206 F.R.D. 422 (E.D.Tex. 2000), 2:99CV168, Power Mosfet Technologies v. Siemens AG

Docket Nº2:99CV168.
Citation206 F.R.D. 422
Opinion JudgeRADFIELD, United States Magistrate Judge.
Party NamePOWER MOSFET TECHNOLOGIES, Plaintiff, v. SIEMENS AG, et al., Defendants.
AttorneyJay P. Kesan, Asst. Professor of Law, Champaign, IL, pro se. Allen M. Sokal, IV, Smith R. Brittingham, IV, Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, DC, Carl R. Roth, Law Office of Carl R. Roth, Marshall, TX, Michael Wayne Shore, Alfonso Garcia Chan, Joel M. Fi...
Case DateOctober 30, 2000
CourtUnited States District Courts, 5th Circuit, United States District Courts. 5th Circuit. United States District Court (Eastern District Texas)

Page 422

206 F.R.D. 422 (E.D.Tex. 2000)

POWER MOSFET TECHNOLOGIES, Plaintiff,

v.

SIEMENS AG, et al., Defendants.

No. 2:99CV168.

United States District Court, E.D. Texas, Beaumont Division.

October 30, 2000

On plaintiff's motions to compel and for sanctions in patent infringement suit, the District Court, Radford, United States Magistrate Judge, held that: (1) interrogatory which asked defendant to identify and produce every document provided to a court, a Patent & Trademark Office, or any other person which contained a definition for any of 19 enumerated terms as used in a patent, was unduly burdensome; (2) common interest privilege protected communications between defendants charged with independent infringement of the same patent with regard to declaring patent invalid or unenforceable; and (3) common interest privilege did not protect communications between defendants insofar as they concerned construction of the patent.

Motions granted in part and denied in part.

Jay P. Kesan, Asst. Professor of Law, Champaign, IL, pro se.

Allen M. Sokal, IV, Smith R. Brittingham, IV, Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, DC, Carl R. Roth, Law Office of Carl R. Roth, Marshall, TX, Michael Wayne Shore, Alfonso Garcia Chan, Joel M. Fineberg, PC, Dallas, TX, for plaintiff.

Gilbert Irvine Low, Orgain, Bell & Tucker, Beaumont, TX, Robert Martin Chiaviello, Jr., Baker Botts LLP, Jane Politz Brandt, Bruce S. Sostek, Thompson & Knight, James Patrick Bradley, Li Chen, Sidley & Austin, Dallas, TX, Hubert Oxford, III, Robert William Craft, Jr., Michael Keith Eaves, Benckenstein

Page 423

& Oxford, Beaumont, TX, Nicholas H. Patton, Patton, Tidwell, Sandefur, Damon Young, Lance Lee, Young, Pickett & Lee, Texarkana, TX, Neil P. Sirota, Baker Botts LLP, New York City, David E. Killough, O'Melveny & Myers, San Francisco, CA, for defendants.

MEMORANDUM OPINION AND ORDER

RADFIELD, United States Magistrate Judge.

Plaintiff, Power Mosfet Technologies " PMT", filed this suit alleging patent infringement against the Defendants, including ST Microelectronics, Inc. (" STM" ), with respect to U.S. Patent No. 5,216,275 (" the '275 patent" ) that PMT received by assignment from the University of Electronic Science Technology of China.1

In July 2000, Plaintiffs filed a Motion to Compel [108] attacking claims of a joint defense agreement alleged to exist by the Defendants. Plaintiff also filed a Motion to Compel and for Sanctions [132] regarding answers to certain interrogatories, including one in which Defendants had asserted privilege due to the joint defense agreement. A Markman hearing was held August 28-29, 2000 before Special Master Jay Kesan, whose report is pending.

These motions have been referred to the undersigned United States Magistrate Judge for resolution per 28 U.S.C. § 636(b) and the Local Rules for the Assignment of Duties to United States Magistrates by order of Judge Thad Heartfield [172]. For the reasons given, the Court finds that a joint defense agreement does exist, but that it does not provide as broad a protection that Defendants would like. Thus, Plaintiff's Motion to Compel [108] and Plaintiff's Motion to Compel and for Sanctions [132] are GRANTED-IN-PART and DENIED-IN-PART.

Interrogatory # 5

Plaintiff requested the date that an employee of a sister company conceived the alleged infringing product(s) referred to as " MdMesh." Defendant stated that it had no control over that the employee, and thus could not be required obtain the information sought.

Although consolidation of this suit with a recent suit against the sister company is likely and would render the issue moot, the Court conditionally GRANTS-IN-PART this request at this time.2

Interrogatory # 14

Plaintiff propounded the following interrogatory:

Identify and produce every document where you or your attorneys in the past acting on your behalf have provided a court, a Patent & Trademark Office or any other person with a definition for any of the following terms as used in a patent. (19 terms omitted. Words in italics were given broad definitions by the Plaintiff as part of the request).

Defendant ST objected to the production of documents in response to an interrogatory, claimed work product, argued the existed of protective orders in other litigation, objected to the burden and relevance, and referenced the availability of information in the prosecution history files of the USPTO.

Without question, the information would be relevant, particularly if Defendant argued definitions of the terms that would injure its Markman construction position. Nor is it sufficient to point to the PTO, since ST may have argued those adverse positions in applications which are confidential by virtue of having failed or being abandoned, and thus that information would be unavailable except from the files of ST and its prosecution counsel. Protective orders are of no avail as it would suffice to enter appropriate orders to extend that protection. Work product does not apply to prosecution materials.

Page 424

Many a patent attorney has been deposed and forced to turn over their files, which are never prepared in the immediate anticipation of litigation, let alone as a response to litigation. And, issuing a request for production would be sufficient to defeat the defect in form.

That leaves burden. Fortunately for Defendant, the request is overbroad and burdensome. Many of the requested terms are so common in semiconductor technology as to implicate every patent application ever filed by Defendant in the U.S. and abroad, and ST claims to own over 1,000 patents, nor has there been a showing of compelling need that would justify imposing such a burden on the Defendant.

Plaintiff needs to reframe its interrogatory as a request for production and focus in on the infringing device, perhaps on the 58 patents that Defendant claims relate to the MDMesh product.

Defendant's objection is SUSTAINED.

Interrogatory # 9 & The Joint Defense Agreement

These two issues are essentially the same request in two separate papers. The Court's inquiry must address these questions:

1) Do the parties have a common interest?

2) What is the extent of the common interest?

3) Have the parties proven that they operated within the common interest?

4) What privilege is being asserted under the common interest?

5) Is the requested material within the asserted privilege? 3

The incorrect answer to any of the above questions will mean that the Defendants must produce the documents which fail to pass muster.

The Common Interest Privilege and Its Scope

The common interest privilege is rooted in criminal proceedings against multiple defendants. Typically, the defendants face charges arising from the same criminal conduct or transaction, even if the cases are tried separately. Chahoon v. Commonwealth, 62 Va. 822, 21 Grat. 822, (1871) (upholding privilege even though co-defendants tried in separate actions.) Should there be no common interest or defense, no privilege applies. Smale v. United States, 3 F.2d 101, 102 (7th Cir.1924) (rejecting privilege when co-defendants engaged in separate defenses). The privilege has been recognized in civil cases in which parties have an identical, not similar, legal interest, and not merely a commercial interest.4 See In re Regents of University of California, 101 F.3d 1386 (Fed.Cir.1996) (adopting the 7th Circuit standard as stated in Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146, 1172, (D.S.C.1974)). Even where a common interest exists, that alone does not create a privilege; it merely extends a recognized privilege, commonly the attorney-client or work...

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3 practice notes
  • How Federal Courts Apply Common Interest Privilege To Litigation Funding, M&A Due Diligence, And Other Third-Party Scenarios
    • United States
    • Mondaq United States
    • March 13, 2018
    ...(D.C. Cir. 1994). The common interest privilege is also an extension of the work-product doctrine. See Power Mosfet Techs. v. Siemens AG, 206 F.R.D. 422, 424 (E.D. Tex. 2000). Generally, when an attorney discloses privileged information to a third party, both attorney-client and work-produc......
  • SC Lawyer, May 2008, #3. Joint Defense Agreements.
    • United States
    • South Carolina Bar Journal Nbr. 2008, January 2008
    • January 1, 2008
    ...F.R.D. 567, 572 (D.C. Cal. 2002), competitors seeking to have rival patents declared invalid, Power Mosfet Technologies v. Siemens AG, 206 F.R.D. 422, 425 (E.D. Tx. 2000), and co-parties who share a common interest, Sheet Metal Workers International Ass'n v. Sweeny, 29 F.3d 120, 124 (4th Ci......
  • Application of the Common-Interest Doctrine in Bankruptcy Proceedings
    • United States
    • JD Supra United States
    • February 2, 2011
    ...Patent Litig., 2005 WL 2319005, at *4.Jason Finkelstein19 Id. at *4-5.20 Id. at *4 (quoting Power Mosfet Tech. v. Siemens AG, 206 F.R.D. 422, 425 (E.D. Tex. 2000)).21 In re Megan-Racine Assocs. Inc., 198 B.R. at 572.22 In re Leslie Controls Inc., 437 B.R. 493.23 Id. at 502.24 In re Hardwood......
2 firm's commentaries
1 books & journal articles
  • SC Lawyer, May 2008, #3. Joint Defense Agreements.
    • United States
    • South Carolina Bar Journal Nbr. 2008, January 2008
    • January 1, 2008
    ...F.R.D. 567, 572 (D.C. Cal. 2002), competitors seeking to have rival patents declared invalid, Power Mosfet Technologies v. Siemens AG, 206 F.R.D. 422, 425 (E.D. Tx. 2000), and co-parties who share a common interest, Sheet Metal Workers International Ass'n v. Sweeny, 29 F.3d 120, 124 (4th Ci......

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