Power Probe Group, Inc. et al v. Innova Electronics Corporation

Filing 256

ORDER Re: 252 Status Report. Signed by Magistrate Judge Elayna J. Youchah on 11/21/2024. (Copies have been distributed pursuant to the NEF - ALZ)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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***

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POWER PROBE GROUP INC. and
POWER PROBE TEK, LLC,

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ORDER

Plaintiffs/CounterDefendants,

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Case No. 2:21-cv-00332-GMN-EJY

v.
INNOVA ELECTRONICS CORPORATION,

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Defendant/Counterclaimant.

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Pending before the Court is the Joint Status Report Regarding Discovery. ECF No. 252.

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Also before the Court is Innova’s sealed submission of three emails for in camera review. ECF No.

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254. The Court considered these filings as well as the history underlying the Status Report and

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submission.

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As the parties know, there was previous briefing and substantial oral argument regarding

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Defendant’s discovery of the ’036 Reference, which Plaintiff contends Defendant should have

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discovered in March 2022. Plaintiff says Defendant failed to conduct a diligent search of prior art.

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Plaintiff requests a three hour deposition of Defendant’s in-house counsel “to investigate, inter alia,

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the timing of” the three emails listed on Defendant’s privilege log given that the first two emails are

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dated March 31, 2022 and the third is dated February 15, 2023—the date on which the ’036

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Reference was discovered.

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Defendant contends that with the production of the privilege log and supplemental responses
to Plaintiff’s Interrogatory Nos. 12 and 13, Plaintiff now knows:
(1) scope of Defendant’s initial prior art searches when the case began, including
methodology of the initial and subsequent searches; (2) date when Defendant
identified another of Plaintiff’s patent applications and instructed outside counsel
to research the same; (3) date when Defendant received additional information from
outside counsel that identified the ’036 Reference; (4) who decided to conduct the
search; (5) what was learned in those search efforts, including Plaintiff’s patents
and applications that cited to the ’036 Reference, which have been identified and
produced; (6) the reason for subsequent searches, e.g., Plaintiff’s everexpanding
theories of infringement, now pleaded to include the doctrine of equivalents
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(“DOE”), even though Plaintiff itself still has yet to request amendment of its own
LPR 1-6 infringement contentions; and, (7) the individuals involved in Defendant’s
search efforts.

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ECF No. 252 at 5-6. Defendant further contends there is no lack of diligence as “neither the

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prosecution history of Plaintiff’s ’899 patent, nor the USPTO Examiner … cited to the ’036

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Reference that Defendant” discovered in February 2023. Defendant argues that Plaintiff knew of

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the ’036 Reference for years, but produced no documents identifying the Reference; nor did Plaintiff

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cite the Reference “as part of the patent prosecution resulting in the ’899 patent-in-suit.” Id. at 6-7.

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While the Court previously found Defendant put the discovery of the ’036 Reference at issue,

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and therefore ordered production of the privilege log (while indicating a willingness to allow

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additional discovery that might invade fact work product), Plaintiff has not demonstrated the

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“substantial need” for the work product it seeks at this time. The Court finds that Plaintiff has not

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shown that either the deposition of Defendant’s in-house counsel or disclosure of the three emails

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are (1) “essential elements” of Plaintiff’s “prima facie case” (Continental Circuits LLC v. Intel

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Corporation, 435 F.Supp. 3d 1014, 1023 (D. Ariz) citing 6 Moore’s Federal Practice - Civil § 26.70

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(2019)) or (2) “crucial to the determination of whether the defendant could be held liable for the acts

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alleged, or carries great probative value on contested issues ….” Id. quoting Nevada v. J-M Mfg.

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Co., 555 Fed.Appx. 782, 785 (10th Cir. 2014). To the extent Plaintiff seeks to corroborate the

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evidence it has, this is insufficient to establish substantial need. Fletcher v. Union Pac. R.R. Co.,

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194 F.R.D. 666, 671 (S.D. Cal. 2000) (citing 6 James Wm. Moore et al., Moore’s Federal Practice §

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26.70[5][c], at 26-221 to 26-222 (3d ed.1999)).

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The above finding is without prejudice. This case has had numerous twists including two

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appeals, the second of which remains pending before the Federal Circuit. At such time, if any, there

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is an effort by Defendant to amend invalidity contentions, Plaintiff may renew its request to invade

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work product, and potentially privilege, through the disclosure of the emails and a deposition of

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Defendant’s in-house counsel. However, at this juncture, reading and considering all that has come

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before the Court, substantial need is not present.

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So ordered this 21st day of November, 2024.

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ELAYNA J. YOUCHAH
UNITED STATES MAGISTRATE JUDGE

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