Goss v. MAN Roland, et al.

2006 DNH 053

• Court: District Court, D. New Hampshire
• Decided: April 28, 2006
• Docket: Civil No. 03-cv-513-SM. Opinion No. 2006 DNH 088
• Status: Published

Opinion

Goss v . MAN Roland, et a l . 03-CV-513-SM 04/28/06 UNITED STATES DISTRICT COURT DISTRICT OF NEW HAMPSHIRE

Goss International Americas, Inc., Plaintiff

v. MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Defendants Civil N o . 03-cv-513-SM Opinion N o . 2006 DNH 053

MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Counterclaim Plaintiffs

v. Goss International Americas, Inc. and Heidelberger Druckmaschinen AG, Counterclaim Defendants

O R D E R

Before the court are various discovery motions filed by Goss

International Americas, Inc. (“Goss”), MAN Roland, Inc. and MAN

Roland Druckmaschinen AG (collectively “MAN Roland”), and

Heidelberger Druckmaschinen AG (“Heidelberger”). Those motions

are granted and denied as explained below. In document n o . 7 2 , Goss moves to compel defendants to

produce various documents and to release certain product samples

from the protective order in this case so that its employees may

examine those samples in preparation for trial. MAN Roland says

all issues raised by Goss are moot except for the request to

release the product samples from the protective order. MAN

Roland insists that the product samples must remain protected to

safeguard trade secrets or proprietary information of third

parties that may be contained therein. MAN Roland, however, has

produced nothing to suggest that the product samples either

include proprietary information or are sold under confidentiality

agreements. Accordingly, Goss’s motion to compel (document n o .

72) is granted; the product samples may be examined by Goss’s

employees.

In document n o . 7 8 , Heidelberger moves to stay certain

electronic discovery and to have MAN Roland share the costs of

producing that discovery. Heidelberger’s motion to stay is now

moot, its Rule 11 and Rule 12(b)(6) motions having been resolved.

Heidelberger’s request to have MAN Roland share in the costs of

producing the disputed electronic discovery is denied; the

2 circumstances of this case do not come within the reach the rule

developed in Zubulake v . UBS Warburg LLC, 216 F.R.D. 280

(S.D.N.Y. 2003).

In document n o . 1 0 4 , Goss moves to compel production of

documents pertaining to defendants’ advice of counsel defense.

As MAN Roland indicated, in its objection, that it would produce

the disputed documents in late January 2006, at the conclusion of

discovery, Goss’s motion is presumed to be moot. If MAN Roland

has not yet produced those documents it shall do s o .

In document n o . 1 1 1 , MAN Roland moves to compel Goss to

produce another Rule 30(b)(6) witness, because the one deposed on

November 1 7 , 2005, Jackson Jones, was not prepared to testify

substantively and was prevented from disclosing which documents

he reviewed prior to testifying. Goss counters that its counsel

prevented Jones from testifying only with respect to improper

subjects of inquiry, such as claim construction, and that

information about which documents Jones reviewed (all provided by

counsel) was protected by attorney-client and/or work product

privilege.

3 Whether information about the materials Jones reviewed prior

to his deposition can be privileged is an interesting question,

but since the only relief MAN Roland seeks is an order compelling

Goss to produce a witness to testify about unaddressed issues

remaining after the April 1 9 , 2005, deposition, the court will

confine itself to that question. From portions of the deposition

transcript submitted by MAN Roland, it appears that the

deposition was terminated when counsel for MAN Roland insisted

upon asking Jones about claim construction. Counsel for Goss was

correct in objecting, because claim construction is a question of

law, and legal contentions are not a proper subject for factual

discovery. See SmithKline Beecham Corp. v . Apotex Corp., N o . 99-

CV-4303 et a l . , 2004 WL 739959, at *2-*4 (E.D. P a . March 2 3 ,

2004) (ruling that certain categories of proposed deposition

pertained to legal positions that should be ascertained by means

of interrogatories rather than deposition); In re Indep. Serv.

Orgs. Antitrust Litig., 168 F.R.D. 6 5 1 , 654 (D. Kan. 1996)

(granting protective order against Rule 30(b)(6) deposition

inquiry into legal conclusions, on grounds that producing

responses to such questions is “overbroad, inefficient, and

unreasonable); McCormick-Morgan, Inc. v . Teledyne Indus., Inc.,

4 134 F.R.D. 275, 285-88 (N.D. Cal. 1991) (ordering both parties to

use contention interrogatories rather than Rule 30(b)(6)

deposition to ascertain other side’s legal positions). Because

the only information MAN Roland appears not to have obtained from

the Goss witness was his position on claim construction, MAN

Roland’s motion to compel (document n o . 111) is denied.

In document n o . 1 2 1 , MAN Roland moves to bifurcate the

issues of damages and willful infringement for a separate trial,

as well as for an order staying discovery on the issue of willful

infringement until after the liability issues have been resolved.

Goss and Heidelberger object, noting, inter alia, that MAN Roland

has previously argued, in opposition to Goss’s motion to

bifurcate, that all the claims, counterclaims, and defenses in

this case should be tried together. MAN Roland’s arguments in

favor of bifurcation are no more compelling than those previously

made by Goss. While the parties seem content to geometrically

increase the time, effort, and expense of resolving this rather

straight-forward patent case, far beyond what is necessary, the

court simply does not have that luxury. MAN Roland’s motion to

bifurcate (document n o . 121) is denied.

5 In document n o . 1 8 0 , MAN Roland asks the court to compel

Goss to produce documents related t o : (1) expert testimony

provided by D r . Harvey Levenson in an unrelated patent

infringement suit against Mitsubishi,1 and (2) declarations by

Dr. Levenson, submitted by Heidelberger to the PTO during the

prosecution of the patents-in-suit. While D r . Levenson was an

expert witness in the Mitsubishi litigation, and was retained to

provide declarations during the prosecution of the patents-in-

suit, he is neither a testifying nor consulting expert in this

litigation.

MAN Roland offers no legal basis for its claim of

entitlement to the documents D r . Levenson reviewed to prepare his

opinions and testimony in the Mitsubishi litigation, and Goss

contends that it has produced all the documents that are

responsive to MAN Roland’s discovery requests, other than those

subject to a protective order in the Mitsubishi litigation. MAN

Roland argues that Goss should produce redacted versions of those

documents, rather than withhold them in their entirety; Goss

counters that it is bound by the protective order and that MAN

1 In that proceeding, Levenson was retained, as an expert, by Goss’s predecessor in interest, Heidelberg Harris, Inc.

6 Roland has asked neither Mitsubishi nor the court that heard the

Mitsubishi case for relief from the protective order. M A N Roland

is not entitled to the Mitsubishi-related material it requests.

M A N Roland is also not entitled to any additional documents

concerning D r . Levenson’s P T O declarations. In M A N Roland’s

view, the holding in Hewlett-Packard C o . v . Bausch & Lomb, Inc.,

116 F . R . D . 533 (N.D. Cal. 1987), entitles it t o : (1) all

documents concerning the information provided to D r . Levenson

during his preparation of declarations submitted to the P T O

during the prosecution of the patents-in-suit; and (2) all

documents concerning any opinions expressed in those

declarations. Goss objects on grounds that the material M A N

Roland seeks is privileged work product.

Hewlett-Packard is inapposite. That case was decided under

F E D . R . C I V . P . 26(b)(4), because the expert in question, who had

provided a declaration to the P T O , was also a testifying expert

at trial. Here, by contrast, Rule 26(b)(4) does not apply,

because D r . Levenson is not a testifying expert. The cross-

examination concerns that animated the decision in Hewlett-

7 Packard are entirely absent from this case. Moreover, Hewlett-

Packard involved a different kind of PTO proceeding than the ones

in which D r . Levenson gave declarations. In Hewlett-Packard, the

expert’s declarations supported patent validity in the context of

a reexamination action, while here, D r . Levenson’s declarations

were offered during patent prosecution. That distinction is

meaningful because in Hewlett-Packard, the reexamination petition

and the court case were brought at nearly the same time, by the

same party, and both actions asserted the same arguments for

invalidity, making the expert witness’s declaration in the

reexamination action virtually identical to his expert report and

testimony in the court case. Here, of course, Goss has not

retained D r . Levenson as an expert witness.

Not only is Hewlett-Packard inapposite, but in addition, MAN

Roland has failed to demonstrate that the documents it seeks are

relevant to any claim in this case. Obviously, MAN Roland

contends that the patents-in-suit are invalid, but it does not

explain how the manner in which D r . Levenson prepared his PTO

declarations has any relevance to its claims of invalidity. The

patents are valid or they are not, based upon well-established

8 principles of patent law. In Hewlett-Packard, drafts of a patent

holder’s testifying expert’s declarations to the P T O in a

reexamination proceeding (that was nearly parallel to a

declaratory judgment action claiming invalidity) were

discoverable because they would aid the patent challenger in

cross-examining the patent holder’s expert in court, where he was

offering an opinion virtually identical to the declaration filed

with the P T O . Neither Hewlett-Packard nor M A N Roland suggest any

other use for the material M A N Roland seeks, and since that

particular use is precluded in this case – D r . Levenson is not a

testifying expert – the material is not relevant. M A N Roland is

not entitled to the PTO-related material it seeks.

Accordingly, M A N Roland’s motion to compel (document n o .

180) is denied.

In document n o . 183, M A N Roland moves to preclude Goss from

claiming infringement under the doctrine of equivalents ( “ D O E ” ) .

Invoking F E D . R . C I V . P . 37(c)(1), M A N Roland argues that Goss

should be barred from making a claim under the D O E because,

during discovery, it failed to give timely notice of its intent

9 to rely upon that theory of liability. MAN Roland is responding

to an expert report from Goss, served before the close of

discovery, that suggested infringement under the DOE. In MAN

Roland’s view, that suggestion contradicted an interrogatory

answer in which Goss appeared to claim only literal infringement.

However, given MAN Roland’s interrogatory, which lumped literal

infringement with infringement under the DOE, and MAN Roland’s

own failure to ask directly whether Goss intended to rely on the

DOE (which it could easily have done), Goss’s interrogatory

response cannot fairly be read as disclaiming any intent to prove

infringement by equivalents.

Two additional factors counsel against awarding the relief

MAN Roland seeks. First, the DOE is not a separate cause of

action; it is simply an alternative means of proving

infringement. A simple claim of patent infringement is

sufficient to put a defendant on notice that a plaintiff may rely

upon the doctrine of equivalents. Second, the Rule 37(c)(1)

sanction is a prohibition on the use of improperly disclosed

evidence at trial, not a bar to making an imperfectly disclosed

legal argument. Accordingly, MAN Roland’s motion to preclude

10 Goss from claiming infringement under the doctrine of equivalents

(document n o . 183) is denied.

In document n o . 185, MAN Roland moves to compel Goss to

produce various employees for depositions. In MAN Roland’s view,

the two separate scheduling orders in this case – the first one

involving MAN Roland and Goss, the second involving MAN Roland

and Heidelberger – entitle it to the total number of depositions

listed in both orders (either twenty-five or thirty), rather than

the fifteen provided for by the first of the two scheduling

orders. Goss and Heidelberger both object, on grounds that MAN

Roland has already taken more than the fifteen depositions to

which it is entitled and that allowing more depositions at this

late date could disrupt the briefing schedule.

The second scheduling order in this case was entered after

Goss asserted a third infringement claim against MAN Roland and

after MAN Roland asserted its antitrust (and related)

counterclaims against Goss and Heidelberger. MAN Roland says

Goss and Heidelberger are claiming the right to a total of

twenty-five depositions between them, while trying to limit MAN

11 Roland to fifteen. Goss and Heidelberger counter that M A N Roland

is claiming the right to take thirty depositions, while trying to

limit them to a total of fifteen. In any event, because

Heidelberger i s , in fact, another “side” for discovery purposes,

M A N Roland is entitled to fifteen depositions from Goss and

fifteen from Heidelberger, while Goss and Heidelberger are each

entitled to fifteen depositions from M A N Roland. Accordingly,

M A N Roland’s motion to compel (document n o . 185) is granted, and,

necessarily, Goss’s cross motion for a protective order (document

n o . 236) is denied.

In document n o . 186, Goss moves in limine for an order

barring M A N Roland from using, in support of four pending summary

judgment motions and its claim construction motion, deposition

testimony taken from four Heidelberger employees in Germany on

December 1 3 , 1 4 , 1 5 , and 16. 2 In Goss’s view, that deposition

testimony may not be used because the depositions were taken

within a foreign country, and not consistently with the

requirements of F E D . R . C I V . P . 28(b). Both Goss’s motion and

2 Given Goss’s objection to use of the disputed depositions in support of various pre-trial motions, its motion is probably better thought of as a motion to strike than a motion in limine.

12 supporting memorandum and MAN Roland’s response are pretty much

off the mark.

MAN Roland initially sought to depose four Heidelberger

employees in the United States. Heidelberger agreed to

facilitate those depositions but preferred that they be conducted

in Germany, where the employees lived. MAN Roland acquiesced.

By agreement, then, MAN Roland deposed the four Heidelberger

employees, before court reporters from California, in a hotel in

Heidelberg, Germany. Goss had adequate notice weeks before the

depositions were scheduled to take place and, of course was

entitled to attend and participate.

The first deposition was scheduled to begin in Germany on

December 1 3 , 2005. On the eve of that deposition - on December

12 - counsel to Goss faxed a letter to opposing counsel

registering Goss’s objection to the depositions basically on

grounds that the procedure agreed to by MAN Roland and

Heidelberger involved an unqualified officer - that i s , the court

stenographer(s) from California were not authorized to administer

oaths in Germany.

13 Needless to say, by the time the fax was sent, Goss was

aware that counsel and stenographers had already incurred

substantial expense for travel and had actually traveled to

Germany. A suspicious mind might find the timing to be not

coincidental, and consistent with an objectionable spirit. If

the court were inclined to respond in the same spirit it would

simply point out that Goss’s letter merely notifies opposing

counsel of Goss’s intent to “object to the admissibility of any

such [deposition] testimony in the event that it is offered as

evidence at trial in this litigation.” Letter from Georg

Reitboeck, dated December 1 2 , 2005. Since the parties are not

offering any deposition testimony at trial, yet, and Goss’s

objection was plainly limited, any broader scope objection that

might have been made was forfeited and there is no issue, yet.

But the court is not so inclined.

Under F E D . R . C I V . P . 32(d)(2), any “[o]bjection to taking a

deposition because of disqualification of the officer before whom

it is to be taken is waived unless made before the taking of the

deposition begins or as soon thereafter as the disqualification

becomes known or could be discovered with reasonable diligence.”

14 Technically, Goss probably objected before the depositions

“began,” though a plausible argument might be made that under

these circumstances “begins” should be construed to mean when

counsel actually left the country to take the depositions. But

it doesn’t matter because, in the end, Goss’s sharp practice

cannot win out. Based on this record I conclude that Goss’s

counsel deliberately waited until opposing counsel and parties

were prejudiced before springing their objection, and, because of

that inequitable litigation conduct, are properly estopped from

lodging an objection in this court.

Moreover, Rule 28(b)(4) empowers this court to commission a

person to administer any necessary oath and to take testimony in

a foreign country, which commission shall be issued “on

application and notice and on terms that are just and

appropriate.” Had Goss raised a timely good faith objection, and

had MAN Roland or Heidelberger thereupon applied for issuance of

a commission, the court would have undoubtedly granted i t . The

court hereby grants, nunc pro tunc, a commission to the court

stenographer(s) before whom the depositions were taken, as of the

15 beginning of the first and extending through the last deposition,

to administer oaths and take testimony in Germany as was done.

Goss presumably has access to the depositions taken, so is

not prejudiced. To the extent it actually wished to be present,

and to inquire, Heidelberger shall reschedule the depositions of

the same witnesses, in Germany, to allow Goss to ask appropriate

questions, but, Goss shall pay the reasonable travel, hotel and

subsistence costs incurred by opposing counsel and the

stenographer(s), as well as the reasonable attorneys’ fees of MAN

Roland and Heidelberger, as well as the stenographic fees,

associated with its resumption of those depositions.

The motion in limine (document n o . 186) is denied.

Summary

For the reasons given, the relief requested in documents 7 2 ,

104, and 185 is granted. The relief requested in documents 7 8 ,

111, 1 2 1 , 1 8 0 , 183, 186, and 236 is denied.

16 SO ORDERED.

Steven J. McAuliffe 'Chief Judge

April 28, 2006

cc: Daniel E. Will, Esq. Hugh T. Lee, Esq. Richard S. Gresalfi, Esq. Georg C. Reitboeck, Esq. Mark A. Hannemann, Esq. Michael J. Lennon, Esq. T. Cy Walker, Esq. Danielle L. Pacik, Esq. Jonathan M. Shirley, Esq. Alfred H. Hemingway, Jr., Esq. Irvin D. Gordon, Esq. Martin B. Pavane, Esq. Michael J. Songer, Esq. Shari R. Lahlou, Esq. Sidney R. Bresnick, Esq. Teodor J. Holmberg, Esq. Richard D. Margiano, Esq. John F. Sweeney, Esq. Steven F. Meyer, Esq. Tony V. Pezzano, Esq. Bruce W. Felmly, Esq. Seth J. Atlas, Esq. Anthony S. Augeri, Esq.