Camco, Inc. v. Baker Oil Tools, Inc.

45 F.R.D. 384, 160 U.S.P.Q. (BNA) 541, 12 Fed. R. Serv. 2d 845, 1968 U.S. Dist. LEXIS 8819
CourtDistrict Court, S.D. Texas
DecidedJuly 16, 1968
DocketCiv. A. No. 67-H-885
StatusPublished
Cited by12 cases

This text of 45 F.R.D. 384 (Camco, Inc. v. Baker Oil Tools, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Camco, Inc. v. Baker Oil Tools, Inc., 45 F.R.D. 384, 160 U.S.P.Q. (BNA) 541, 12 Fed. R. Serv. 2d 845, 1968 U.S. Dist. LEXIS 8819 (S.D. Tex. 1968).

Opinion

[385]*385MEMORANDUM

INGRAHAM, District Judge.

Plaintiff, Cameo, Incorporated, seeks a declaratory judgment under Secs. 2201 and 2202, Title 28, U.S.C., holding that United States Letters Patent Nos. Re. 26,085; 3,036,636; 3,094,168; 3,101,-783; 3,112,796; and 3,319,717 are invalid and non-infringed. In a second cause of action plaintiff seeks a declaratory judgment declaring and adjudging that a certain oil well packer manufactured by Cameo, to-wit, Model MD-1, does not come within the scope of any of the claims of patent No. 3,080,922 and that plaintiff is consequently not liable for any royalties under the licensing agreement between plaintiff and defendant, the effective date of which was May 18, 1965. Finally, in a third cause of action, plaintiff charges defendant with violating the Sherman Anti-Trust and Clayton Acts, with unfair competition and with unfair trade practices. In the third cause of action plaintiff prays for appropriate monetary and injunctive relief.

Defendant has filed a counterclaim alleging two causes of action. In the first, defendant charges plaintiff with infringement of ’085, ’636, ’168, ’783 and ’717, which patents were issued to various inventors and were subsequently assigned to defendant. In the second cause of action, defendant alleges that Cameo’s oil well packers Models MD-1 and [¶] are within the scope of at least claim 5 of No. ’922. Defendant therefore prays for a judgment for the royalty payments due under the 1965 licensing agreement.

This typically complex patent, antitrust, unfair competition and contract action is currently before the court for consideration of plaintiff’s motion for production of documents pursuant to Rule 34, Fed.R.Civ.P. Defendant has opposed the motion and both sides have submitted briefs of the law.

Plaintiff has moved for production of six categories of documents. In the interest of clarity, the court will treat each category and the objections to the production thereof separately.

1. The first category consists of:

“Copies of all patents now or at any time owned by the Defendant, Baker Oil Tools, Inc., related to the oil well packer art, whether expired or unexpired, including both United States and foreign patents. The term ‘oil well packer art’ as used herein, refers to the art of methods and equipment for sealing off a well at some location below the surface of the earth.”

Defendant objects to producing all of its patents relating to the “oil well packer art” on the grounds that this would involve approximately 450 patents, copies of which may be obtained from the Patent Office at a nominal cost.

Plaintiff, while admitting that copies of patents may be purchased from the Patent Office for fifty cents each, argues that such copies may be ordered by number only and that it can obtain the numbers of the patents which are owned or have been owned by the defendant most easily from defendant. Plaintiff further contends that its third cause of action charges defendant with improper monopolization as a result of defendant’s manner of acquisition and administration of its patent portfolio and that all of defendant’s patents are thus relevant.

The word patent, in its broader sense, means public. The plaintiff may make its own search in the public office of registry, a source equally available to all. Defendant’s objection to production of the first category of documents will be sustained.

2. The second category of documents encompasses:

“All documents evidencing agreements, whether formal or informal, by the Defendant, Baker Oil Tools, Inc., with parties other than plaintiff, relating to any of the patents described in paragraph (1).”

[386]*386Defendant resists the production of' these documents for the reason that it would involve a tremendously large number of instruments whose relevancy is not clearly established by the pleadings. In support of its position, defendant cites McCullough v. Dairy Queen, Inc., 195 F.Supp. 918 (E.D.Pa.1961).

Plaintiff contends that the requested documents are relevant to the third cause of action and, in particular, to the allegation that defendant utilized a discriminatory and selective licensing scheme in order to achieve and perpetuate a monopoly position beyond the scope and purpose of the several patent monopolies involved. Plaintiff further contends that such agreements are not available from any source other than the defendant.

The court recognizes that this category encompasses a potentially extremely large number of documents; however, it is well settled that a showing of good cause is not rebutted by a showing that production would be burdensome. 2A Barron and Holtzoff, Federal Practice and Procedure, Sec. 796, p. 431 (Wright Ed. 1961). The Dairy Queen case, supra, relied on by the defendant is distinguishable since in the case sub judice the motion for production was made well in advance of trial. After giving the matter careful consideration, the court is of the opinion that there must be some manageable limits to discovery at the present stage of litigation. Accordingly, defendant will be ordered to produce only those agreements relating to the patents in suit, i. e., Nos. ’085, ’636, ’168, ’783, ’796 and ’717. This ruling is without prejudice to plaintiff discovering additional agreements at a later date upon its making a more convincing demonstration of relevancy. ¡

3. The third category of documents is composed of:

“All documents evidencing any charge of infringement, communicated to parties other than the Plaintiff or the Defendant, relating to any of the patents described in paragraph (1).”

Defendant attacks the relevancy of these documents by asking:

“What difference does it make that 30 years ago defendant charged someone with infringement of one of its patents ? What difference does it make if in the recent past defendant has charged someone with infringement of a patent not here in suit?”

Plaintiff answers that its third cause of action has brought defendant’s methods and motives in utilizing its entire patent portfolio into issue and that defendant’s course of action in charging others with infringement is thus relevant to the issues raised by the complaint.

The court agrees that the documents in the third category are relevant. For the reasons noted previously, however, only those documents evidencing charges of infringement of the patents in suit will be ordered. Once again, this ruling is without prejudice to plaintiff renewing the motion.

4. In the fourth category plaintiff seeks:

“All documents evidencing consideration, by or on behalf of the Defendant, Baker Oil Tools, Inc., of oil well packer structures made or offered for sale by the Plaintiff.”

Defendant maintains that the designation of the documents in this category is unduly vague and, in addition, it claims the attorney-client privilege as to those documents which were prepared by defendant’s counsel for the purpose of deciding whether plaintiff was guilty of infringement.

Plaintiff replies that it used the word “consideration” in its dictionary sense, i.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Deutsch v. Cogan
580 A.2d 100 (Court of Chancery of Delaware, 1990)
First Security Savings v. Kansas Bankers Surety Co.
115 F.R.D. 181 (D. Nebraska, 1987)
Champion International Corp. v. International Paper Co.
486 F. Supp. 1328 (N.D. Georgia, 1980)
Selman Cooke v. New Mexico Junior College Board
579 F.2d 568 (Tenth Circuit, 1978)
Miller v. Doctor's General Hospital
76 F.R.D. 136 (W.D. Oklahoma, 1977)
Biliske v. American Live Stock Insurance
73 F.R.D. 124 (W.D. Oklahoma, 1977)
Marsh v. Commissioner
62 T.C. No. 29 (U.S. Tax Court, 1974)
Honeywell, Inc. v. Piper Aircraft Corp.
50 F.R.D. 117 (M.D. Pennsylvania, 1970)

Cite This Page — Counsel Stack

Bluebook (online)
45 F.R.D. 384, 160 U.S.P.Q. (BNA) 541, 12 Fed. R. Serv. 2d 845, 1968 U.S. Dist. LEXIS 8819, Counsel Stack Legal Research, https://law.counselstack.com/opinion/camco-inc-v-baker-oil-tools-inc-txsd-1968.