Opinion
No. 06 C 4857.
January 17, 2008
MEMORANDUM OPINION AND ORDER
The matter before the Court is a motion filed by Se-Kure Controls, Inc. ("Se-Kure") to compel deposition testimony and documents relating to Defendant Diam USA, Inc.'s ("Diam") advice of counsel defense. Se-Kure requests the Court compel: (1) the deposition of Opher Pail, as part of Diam's development team that decided Diam's product was "different" from the `590 Patent; (2) Daim to produce one or more Rule 30(b)(6) witnesses for deposition on the issue of Daim's purported reliance on the advice of counsel defense; and (3) all communications that relate to Charlie Kinne, Diam's trial counsel, and Kevin Erickson, Diam's opinion counsel, because Mr. Kinne provided materials to Mr. Erickson to review prior to his deposition. Se-Kure has withdrawn its initial request for items on Diam's privilege log. Se-Kure's motion is granted in part and denied in part, as outlined below [dkt 150].
I. Background
Se-Kure accused Diam of patent infringement and has pleaded that the alleged infringement was willful. In May 2007 Judge Brown granted Diam leave to take limited discovery on the issue of whether it would rely on the `advice of counsel' defense in response to that charge and required Daim to advise Se-Kure of its decision no later than June 13, 2007. Judge Brown, however, did not extend the June 8, 2007 fact discovery cutoff date. Instead, Judge Brown determined that discovery on the issue of advice of counsel could occur during the expert discovery period, which still remains open (but is expected to close by February 2008).
Transcript of Proceedings at 12, Se-Kure Controls, Inc. v. Daim USA, Inc., 06 C 4857 (May 17, 2007) (finding that the "referral from Judge Guzman on the defendants' motion to extend the disclosure of whether there was going to be reliance on the advice of counsel into the fact discovery phase as authority to me to make the decision to allow you to take discovery on that issue past the close of fact discovery.").
On June 14, 2007, without extending fact discovery, Judge Guzman ruled that Se-Kure was allowed to depose the expert attorney opinion witness, "and if during the course of that deposition, other issues or witnesses or parties related to that issue, the expert [attorney's] opinion, come up," then Se-Kure could depose them as well. Diam then produced Mr. Erickson, its opinion counsel, for deposition on July 3, 2007. Diam also produced its in-house counsel, Mr. Katcher, on August 14, 2007.
Transcript of Oral Argument at 9, Se-Kure Controls, Inc. v. Daim USA, Inc., 06 C 4857 (June 14, 2007).
II. Waiver
III. Analysis
In re Seagate Tech., LLC, 497 F.3d 1360, 1367-68 (Fed. Cir. 2007).
In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1302 (Fed. Cir. 2006).
In re EchoStar Commc'ns Corp., 448 F.3d at 1302.
Id. at 1303.
In re EchoStar Commc'ns Corp., 448 F.3d at 1303.
Id. at 1304 (emphasis provided).
In re Seagate Tech., LLC, 497 F.3d at 1374.
Id.
A. Deposition of Opher Pail
Se-Kure claims because Mr. Pail provided technical information to Diam's opinion counsel, Mr. Erickson, and because Mr. Erickson could not recall particulars of their discussions when asked about their conversations, Mr. Pail should be deposed. The Court agrees. Judge Guzman ruled that if Se-Kure found other people that would need to be deposed, after taking the opinion giver's deposition, Se-Kure would be allowed to take their deposition as well. Se-Kure should, thus, be allowed to take Mr. Pail's deposition. Again, Se-Kure must limit the deposition to only issues relating to the expert opinion.
B. Rule 30(b)(6) Depositions
Apparently, prior to a change in Diam's counsel, Se-Kure understood that it could wait and take certain depositions after Diam had decided whether to rely on an advice of counsel defense, which was after the close of fact discovery. According to Se-Kure, the decision to wait on these depositions eliminated the possible need to depose certain witnesses twice. That decision by Se-Kure was already criticized by Judge Guzman, who denied Se-Kure's request to extend fact discovery. Now Se-Kure argues any additional 30(b)(6) depositions will be limited to the "advice of counsel" issues. At the same time Se-Kure claims the witnesses that have already been provided by Diam simply have not, to Se-Kure's satisfaction, identified when Diam first became aware of Se-Kure's patent and further argues that Diam never complied with the original Rule 30(b)(6) notice.
Transcript of Oral Argument at 8, Se-Kure Controls, Inc. v. Daim USA, Inc., 06 C 4857 (June 14, 2007) (commenting "I'm absolutely flabbergasted that knowing the discovery date is approaching, you failed to do anything to compel them to produce their witnesses before the discovery cutoff date.").
The fact that Diam's witnesses have not answered the question of when they became aware of Se-Kure's patent only serves to undermine Diam's ability to rely on the advice of counsel defense during trial. In other words, it will be Diam that is prejudiced at trial if its witnesses do not know when they learned about the patent in suit. Mr. Pail's deposition may also provide the information Se-Kure is seeking; Mr. Katcher's deposition testimony provides that Mr. Pail was part of the development team that reviewed products in the marketplace and may have become aware of the `590 Patent. So though the Court believes that Se-Kure should not be prejudiced because of Diam's decision to wait until after fact discovery closed before deciding to rely on an advice of counsel defense, Se-Kure's dissatisfaction with previous testimony does not warrant additional depositions at this stage in the litigation. Se-Kure has simply not convinced the Court that it needs to take additional fact witness testimony on this issue.
Deposition of Scott Katcher at 74-76, Se-Kure Controls, Inc. v. Daim USA, Inc., 06 C 4857 (August 14, 2007).
C. Documents
IV. Conclusion
In re EchoStar Commc'ns Corp., 448 F.3d at 1302.