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Koninklijke Philips N.V. v. Wangs Alliance Corp.

United States District Court, D. Massachusetts

January 4, 2018

KONINKLIJKE PHILIPS N.V. and PHILIPS LIGHTING NORTH AMERICA CORP., Plaintiffs,
v.
WANGS ALLIANCE CORP., d/b/a WAC LIGHTING CO., Defendant.

          MEMORANDUM AND ORDER

          Denise J. Casper United States District Judge

         I. Introduction

         This case arises out of a dispute between the Plaintiffs, Koninklijke Philips N.V. and Philips Lighting North America Corp. (collectively, “Philips”) and Defendant Wangs Alliance Corp. d/b/a WAC Lighting Co. (“WAC”) regarding WAC's purported infringement of a number of patents held by Philips. D. 30. Philips now moves for summary judgment on the issue of the validity of certain patents with respect to novelty and non-obviousness. D. 182. WAC moves to compel the production of Marc Olivier Flaissier, the named inventor on one of the patents at issue, D. 180, and the production of certain documents related to the relevant prior art, D. 192. For the following reasons, the Court DENIES WAC's motion to compel the production of Flaissier, D. 180, ALLOWS in part and DENIES in part WAC's motion to compel the production of certain documents, D. 192, and DENIES Philips' motion for summary judgment, D. 182.

         II. Procedural History

         This case was initially filed in this Court on May 28, 2014. D. 1. Philips alleges infringement of the following patents: Patent No. 6, 147, 458 (“'458 patent”), Patent No. 6, 250, 774 (“'774 patent”), Patent No. 6, 561, 690 (“'690 patent”), Patent No. 6, 586, 890 (“'890 patent”), Patent No. 6, 788, 011 (“'011 patent”), Patent No. 7, 038, 399 (“'399 patent”) and Patent No. 7, 352, 138 (“'138 patent”) (collectively, the “patents-in-suit”). D. 30 at 1.[1] On May 28, 2015, WAC filed inter partes review (“IPR”) petitions with the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“PTO”) regarding claims in seven of the patents-in-suit and, on November 25, 2015, the PTAB instituted review with respect to claims in six of the patents-in-suit. D. 156. This Court then issued a stay of the proceedings pending the PTAB's decision. D. 156. The PTAB subsequently issued decisions in the IPR petitions, finding that WAC had met its burden of showing invalidity with respect to some of the challenged claims but not others. D. 183 at 6; D. 174. The parties then submitted updated briefing regarding claim construction, D. 178, D. 179, and the Court issued its claim construction decision. D. 211. The Court held a hearing on December 14, 2017, regarding the motions at issue now, D. 223, and took the matters under advisement.

         III. WAC's Motion to Compel Production of Flaissier

         WAC moves to compel the production of Marc Olivier Flaissier (“Flaissier”), the named inventor on the ‘690 patent, who resides in France. D. 180; D. 181 at 6. In general, “[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed.R.Civ.P. 26(b)(1). A party may depose “any person, including a party, without leave of court except” under certain conditions not relevant here. Fed.R.Civ.P. 30(a)(1). “The party seeking an order compelling discovery bears the initial burden of showing that the discovery requested is relevant, ” but once that showing is made, “the objecting party bears the burden of showing that a discovery request is improper.” Continental W. Ins. Co. v. Opechee Constr. Co., No. 15-cv-006-JD, 2016 WL 1642626, at *1 (D.N.H. April 25, 2016).

         In support of its motion to compel, WAC states that “[i]nventor testimony is plainly relevant to patent litigation” and that “Flaissier is expected to possess critical testimony regarding Philip's patent practices at the time the ‘690 patent was filed, the prior art, the problem that the ‘690 patent allegedly solves, the underlying development of the technology claimed in the ‘690 patent, the alleged contribution of each inventor to the ‘690 patent, and the facts and circumstances surrounding the alleged invention.” D. 181 at 11, 18. WAC does not, however, identify any claims or defenses it asserts to which Flaissier's testimony on these issues would be relevant. Inventors typically do not testify to compare the prior art to the patent at issue, Two Moms & a Toy, LLC v. Int'l Playthings, LLC, No. 10-CV-02271-PAB-BNB, 2012 WL 5187757, at *1 (D. Colo. Oct. 19, 2012), which is the principle basis for WAC's invalidity contentions that WAC has disclosed thus far. D. 57-1. WAC makes no allegations of inequitable conduct during patent prosecution for which Flaissier's testimony would be required. See Eurand, Inc. v. Mylan Pharm., Inc., 266 F.R.D. 79, 84 (D. Del. 2010) (stating that it would be “improper to use discovery in search of a factual predicate” for inequitable conduct that had not yet been pled).

         Weighing against the uncertain relevance of the discovery to WAC is WAC's concession that it could attempt to depose Flaissier through the procedures available in the Hague Convention, D. 181 at 8, and Philips' contention that it does not control Flaissier, who is no longer an employee of Philips, D. 187 at 14. WAC contends that Philips “engineered” the unavailability of Flaissier by not informing WAC until two days prior to Flaissier's departure from its employ that Flaissier was leaving. D. 181 at 6. Philips did subsequently contacted Flaissier and requested that he appear for a deposition, offering to pay him as a consultant to do so, but Flaissier declined. D. 181 at 10; D. 187 at 13. WAC points out that Flaissier, in his contract assigning his patent rights to Philips, agreed to “testify in any legal proceeding . . . and generally do everything possible to aid [Philips] . . . to obtain and enforce proper protection for said invention, ” so contends that Flaissier is contractually obligated to appear for a deposition. D. 185-12 at 3; D. 181 at 11. Even crediting WAC's argument that Flaissier is contractually obligated to appear, the delay and expense associated with Philips potentially needing to take legal action against Flaissier to compel his appearance are not justified by the uncertain relevance of Flaissier's testimony. For all of these reasons, the Court DENIES WAC's motion to compel Flaissier's appearance (and the alternative relief of any sanctions against Philips).

         IV. Motion for Summary Judgment

         Philips move for summary judgment seeking a ruling of “no invalidity under 35 U.S.C. §§ 102 and 103 based on patents and printed publications for” the ‘774 patent, the ‘890 patent, the ‘690 patent, the ‘339 patent and the ‘138 patent. D. 182 at 1.

         A. Standard of Review

         “A motion for summary judgment is properly granted if there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law.” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000). The Court views “the evidence in a light most favorable to the non-movant, and draw[s] all reasonable inferences in its favor.” Id. “Essentially, Rule 56[ ] mandates the entry of summary judgment ‘against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.'” Coll v. PB Diagnostic Sys., 50 F.3d 1115, 1121 (1st Cir. 1995) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)).

         B. Factu ...


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