Asetek Danmark A/S v. Coolit Systems Inc

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 San Francisco Division 11 ASETEK DANMARK A/S, Case No. 19-cv-00410-EMC (LB)

12 Plaintiff, DISCOVERY ORDER 13 v. Re: ECF No. 275 14 COOLIT SYSTEMS INC, et al., 15 Defendants. 16 17 INTRODUCTION 18 The parties dispute a subpoena and deposition topics served by CoolIT Systems Inc. (CoolIT) 19 on Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Finnegan) on August 16, 2021. 20 Finnegan counseled the plaintiff, Asetek, in the prosecution of patents that are now subject to this 21 infringement litigation. There are pending motions for leave to file amended counterclaims and to 22 amend infringement contentions, but as these motions add new entities and do not amend the 23 claims at issue, the court may decide the pending discovery dispute at this time. The court grants 24 Finnegan’s motion to quash the subpoena.1 25 26

27 1 Joint Letter Br. – ECF No. 275. Citations refer to material in the Electronic Case File (ECF); pinpoint citations are to the ECF-generated page numbers at the top of documents. The court can decide the 1 STATEMENT 2 This is CoolIT’s second attempt to serve a subpoena on Finnegan. On August 13, 2021, this 3 court quashed Asetek’s subpoena because it was far broader than the narrowed request put forth in 4 the discovery letter. That subpoena included twelve topics, but the joint letter only alleged two 5 broad topics.2 As attorney depositions are rarely allowed unless the deposition is narrowly tailored 6 and necessary, and the subpoena was significantly broader than the request made in the discovery 7 letter, this court quashed that subpoena.3 8 On August 16, 2021, CoolIT served Finnegan with a second subpoena with six revised topics 9 regarding counsel’s understanding of (1) the patents-in-suit and/or related patents and applications 10 (relevant patents and applications), and their prosecution history, (2) communications with Asetek 11 or the inventor about the relevant patents and applications, (3) the inventor and/or any third party’s 12 contributions to the conception of the invention included in the relevant patents and/or applications, 13 (4) prior art searches and results related to the relevant patents and applications, (5) “all intellectual 14 property assessments, analyses, or reviews related to AIO Coolers” that were prepared by the 15 prosecution counsel during prosecution of the relevant patents and applications, and (6) CoolIT and 16 its products.4 CoolIT asserts that these topics narrowly target information relevant to Asetek’s 17 doctrine of equivalents and “CoolIT’s assessment of whether to seek leave to add an inequitable 18 conduct defense.”5 19 Finnegan objected to the second subpoena on August 25, 2021, and asks this court to quash the 20 subpoena, asserting that the subpoena asks for irrelevant testimony and that CoolIT’s defenses of 21 inequitable conduct and prosecution history estoppel are insufficiently pled and time-barred.6 22 23 24

25 2 Discovery Order – ECF No. 270. 26 3 Id. 4 Schedule A of Asetek’s August 16, 2021 Subpoena – ECF No. 275-1 at 12–13. 27 5 Joint Letter Br. – ECF No. 275 at 3. 1 ANALYSIS 2 1. Prosecution History Estoppel 3 CoolIT noticed the deposition to seek evidence relevant to Asetek’s doctrine of equivalents 4 arguments and probative of Asetek’s current positions on claim scope. Specifically, testimony by 5 prosecution counsel may be relevant to Asetek’s contention that the claim term “curved blades” is 6 equivalent to “straight blades” and that “a reservoir” is equivalent to multiple receptacles.7 7 Finnegan argues any deposition would be irrelevant to the issue of prosecution history estoppel 8 because that inquiry is “based solely on the USPTO’s written record.”8 Hoganas AB v. Dresser 9 Indus., Inc., 9 F.3d 948, 952 (Fed. Cir. 1993) (“The legal standard for determining what subject 10 matter was relinquished is an objective one, measured from the vantage point of what a competitor 11 was reasonably entitled to conclude, from the prosecution history, that the applicant gave up to 12 procure issuance of the patent.”). 13 CoolIT does not contradict this contention and cites only to cases that found depositions of 14 patent prosecution attorneys were relevant to issues of inequitable conduct. There is no dispute 15 here, and the court finds no basis in the doctrine of prosecution history estoppel to compel 16 deposition of an attorney. 17 18 2. Inequitable Conduct 19 Finnegan argues that CoolIT is barred from obtaining discovery on the basis of alleged 20 inequitable conduct because CoolIT has not pled inequitable conduct as a defense in this case Petka 21 v. Mylan Pharms, Inc., No. 16-mc-80196-MEJ, 2016 WL 6947589 (N.D. Cal. Nov. 28, 2016); In re 22 Insogna, No. 3:19-cv-1589, 2020 WL 85487, at *10 (S.D. Cal. Jan. 3, 2020) (“Defendants do not 23 allege an inequitable conduct defense. Yet, the cases Defendants cite for the proposition that courts 24 ‘routinely’ depose opposing counsel overwhelmingly include those where an inequitable conduct 25 defense is at issue.”). Finnegan goes one step further to say CoolIT is not permitted to plead that 26

27 7 Joint Letter Br. – ECF No. 275 at 4. 1 defense now as the deadline to amend pleadings past on February 12, 2021.’ Notably, a motion to 2 amend CoollT’s infringement contentions is pending before the trial court but does not include 3 inequitable conduct. Thus, inequitable conduct is not an active issue. 4 Nevertheless, CoolIT argues the depositions are relevant to “CoolIT’s assessment of whether 5 || to seek leave to add an inequitable conduct defense.” But discovery cannot be a fishing expedition 6 || for new claims, defenses, or surprise facts. Fed. R. Civ. P. 26(b)(1) Advisory Committee’s note 7 (“The rule change signals to the court that it has the authority to confine discovery to the claims 8 and defenses asserted in the pleadings, and signals to the parties that they have no entitlement to 9 || discovery to develop new claims or defenses that are not already identified in the pleadings.”); see 10 also Games2U, Inc. v. Game Truck Licensing, LLC, No. MC-13-00053-PHX-GMS, 2013 WL 11 4046655, at *9 (D. Ariz. Aug. 9, 2013) (granting a motion to quash subpoena of prosecuting 12 attorney where the alleged infringer had not alleged inequitable conduct). Without allegations of 5 13 inequitable conduct, there is a risk of a deposition with too few parameters to limit the inquiry. 14 CONCLUSION a 16 The court grants Finnegan’s motion to quash CoollT’s August 16, 2021, subpoena.

IT IS SO ORDERED. 19 Dated: October 8, 2021 LAE 20 LAUREL BEELER 21 United States Magistrate Judge 22 23 24 25 26 27 28 || ° Joint Case Management Statement — ECF No. 222-2 at 5.