Opinion
NO. 1:03-cv-00216-JDT-TAB
April 8, 2004
ENTRY ON PENDING MOTIONS
This action involves the alleged infringement by Defendant Thomson, Inc. of four patents held by Plaintiffs IP Innovation L.L.C. and Technology Licensing Corporation ("TLC"). During discovery, and after the entry of a Protective Order, several disputes arose that the parties have been unable to resolve absent Court intervention. Several ripe motions are before the Court for disposition.
Before resolving these motions, however, the Court feels compelled to address a tone of incivility in Plaintiffs' submissions. For example, Plaintiffs accuse the Defendant of making intentional misrepresentations in its filings, of ignoring and overlooking facts, and of engaging in "subterfuge." [Docket No. 74, pp. 2-4]. Plaintiffs assert that Defendant's response "ignores key facts and distorts many others in an effort to dissemble and confuse the actual record." [Docket No. 69, p. 2]. Plaintiffs contend that Defendant makes "unsupported," "unfounded," and "manufacture[d]" claims. [Docket No. 69, p. 2]. Plaintiffs even go so far as to assert that defense counsel "knows, for a fact, that the claims he makes in defendant's responding papers are incorrect." [Docket No. 69, p. 6]. These barbs are, unfortunately, merely a few of the accusations Plaintiffs fling Defendant's way.
Plaintiffs go on to characterize defense counsel's request for time to consult with his client on an issue as "nothing more than a ruse designed to further delay a prompt resolution of the issue." [Docket No. 55, p. 3]. Responding to Defendant's contention that disclosure of certain information could result in potential harm, Plaintiffs assert that this claim "is not only unfounded and unsupported by any evidence, it is an affront to both this Court's authority and that of the Protective Order entered in this matter." [Docket No. 55, p. 5]. Plaintiffs also accuse Defendant of taking a "two-faced approach" to an issue [Docket No. 69, p. 7]; of advocating a position that is "especially duplicitous" [Docket No. 69, p. 8]; of asserting a claim that is "nothing but a smokescreen" [Docket No. 69, p. 9]; and of "offering mere speculation and manufactured excuses to support its scorched earth strategy." [Docket No. 69, p. 11].
Plaintiffs' briefs contain additional accusations of this nature, but the foregoing examples suffice to demonstrate the incivility of Plaintiffs' submissions. Accusations such as these are no trifling matter. If Plaintiffs' contentions were true, Defendant could be in violation of a number of the Rules of Professional Conduct, including Rule 3.1 (Meritorious Claims and Contentions), Rule 3.2 (Expediting Litigation), Rule 3.3 (Candor Toward the Tribunal), and Rule 3.4 (Fairness to Opposing Party and Counsel). Yet as set forth below, the Court has sided with Defendant's positions on every substantive issue. As a result, Plaintiffs' attacks are not only improper, they are wholly unfounded.
The Court is not suggesting that Plaintiffs' attacks would be appropriate if the Defendant had engaged in the type of conduct alleged. Even under such circumstances, counsel should endeavor to raise such concerns in a more civil and less confrontational manner.
Relatedly, the Court acknowledges that Defendant, in response to Plaintiffs' motion to exclude its expert witness, stated that Plaintiffs' motion was "frivolous" and that Plaintiffs were "merely attempting to distract the Court's attention." [Docket No. 64, p. 2]. Allegations of frivolity should not be dispensed freely without a good faith basis in fact or law. However, as explained in the body of this order, Defendant possessed such a basis. Moreover, unlike Plaintiffs' submissions, Defendant's briefs were not littered with confrontational accusations.
While the Court encourages attorneys' strong advocacy for their clients, Plaintiffs' accusatory and combative approach does not further this objective. Instead, Plaintiffs' approach is reminiscent of IJR, Inc. v. Sodick, Inc., 1987 WL 26105, at *1 (N.D. Ill. 1987), a patent case in which Judge Williams responded to "a number of unpleasant confrontations" by noting:
The purpose of this opinion is to resolve the existing disputes and set the parties on a more appropriate course than toward a boxing ring. But in the course of the last few weeks this court's patience with counsel in this case has worn thin. As a result, counsel should be wary of barging into the courthouse with trivialities in the future because this court will not hesitate to use the powers available to it to ensure that counsel treat each other with the level of respect expected from anyone admitted to the bar.See also Patton v. John C. Groub Co., Inc., 2001 WL 1165543, at *3, n. 1 (S.D. Ind. 2001) (in which Judge Hamilton remarked that the parties' filings "have continued to generate a great deal of unnecessary and counter-productive heat not related to the merits of the case," despite similar, prior concerns voiced by Magistrate Judge Shields);Ty, Inc. v. Publications International, Ltd., 2004 WL 421984, at *6 n. 3 (N.D. Ill. Feb. 17, 2004) (stressing that accusations such as "ethically challenged," "unseemly," "deeply disgusted," "new low" and "sneak attack" "have no place in legal discourse."); United States v. Maisenbacher, 241 F. Supp.2d 899, 902 n. 1 (C.D. Ill. 2003) (noting lack of courtesy in plaintiff's brief and stating that the court expected "greater civility" in the future); Martinez v. University of Illinois at Chicago, 1999 WL 592106 at *1 (N.D. Ill. 1999) (noting "increased concerns about the loss of civility").
In accord with the foregoing authorities, the undersigned expects civility and professionalism from the attorneys litigating cases before this Court. As a reminder to all attorneys of their duties in this regard, the Court will publish this opinion on its website with the expectation that it will be adhered to by members of the bar in the future. Otherwise, as Judge Williams stated in Sodick, 1987 WL 26105 at *1, in the future "this court will not hesitate to use the powers available to it to ensure that counsel treat each other with the level of respect expected from anyone admitted to the bar."
1. Plaintiffs' Expedited Motion for an Order Granting J. Carl Cooper's Access to Defendant's Infringement Documents. [Docket No. 54].
Plaintiffs' motion requesting the Court for an order allowing their expert, J. Carl Cooper, access to documents designated "Highly Confidential" by Defendant pursuant to the Protective Order entered in this matter is DENIED.
Pursuant to the Protective Order, certain information exchanged between the parties is designated either "Confidential" or "Highly Confidential." [Docket No. 43, p. 2]. Dissemination of "Highly Confidential" material is limited to trial counsel for the parties, the Court, independent consultants or experts, stenographic and video reporters, and outside document copying services. [Docket No. 43, pp. 4-5]. Although acknowledging that Cooper is not an "independent expert," Plaintiffs argue that Cooper should be allowed access to Defendant's highly confidential material because he is Plaintiffs' only expert, the sole inventor of two of the patents-in-suit and thus uniquely qualified, and Cooper and his company do not "manufacture or sell any product in the industry covered by Thomson's infringement, i.e. the consumer electronics field." [Docket No. 55, p. 4]. Thus, Plaintiffs argue, Cooper is not in direct competition with Defendant and therefore disclosure of Defendant's highly confidential information to Cooper creates no risk of harm. Defendant's strong objections are well taken. [Docket No. 59].
Cooper is the General Manager of TLC and president of Pixel Instruments Corp., a third party unrelated to Plaintiffs. [Docket No. 55, ¶¶ 4, 9].
Although Plaintiffs cite to cases allowing disclosure of similarly confidential documents to in-house employees or experts, those cases are distinguishable from the matter at hand. For example, in Standard Space Platforms Corp. v. United States, 35 Fed. Cl. 505, 509 (Fed. Cl. 1996), the court held that "to deny plaintiff the right to have its own president assist in its litigation, given defendant's flimsy showing, could well border on denial of due process." However, that court specifically noted that the president was "no longer active in the aerospace field and simply sells insurance." Id. Moreover, the court noted that "should additional evidence (e.g. the length of time that [the president] has been an insurance salesman, etc.), bearing on the issue of the risk that [the president] will misuse confidential information, come to light, a motion for reconsideration or to amend the protective order may well be appropriate." Id. at n. 3. The other cases on which Plaintiffs rely are equally unpersuasive.
Instead, the Court believes the facts of this case to be more in line with Safe Flight Instrument Corp. v. Sundstrand Data Control. Inc., 682 F. Supp. 20 (D. Del. 1988). As noted by Defendant [Docket No. 59, p. 14], in Safe Flight, the court precluded the plaintiff's founder and president, a preeminent aeronautic engineer with more than sixty aeronautic patents, from accessing the defendant's confidential documents. The Safe Flight court stated:
Mr. Greene might (whether consciously or subconsciously) abuse the confidential scientific information revealed to Sundstrand's competitive disadvantage. The potential for abuse is real. Mr. Greene actively plies aeronautic engineering. The potential for competitive loss is real. Safe Flight and Sundstrand directly compete in the market for avionics equipment, and Safe Flight has expended considerable time and effort over years to develop its product.Safe Flight, 682 F. Supp. at 21.
The instant matter is similar. Cooper is a named inventor of over 40 patents "relating to video equipment, image processing, magnetic regarding, audio and video signal processing and audio devices utilizing analog and digital electronics." [Docket No. 59, Ex. E, p. 3]. In addition, Cooper has other patents currently pending. Id. Finally, and perhaps most importantly, "TLC is an intellectual property licensing company involved in the commercialization of intellectual property including that developed by Pixel and [Cooper]." [Docket No. 59, Ex. E, p. 1]. Therefore, the Court finds the risk for abuse is real. Plaintiffs' motion for an order granting Cooper access to Defendant's "highly confidential" documents is DENIED. 2. Plaintiffs' Petition for an Order Preventing Defendant's Proposed Expert from Appearing in this Matter and Receiving Access to Plaintiffs' Confidential Information. [Docket No. 57].
The Court notes that a similar outcome resulted in what has been termed the "Videotek litigation" arising out of the Northern District of California. [Docket No. 59, pp. 2-5].
The parties filed their briefs regarding Plaintiffs' petition to exclude Defendant's expert under seal. However, the Court does not believe that any of the information set forth in this order, or the conclusions reached in this order, may properly be deemed confidential and filed under seal. Accordingly, this order shall be filed by the Clerk without any restrictions on its dissemination.
As Defendant asserts, Plaintiffs' motion to bar Bernard Lechner from appearing in this case as Defendant's expert borders on the "frivolous." [Docket No. 64, p. 2]. Plaintiffs' motion is DENIED.
Lechner appeared as Videotek's testifying witness in the Videotek litigation, an unrelated patent suit brought by TLC against that company. As part of a settlement agreement, Videotek (and its predecessors, successors and successors-in-interest, officers, directors, employees, subsidiaries and agents) agreed not to assist third parties in challenges to the validity, patentability or enforceability of patents that TLC had the rights to enforce or assert. Because of this language, Plaintiffs assert that Lechner is precluded from offering expert testimony in the present matter. Although not specifically requesting their disqualification, Plaintiffs suggest that Defendant's attorneys should likewise be unable to represent Defendant in this matter because of their previous relationship with Videotek. [See Docket No. 57, p. 3] ("The same conflict appears to exist with respect to Mr. Redano and the Duane Morris firm as well."). However, to the extent Lechner (or Defendant's attorneys) were Videotek's agents in that case, there is no evidence before the Court that he is currently acting as Videotek's agent. Lechner's exclusion based on the Videotek settlement would be an unsound and inappropriate extension of agency law. Plaintiffs' motion is DENIED.
3. Defendant's Motion for Leave to Depose Plaintiffs' Expert Witness and to Submit Expert Testimony for Claim Interpretation [Docket No. 66].
Defendant has filed a motion for leave to depose Cooper, should the District Judge overrule Defendant's objections in its Claims Construction brief. This motion is GRANTED.
According to Defendant, "[i]f this Court sustains Thomson's objections, then it will be unnecessary for Thomson to depose Cooper on his declaration and to submit expert testimony on the claim interpretation." [Docket No. 66, p. 1]. Thus, delaying Cooper's deposition avoids "potentially unnecessary costs to the parties, delays in completing the claim construction briefing process resulting from expert discovery, and filing irrelevant material." [Docket No. 66, p. 1]. Defendant's motion was filed before the deadline to depose experts, and Plaintiffs have failed to establish that they will be prejudiced by its approval. Accordingly, the motion is GRANTED. In the event Defendant's objections to Cooper's declaration and the use thereof in Plaintiffs' Opening Claim Construction Brief are overruled, Defendant shall have 10 business days to depose Cooper and seven days thereafter to submit expert testimony in support of Defendant's claim construction brief.
4. Defendant's Motion for Leave to File a Response to Plaintiffs' Notice of Supplemental Authority. [Docket No. 73].
Defendant's motion to respond to Plaintiffs' supplemental authority is DENIED. As Defendant points out in its motion, Plaintiffs did not seek leave from the Court to file their notice of supplemental authority in support of their motion to allow Cooper access to highly confidential documents. Therefore, the Court does not consider that filing [Docket No. 71] in making its ruling. Moreover, even if the Court were to consider Plaintiffs' supplemental authority, it is neither binding nor persuasive.
SO ORDERED.