Sandvik Intellectual Property AB v. Kennametal Inc.
Filing
259
ORDER granting in part and denying in part 256 Expedited Motion to Compel Discovery Depositions filed by Kennametal Inc. The Motion is GRANTED to the extent that Kennametal is permitted to depose Attorneys Grudziecki and Killian as to the '6 25 Patent, the '782 Patent, and the '687 Patent. To the extent Kennametal seeks to examine Attorneys Grudziecki and Killian with respect to any other of Sandvik's alpha-alumina texture coefficient patents, such request is DENIED.Signed by Judge Terrence F. McVerry on 06/18/2012. (bsc)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
SANDVIK INTELLECTUAL PROPERTY AB
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v.
KENNAMETAL, INC.
2: 10-cv-00654
ORDER OF COURT
Presently before the Court for disposition is the EXPEDITED MOTION TO COMPEL
DISCOVERY DEPOSITIONS RELATED TO ITS INEQUITABLE CONDUCT AND
UNCLEAN HANDS DEFENSES AND COUNTERCLAIMS (Document No. 256) filed by
Kennametal Inc. (“Kennametal”), the BRIEF IN OPPOSITION (Document No. 257) filed by
Sandvik Intellectual Property AB (“Sandvik”), and the REPLY BRIEF filed by Kennametal
(Document No. 258). For the reasons that follow, the Motion is granted in part and denied in
part.
Discussion
A party may obtain discovery of any non-privileged matter that is relevant to a claim or
defense of any party. Fed. R. Civ. P. 26(b)(1). However, a district court may limit discovery
“for good cause shown” by making “an order to protect a party or person from annoyance,
embarrassment, oppression, or undue burden or expense,” including “limiting the scope of
disclosure or discovery to certain matters.” Fed. R. Civ. P. 26(c).
Although “depositions of opposing counsel are disfavored,” United States v. Yonkers Bd.
of Educ., 946 F.2d 180, 185 (2d Cir. 1991), such a view “is not a talisman for the resolution of all
controversies of this nature.” In re Subpoena Issued to Dennis Friedman, 350 F.3d 65, 71 (2d
Cir. 2003). Rather, “the standards set forth in Rule 26 require a flexible approach to lawyer
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depositions,” taking into consideration “all of the relevant facts and circumstances to determine
whether the proposed deposition would entail an inappropriate burden or hardship.” Id. at 72.
Relevant factors “may include the need to depose the lawyer, the lawyer’s role in connection
with the matter on which discovery is sought and in relation to the discovery pending litigation,
the risk of encountering privilege and work-product issues, and the extent of discovery already
conducted.” Id.
Kennametal amended its answer and counterclaim to assert defenses and claims of
inequitable conduct and unclean hands after it deposed Bjorn Ljungberg, the lead inventor of the
‘625 patent. According to Kennametal, during his deposition Mr. Ljungberg:
admitted that he did not actually run the manufacturing process that purportedly
led to the creation of the alpha-alumina with the claimed TC (012) value that he
said he performed in the specification of the ‘625 patent. Nor, Mr. Ljungberg
admitted, had he run the processes that he said he had performed to allegedly
create certain TC(104) and TC(110) values in two later alpha-alumina texture
coefficient patents owned” by Sandvik: U.S. Patent Nos. 5,76,782 and 5,851,687.
Kennametal asserts that through the deposition of Ljungberg it “uncovered a
pattern of deceptive behavior by [Sandvik] permeating at least three of
[Sandvik’s] alpha-alumina TC patents filed with the USPTO.
Mot. at 2.
In this motion, Kennametal seeks to take the depositions of (i) Attorney Ronald L.
Grudziecki, who prosecuted Sandvik’s ‘625, ‘782, and ‘687 patents; and (ii) Attorney Jeffrey G.
Killian, who has prosecuted subsequent Sandvik patents which contained statements about the
‘625 patent and statements that allegedly conflict with Ljungberg’s deposition testimony.
Sandvik does not object to Kennametal’s request to depose Attorney Grudziecki with respect to
his role in the prosecution of the ‘625 patent, but does object to Kennametal examining him with
respect to his role as prosecution counsel for any other Sandvik patents. Sandvik objects in its
entirety to the request of Kennametal to depose Attorney Killian primarily because Attorney
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Killian was not involved in the prosecution of the ‘625 patent and additionally because
Kennametal “has failed to identify the [Killian] statements to which it refers or explain how [the
statements] are inconsistent with Mr. Ljungberg’s testimony.” Br. in Opp’n, at 6.
A patent is unenforceable for inequitable conduct if, during prosecution of the patent, the
applicant made an affirmative misrepresentation of material fact, failed to disclose material
information, or submitted false material information, and intended to deceive the Patent Office.
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008). In
determining inequitable conduct, the knowledge and actions of a patent applicant’s attorney are
chargeable to the applicant. See Novo Nordisk Pharm. Inc. v. Bio-Technology General Corp.,
424 F.3d 1347, 1361 (Fed. Cir. 2005); 37 C.F.R. § 1.56 (duty to disclose material information
extends to attorney who prepares or prosecutes application).
Accordingly, courts have permitted the deposition of a patent prosecution counsel who is
also serving as trial counsel where the knowledge of counsel was pertinent to a defense raised of
inequitable conduct. See aaiPharma, Inc. v. Kremers Urban Dev. Co., 361 F. Supp.2d 770 (N.D.
Ill. 2005); Alcon Laboratories, Inc. v. Pharmacia Corp., 225 F. Supp.2d 340 (S.D.N.Y. 2002);
Environ Prods. Inc. v. Total Containment Inc., 41 U.S.P.Q.2d 1302 (E.D. Pa. 1996). Those
courts have recognized that “the prosecuting attorney’s mental impressions are crucial to any
claim of inequitable conduct in a patent infringement action.” Alcon, 225 F. Supp.2d at 344;
Environ Prods., 41 U.S.P.Q.2d at 1306 (“The affirmative defense of inequitable conduct makes
[the attorney’s] mental impressions during the reexamination proceedings an issue in this
litigation”); see also aaiPharma, 361 F. Supp.2d at 774 n.3 (discovery from attorneys involved
in prosecution of patents in suit is directly relevant to inequitable conduct.)
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Furthermore, “an attorney cannot avoid a deposition by asserting that he or she has no
relevant, nonprivileged information, . . . at a minimum, the attorney must submit to a deposition
so that his lack of knowledge may be tested . . . . ” Alcon, 225 F. Supp.2d at 344.
In support of its position, Sandvik relies upon a number of cases which relate to when a
finding of unenforceability of one patent will taint the enforceability of other patents owned by
the same patentee. The Court does not find this line of cases to be particularly persuasive,
especially at this junction of the litigation. At the present time, the only issue before the Court is
whether Kennametal should be allowed to obtain discovery which may support its claims of
inequitable conduct.
Last, the Court also rejects Sandvik’s claim that the depositions of its attorneys have been
requested solely for harassment purposes. Kennametal has asserted the affirmative defense of
inequitable conduct which puts the actions and mental impressions of Sandvik’s prosecuting
attorneys directly at issue in this litigation. Sandvik has not presented any evidence to
demonstrate a more nefarious purpose.
AND NOW, this 18th day of June, 2012, it is hereby ORDERED that Kennemetal’s
Motion to Compel Discovery Depositions is GRANTED IN PART and DENIED IN PART.
The Motion is GRANTED to the extent that Kennametal is permitted to depose Attorneys
Grudziecki and Killian as to the ‘625 Patent, the ‘782 Patent, and the ‘687 Patent. To the extent
Kennametal seeks to examine Attorneys Grudziecki and Killian with respect to any other of
Sandvik’s alpha-alumina texture coefficient patents, such request is DENIED.
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It is further ORDERED that in view of the fact that the discovery period closes in this
matter on June 25, 2012, the discovery period for these two depositions only is extended until
July 9, 2012.
BY THE COURT:
s/ Terrence F. McVerry
United States District Court Judge
cc:
Frederick H. Colen, Esquire
Special Master
Reed Smith
Email: fcolen@reedsmith.com
Jeffrey G. Killian, Esquire
Morgan Lewis & Bockius
Email: jkillian@morganlewis.com
Ronald L. Grudziecki, Esquire
Drinker Biddle & Reath
Email: ron.grudziecki@dbr.com
William P. Quinn , Jr., Esquire
Morgan, Lewis & Bockius LLP
Email: wquinn@morganlewis.com
Carrie A. Beyer, Esquire
Drinker Biddle & Reath LLP
Email: carrie.beyer@dbr.com
David W. Marston , Jr., Esquire
Morgan, Lewis & Bockius LLP
Email: dmarston@morganlewis.com
Elaine P. Spector, Esquire
Drinker, Biddle & Reath, LLP
Email: elaine.spector@dbr.com
Jeffrey J. Lopez, Esquire
Drinker Biddle & Reath LLP
Email: jeffrey.lopez@dbr.com
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John D. Ferman, Esquire
Drinker Biddle & Reath, LLP
Email: john.ferman@dbr.com
Mark A. Grace, Esquire
Cohen & Grace, LLC
Email: mgrace@cohengrace.com
Daniel R. Taylor, Jr., Esquire
Kilpatrick Townsend & Stockton LLP
Email: DanTaylor@KilpatrickTownsend.com
Eric G. Soller, Esquire
Pietragallo, Bosick & Gordon
Email: egs@pbandg.com
Alan G. Towner, Esquire
Pietragallo, Bosick & Gordon
Email: agt@pbandg.com
James J. Link, Esquire
Kilpatrick Stockton
Email: jlink@kilpatrickstockton.com
Jason M. Wenker, Esquire
Kilpatrick Townsend & Stockton LLP
Email: jwenker@kilpatricktownsend.com
Steven D. Moore, Esquire
Kilpatrick Townsend & Stockton LLP
Email: smoore@kilpatricktownsend.com
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