Mondis Technology Ltd v. LG Electronics Inc et al
OPINION AND ORDER denying 232 Appeal Magistrate Judge Decision to District Court, and that the Magistrate Judge's opinion and order, filed September 19, 2017(Docket Entry No. 226) is AFFIRMED. Signed by Judge Stanley R. Chesler on 11/15/17. (sr, )
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
MONDIS TECHNOLOGY LTD,
LG ELECTRONICS, INC.
Civil Action No. 15-4431 (SRC)
OPINION & ORDER
This matter comes before the Court on the appeal of Magistrate Judge Waldor’s opinion
and order, filed September 19, 2017, by Plaintiff Mondis Technology Ltd (“Mondis”). For the
reasons stated below, the Magistrate Judge’s order will be affirmed.
In the opinion and order appealed from (the “MJ Decision”), in short, the Magistrate
Judge denied the motion by Defendants LG Electronics, Inc. and LG Electronics U.S.A., Inc.
(collectively, “LG”) for a protective order and to quash a subpoena served on trial counsel
Jeffery Plies (“Plies”). Mondis has appealed this decision.
Mondis first contends that the Magistrate Judge erred in determining “that Mr. Plies’
mental impressions concerning preparation of the Spiro declarations are discoverable because
LG has a need for them.” (Mondis’ Br. 16.) First, this is a mischaracterization of the Magistrate
Judge’s nuanced decision. Furthermore, crucially, Mondis argues as if the work-product
doctrine categorically blocks discovery of an attorney’s mental impressions, but this is incorrect.
As this Court stated years ago in In re Gabapentin Patent Litig., 214 F.R.D. 178, 184 (D.N.J.
2003) – a decision that Mondis quotes repeatedly –, “courts have been refining the contours of
this privilege as it applies to patent prosecutions and litigation for many years, and there remains
no bright line rule.” Mondis quotes the Third Circuit’s decision in In re Cendant Corp. Sec.
Litig., 343 F.3d 658, 663 (3d Cir. 2003), holding that mental impressions are “generally afforded
near absolute protection from discovery,” but this works against Mondis, for two reasons. First,
the Third Circuit wrote, “near absolute protection” rather than “absolute protection,” which
leaves room for the exception. Second, Mondis omits the sentence which follows, that such
“work product receives greater protection than ordinary work product and is discoverable only
upon a showing of rare and exceptional circumstances.” The Magistrate Judge’s decision
correctly recognized these legal principles and did not err. On appeal, Mondis has not even
attempted to demonstrate that this case does not fit within the exceptional circumstance
Mondis next argues: “When patent prosecution activities (including reexamination) take
place concurrently with, or are in anticipation of, litigation, these prosecution activities are
protected by the work-product doctrine.” (Mondis’ Br. 17.) Again, without commenting on the
accuracy of this assertion, as just explained, the protection of the work-product doctrine is not
absolute, but near absolute. Mr. Plies’ role as litigation counsel does not cloak him with
absolute protection for his role during patent reexamination.
What Mondis ignores, but the Magistrate Judge recognized, is that attorneys engaged in
patent prosecution are routinely subject to discovery when the prosecution process is placed in
issue. See, e.g., V. Mane Fils, S.A. v. Int'l Flavors & Fragrances, Inc., 2008 U.S. Dist. LEXIS
63619, at *9 (D.N.J. 2008); Sandvik Intellectual Prop. AB v. Kennametal, Inc., 2012 U.S. Dist.
LEXIS 84028, at *6 (W.D. Pa. 2012); aaiPharma, Inc. v. Kremers Urban Dev. Co., 361 F. Supp.
2d 770, 776 (N.D. Ill. 2005). That LG voluntarily chose to have its trial counsel engage in patent
prosecution activity while this lawsuit was pending does not and should not confer a blanket
immunity upon that attorney. If that were the case, parties would be rewarded for making the
strategic decision to use a trial attorney to engage in patent prosecution activity which would
otherwise be routinely discoverable.
Mondis next argues that, while LG had outlined eight categories of information it sought
to discover from Mr. Plies, the Magistrate Judge’s decision did not present an item-by-item
discussion of each category. Mondis cites no authority for the proposition that this constitutes
reversible error. Mondis then argues that, furthermore, LG bore the burden of applying the
Shelton factors to each and every category, separately. Again, Mondis cites no authority for the
proposition that Shelton – or some other controlling authority – forbids courts from being
efficient by aggregating arguments and categories of information. This appears to be a meritless
technicality that Mondis has made up.
Mondis has missed the point that the Magistrate Judge explained clearly: she refused to
block the deposition of Mr. Plies in its entirety, but recognized that some of his testimony might
be privileged. As her decision stated:
Mondis claims that the deposition of Mr. Plies could involve “substantial
non-discoverable and privileged information.” (Opp. Brief, at 11). While this may
be true, it is unreasonable to conclude that all of Mr. Plies’ testimony would be
privileged. Mondis’ argument that Mr. Plies’ mental impressions are protected is
flawed and as indicated by the deposition of Mr. Gallo, Mr. Plies is the only
individual who can attest to certain information regarding the inequitable conduct
claim. If certain questions are asked that are privileged, Mr. Plies will be free to
(MJ Decision at 9.) Thus, the Magistrate Judge decided not to pick through every single item on
LG’s list before the deposition occurred, because objections to individual questions may be made
and decided later. This is an entirely sensible approach, as it strikes the right balance between
one party’s right to discover information with the opponent’s right to shield it. Mondis argues as
if its right to shield Mr. Plies from discovery is absolute and total, and Mondis is wrong on this
point. As the Magistrate Judge correctly decided, it makes more sense to first allow a deposition
to occur, and reserve for later the application of the Shelton factors to specific, individual
questions. Mondis’ argument that the Shelton analysis should not, at this stage, have been done
in aggregate is neither sensible nor based in law.
A Magistrate Judge’s non-dispositive order may be set aside if it is clearly erroneous or
contrary to law. 28 U.S.C. § 636(b)(1)(A). Mondis has not persuaded this Court that the order
at issue is clearly erroneous or contrary to law. To the contrary, this Court has reviewed the
Magistrate Judge’s decision, and finds that it balanced the Shelton factors correctly. Magistrate
Judge Waldor’s order, filed September 19, 2017, will be affirmed.
For these reasons,
IT IS on this 15th day of November, 2017
ORDERED that Plaintiff’s appeal (Docket Entry No. 232) of Magistrate Judge Waldor’s
opinion and order, filed September 19, 2017 is DENIED; and it is further
ORDERED that the Magistrate Judge’s opinion and order, filed September 19, 2017
(Docket Entry No. 226) is AFFIRMED.
s/ Stanley R. Chesler
Stanley R. Chesler, U.S.D.J.
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