Clark v. The Walt Disney Company et al

Filing 63

MOTION for Sanctions PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 11 by Defendants Disney shopping Inc, Jakks Pacific, Inc., Play Along Toys, Toys 'R Us. (Attachments: # 1 Affidavit, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Text of Proposed Order) (Kinsel, Grant)

Clark v. The Walt Disney Company et al

Doc. 63 Att. 5

Case 2:08-cv-00982-JDH-MRA Document 63-6

Filed 10/07/09 Page 1 of 92

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO EASTERN DIVISION

AARON CLARK, Plaintiff, v. THE WALT DISNEY COMPANY; JAKKS PACIFIC, INC.; PLAY ALONG TOYS; KB TOYS; AMAZON.COM; and TOYS `R US, Defendants.

Case No. 2:08CV982

JAKKS PACIFIC, INC.'S FIRST SET OF INTERROGATORIES [Nos. 1 - 23]

LACA_2113841.1

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Exhibit 5 Dockets.Justia.com

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TO PLAINTIFF AARON CLARK, AND TO HIS ATTORNEYS OF RECORD: YOU ARE HEREBY NOTIFIED pursuant to Rule 33 of the Federal Rules of Civil Procedure, Defendant JAKKS Pacific, Inc. ("JAKKS"), hereby requests that Plaintiff Aaron Clark ("Clark"), answer separately and individually, each of the following interrogatories, in writing, under oath within thirty days from service hereof.

DEFINITIONS 1. The term "Clark," "You" or "Your" means Plaintiff Aaron Clark and any

agent, employee, servant, representative, or any other person or entity in privity with or controlled by Clark. 2. The term "Inotrend" means Inotrend, Inc., and any parent, affiliate, or subsidiary

(whether owned in whole or in part), any agent, officer, director, employee, servant, representative, shareholder, and any predecessor company, and any other person or entity in privity with or controlled by Inotrend. 3. The term "Defendants" means the Defendants named in this action, and any

parent, affiliate, subsidiary (whether owned in whole or in party), agent, officer, director, employee, servant, representative, shareholder and any predecessor company, and any other person or entity in privity with or controlled by any Defendant. 4. The term "Prior Art" means the same thing as used in 35 U.S.C. § 103, and

includes every item or event within the scope of 35 U.S.C. § 102, as those statutory sections apply to the Patent-in-Suit, defined below. 5. 6. "Patent-in-Suit" means U.S. Patent No. 5,548,272. "Related Patent Matters" means any U.S. continuation, continuation-in-part, or

divisional patent application claiming priority from a patent application resulting in the Patent2
LACA_2113841.1

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Exhibit 5

Case 2:08-cv-00982-JDH-MRA Document 63-6

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23.

State the complete factual basis for Your contention that Defendants have violated

the Ohio Deceptive Trade Practices Act, and in Your response, identify all witnesses who have knowledge of such facts, and all documents relating, in any way, to such facts. Answer:

Dated: February 11, 2009

Respectfully submitted, By: /s/ Michael C. Lueder Michael C. Lueder Foley & Lardner LLP 777 E. Wisconsin Ave. Milwaukee, WE 53202 Tel: [phone] Trial Attorney /s/ Grant E. Kinsel Grant Kinsel (Pro Hac Vice) Foley & Lardner LLP 555 South Flower St., Suite 3500 Los Angeles, CA 90071 Tel: [phone] Attorneys for JAKKS Pacific, Inc., Play Along Toys, KB Toys, and Toys "R" Us, The Walt Disney Company

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LACA_2113841.1

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Exhibit 5

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CERTIFICATE OF SERVICE I hereby certify that the counsel of record who are deemed to have consented to electronic service are being served today with a copy of this document via by electronic mail, facsimile transmission and/or first class mail on this same date. Dated: February 11, 2009 Brian Edward Dickerson The Dickerson Law Group 5003 Horizons Drive Suite 200 Upper Arlington , OH 43220 614-339-5370 Fax: [phone] [e-mail] Kevin R Conners 5003 Horizons Drive Suite 101 Columbus , OH 43220 614-562-5877 [e-mail] Sharlene I Chance The Dickerson Law Group 5003 Horizons Drive Suite 200 Columbus , OH 43220 614-339-5370 Fax: [phone] [e-mail] /s/ Grant E. Kinsel Attorneys for Plaintiff Aaron Clark

i
LACA_2113841.1

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Exhibit 5

Case 2:08-cv-00982-JDH-MRA Document 63-6

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UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO EASTERN DIVISION

AARON CLARK, Plaintiff, v. THE WALT DISNEY COMPANY; JAKKS PACIFIC, INC.; PLAY ALONG TOYS; KB TOYS; AMAZON.COM; and TOYS `R US, Defendants.

Case No. 2:08CV982

PLAINTIFF AARON CLARK'S RESPONSE TO JAKKS PACIFIC, INC.'S FIRST SET OF INTERROGATORIES [Nos. 1 - 23]

LACA_2113841.1

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Exhibit 5

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Filed 10/07/09 Page 6 of 92

Now comes Plaintiff Aaron Clark (hereinafter "Plaintiff"), pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure and Rules 26.1 and 26.2 of the Local Rules of the United States District Court for the Southern District of Ohio (hereinafter the "Local Rules") and respectfully submits the following objections and responses to Defendant JAKKS Pacific Inc.s (hereinafter "Defendant") First Set of Interrogatories (hereinafter the "Interrogatories"). GENERAL OBJECTIONS To avoid undue and unnecessary repetition, Plaintiff makes the following general and continuing objections to the Interrogatories. All general and continuing objections apply to each response to the Interrogatories. Although these objections may be specifically referred to

elsewhere in a Response, failure to mention a general and continuing objection should not be construed as a waiver of that objection. Moreover, the assertion of the same, similar, or

additional objections in response to specific Interrogatories does not waive, limit, or modify any of these General Objections. 1. Plaintiff objects to Defendants Interrogatories to the extent they impose burdens

beyond the obligations of discovery as proscribed by the Federal Rules of Civil Procedure and the Local Civil Rules of the United States District Court for the Southern District of Ohio and are not reasonably calculated to lead to the discovery of admissible evidence. 2. Plaintiff objects to the Interrogatories to the extent that they are redundant and

request the same information. 3. Plaintiff objects to Defendants Interrogatories insofar as they seek information

and/or documents not in Plaintiffs possession and/or control, or information and/or documents solely in Defendants possession. 4. Plaintiff objects to Defendants Interrogatories insofar as they seek, or can be

construed to seek, the disclosure of information subject to the attorney-client privilege, work

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Exhibit 5

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2.

State separately for each Asserted Claim identified in Your response to

Interrogatory No. 1, above, each accused apparatus, product, device, process, method, act or other instrumentality ("Accused Instrumentality") of each Defendant of which You are aware. In responding to this interrogatory, Your identification shall be as specific as possible, with each Accused Instrumentality identified by name or model number, if known. Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process. Answer: See, General Objections including, but not limited to, General Objections 2-5, 7-9,

12 and 19. Plaintiff is not an attorney and this question calls for a legal conclusion. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, Plaintiff states with regard to Claim One, Defendants have a poster including poster art; a housing comprised of a second material which is attached to the poster art; a speaker that is concealed between said housing and poster; an electric circuit including sound production component that is operatively connected to said speaker and concealed between housing and poster; a trigger that is attached to the electric circuit and concealed within the housing which can be activated through the housing to produce sound; and the surface of the housing is prepared with matching art substantially the same as the surrounding art on the poster as to blend in artistically with the poster. In other words, pink housing matches pink on the poster and is designed to look attractive and artistically blend with the poster in order to look attractive as a product. Without waiving the foregoing General Objections with regard to Claim Five, Defendants have used a method of make a talking poster comprising of the steps of (1) providing a poster with poster art; (2) providing human actuatable sound components adapted to be contained on said poster; (3) providing a housing which is secured to a portion of the poster; and (4) have

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Exhibit 5

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applied matching art to the housing substantially the same as the surrounding art on the poster as to blend in artistically with the poster. In other words, pink housing matches pink on the poster and is designed to look attractive and artistically blend with the poster in order to look attractive as a product. 3. A chart identifying specifically where each limitation of each Asserted Claim is

found within each Accused Instrumentality, including for each limitation that You contend is governed by 35 U .S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function. Answer: See, General Objections including, but not limited to, General Objections 2-5, 7-9,

12 and 19. Plaintiff is not an attorney and this question calls for a legal conclusion. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, please see response to Interrogatory No. 2. 4. For each Asserted Claim that You allege to have been indirectly infringed, an

identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as You contend that direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described. Answer: See, General Objections including, but not limited to, General Objections 2-5, 7-9,

12 and 19. Plaintiff is not an attorney and this question calls for a legal conclusion. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, Plaintiff states he has been directly infringed in the manner set forth in the Answer to Interrogatory No. 2. Defendants have manufactured, sold, licensed, distributed, imported, etc., Plaintiffs patent protected Talking Poster. Further discovery will reveal the extent to which each Defendant is involved and the role of each Defendant in directly infringing.

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Exhibit 5

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5.

State whether each limitation of each Asserted Claim is alleged to be literally

present or present under the doctrine of equivalents in the Accused Instrumentality, for each limitation identified as present under the doctrine of equivalents, state Your complete factual bases for such assertion. Answer: See, General Objections including, but not limited to, General Objections 2-5, 7-9,

12 and 19. Plaintiff is not an attorney and this question calls for a legal conclusion. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, Plaintiff believes that the infringement is literal as indicated in Interrogatory No. 2 and at minimal, it satisfies the doctrine of equivalents. 6. Answer: State the priority date to which each Asserted Claim is allegedly entitled. See, General Objections including, but not limited to, General Objection 5.

"Priority date" is not defined above. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, the priority date is Spring of 1992. 7. Identify separately, and for each Asserted Claim, each of Your apparatus(es),

product(s), device(s), process(es), method(s), act(s) or other instrumentality(ies) that practice any claimed invention in the Patent-in-Suit. Answer: See, General Objections including, but not limited to, General Objections 2-5, 7-9,

12 and 19. Plaintiff is not an attorney and this question calls for a legal conclusion. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, see response to Interrogatory No. 2. 8. Separately, and for each Asserted Claim, state Your construction of each and

every limitation contained therein, including for each term which You contend is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s) corresponding to that terms function.

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Answer:

See, General Objections including, but not limited to, General Objections 3-5, 7-9,

12 and 19. Plaintiff is not an attorney and this question calls for a legal conclusion. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, see response to Interrogatory Nos. 2 and 7. 9. For each construction stated in response to Interrogatory No. 8, above, identify all

references from the specification or prosecution history that support Your proposed construction and designate any supporting extrinsic evidence including, without limitation, dictionary definitions, citations to learned treatises and Prior Art, and testimony of percipient and expert witnesses. Identify all extrinsic evidence by production number or by producing a copy if not previously produced. With respect to any supporting witness, percipient or expert, provide a description of the substance of that witness proposed testimony that includes a listing of any opinions to be rendered in connection with claim construction. Answer: See, General Objections including, but not limited to, General Objections 2-5, 7-9,

11, 12, 14 and 19. Plaintiff is not an attorney and this question calls for a legal conclusion. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, see responses to Interrogatory Nos. 2 and 7. In addition and in support of Plaintiffs claims, there are several references in the patent history referring to the general term and idea of enabling a talking poster as a new concept and invention. The intent was to cover and protect the concept of a talking poster as broadly as possible and to cover possible future embodiments that may be enabled due to as yet unseen advances in printing and packaging technology to house the electronics. Furthermore, reference can be found stating that matching art itself would not be considered an inventive step because the function of the device would not be modified from prior inventions. So, ultimately, the patent was received upon convincing the patent office of the uniqueness of the overall "spirit of the invention," with which they agreed.

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Exhibit 5

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10.

Identify all persons with knowledge of the conception, design or reduction to

practice of any inventions described in the Patent-in-Suit, including any Covered Product. Answer: See, General Objections including, but not limited to, General Objections 3-5, 7-9,

11, 14, 16 and 19. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, Plaintiff states Jim Langman (helped develop artwork for prototypes) and Bob Setzer (assisted in finding funding for Talking Poster). 11. Identify and describe all analyses performed to assess with any of Defendants

products infringe the Patent-in-Suit, including the identity of who performed such analyses, and when. Answer: See, General Objections including, but not limited to, General Objections 2-5, 7-9,

11, 14, 16 and 19. However, since Plaintiff is the Inventor and has the best knowledge as to the claims within the ,,272 Patent, Plaintiff performed an analysis in the middle of 2008. Plaintiff identified that Defendants poster has artwork, a sound module containing electronics which is designed to blend into and match with the artwork, able to be activated, and attached to the poster art. Additional analysis has been performed by othe