clayton’s claim that there was a “long-felt
need” for the claimed invention.
Moreover, Defendants emphasize that the Court has entered a protective order in
this case, (Doc. No. 99), which allows Clayton to produce the laboratory notebooks as
“confidential – attorneys’ eyes only – prosecution bar information.” Thus, Defendants
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Defendants assert that Clayton has produced excerpts of laboratory notebooks
numbered 129, 130, 136, 137, 149, 167,175, and 178, and has refused to produce
notebooks numbered 100, 103, 106, 109, 112, 115, 119, 121, 124, 127, 133, and 177.
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assert that Clayton cannot show that it will be prejudiced by the production of the
complete laboratory notebooks, because the protective order prevents Clayton’s
competitors from receiving any information contained in the notebooks, and prevents
Defendants’ counsel from using that information for patent prosecution.
In response, Clayton contests the relevance of the complete laboratory notebooks,
and maintains that “the sought-after portions of the notebooks are so far removed from
the subject matter of this lawsuit that the prosecution bar effectively offers no
protection.” (Doc. No. 123 at 8.) Instead, Clayton offers to produce the redacted
versions of these notebooks and to allow Defendants’ counsel to inspect the complete
notebooks in person. However, Clayton states that it will only “consider” requests to
produce copies of any specific information identified by Defendants’ counsel during this
inspection. (Doc. No. 123 at 7.)
In reply, Defendants argue that Clayton should not be allowed to redact the
notebooks based on its own view of relevance. Defendants assert that there is no support
for redacting allegedly irrelevant material under the Federal Rules of Civil Procedure,
and that allowing such redactions would be at odds with the Rules’ liberal discovery
policies. Defendants maintain that the protective order in this case is sufficient to protect
any confidential or proprietary information in the laboratory notebooks.
DISCUSSION
Federal Rule of Civil Procedure 26(b)(1) provides that “[p]arties may obtain
discovery regarding any nonprivileged matter that is relevant to any party’s claim or
defense.” Fed. R. Civ. P. 26(b)(1). Under this Rule, “[r]elevant information need not be
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admissible at the trial if the discovery appears reasonably calculated to lead to the
discovery of admissible evidence.” Id. Furthermore, in this district, plaintiffs in patent
infringement cases “must produce to each Alleged Infringer or make available for
inspection and copying . . . [a]ll documents evidencing the conception, reduction to
practice, design, and development of each claimed invention, which were created on or
before the date of application for the patent(s)-in-suit . . . .” Local Patent Rule 3-2(b)
(emphasis added).
Although courts have discretion to limit discovery that is unreasonably
cumulative, duplicative, burdensome, or expensive, Fed. R. Civ. P. 26(b)(2)(C), none of
those grounds have been asserted by Clayton in this case. Instead, Clayton seeks to limit
discovery on the grounds that the non-disclosed materials contain proprietary information
that is unrelated to the subject-matter of this lawsuit. However, the Federal Rules
promote a “broad and liberal policy of discovery for the parties to obtain the fullest
possible knowledge of the issues and facts before trial.” In re MSTG, Inc., 675 F.3d
1337, 1346 (Fed. Cir. 2012) (citation omitted); see also Beverage Distribs., Inc. v. Miller
Brewing Co., No. 2:08-CV-1112, 2010 WL 1727640, at *4 (S.D. Ohio Apr. 28, 2010)
(finding that “redaction of otherwise discoverable documents is the exception rather than
the rule,” and “that ordinarily, the fact that the producing party is not harmed by
producing irrelevant information or by producing sensitive information which is subject
to a protective order restricting its dissemination and use renders redaction both
unnecessary and potentially disruptive to the orderly resolution of the case”).

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Here, Clayton does not dispute that the laboratory notebooks sought by
Defendants contain at least some relevant information. In particular, the notebooks may
contain information relevant to the conception, design, and development of the claimed
invention in the ’834 Patent. In addition, whereas the claimed purpose of the ’834 Patent
is to solve the valve-sticking problem, Defendants allege that the named inventors’ true
motivation for the invention may have been to increase the strength of those valves.
Thus, the notebooks belonging to the named inventors may also contain information
relevant to the Defendants’ asserted defense of obviousness. See, e.g., Monarch Knitting
Machinery Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed. Cir. 1998) (“To
ascertain the scope of the prior art [relevant to the obviousness inquiry], a court examines
the field of the inventor’s endeavor, and the particular problem with which the inventor
was involved . . . . Defining the problem in terms of its solution reveals improper
hindsight in the selection of the prior art relevant to obviousness.”).
The Court acknowledges Clayton’s contentions that the named inventors worked
on numerous other projects, and that their laboratory notebooks, while relevant in some
respects, may also contain information unrelated to the ’834 Patent. Although production
of such information may present confidentiality concerns in patent cases, that is precisely
why there is a protective order in place. See, e.g., ArcelorMittal Cleveland Inc. v. Jewell
Coke Co., No. 1:10–CV–00362, 2010 WL 5230862,*3-4 (N.D. Ohio, Dec. 16, 2010)
(finding the confidentiality concern compelling in a case involving competitors, but
nevertheless ordering production of unredacted documents with an “Attorneys’ Eyes
Only” designation). The parties in this case agreed on the terms of a Protective Order
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that broadly prohibits the use and disclosure of information marked “Attorneys’ Eyes
Only” and “Attorneys’ Eyes Only – Prosecution Bar Information” for “competitive
purposes or the prosecution of additional intellectual property rights.” (Doc. No. 99 at 7.)
Clayton has not shown that production of the complete laboratory notebooks,
according to the terms of the parties’ stipulated Protective Order, would harm its
competitive interests. Indeed, Clayton’s generalized assertions that disclosure of the
notebooks may be prejudicial is undermined by the fact that Clayton has offered defense
counsel the opportunity to inspect, but just not to copy, the unredacted notebooks.
Therefore, the Court will order Clayton to produce the complete laboratory notebooks
pursuant to the Protective Order. However, to the extent Clayton believes that the
agreed-upon language of the Protective Order is insufficient to protect the information at
issue in the laboratory notebooks, it may confer in good faith with Defendants and bring
any appropriate motion to amend the protective order as necessary.
CONCLUSION
Accordingly,
IT IS HEREBY ORDERED that Defendants’ Motion to Compel is GRANTED.
(Doc. No. 118.)
IT IS FURTHER ORDERED that the Plaintiff shall produce the requested
information within seven (7) days of the date of this Order, subject to any necessary
amendments to the protective order agreed upon by the parties.
IT IS FURTHER ORDERED that Defendants’ motion for leave to file a
supplemental memorandum in support of their motion to compel is DENIED as moot.
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(Doc. No. 128.) The Court did not rely on Defendants’ proposed supplemental
memorandum in ruling on Defendants’ motion to compel.

AUDREY G. FLEISSIG
UNITED STATES DISTRICT JUDGE
Dated this 21st day of April, 2015.

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