United States District Court, D. Massachusetts
KONINKLIJKE PHILIPS N.V. and PHILIPS LIGHTING NORTH AMERICA CORP., Plaintiffs,
WANGS ALLIANCE CORP., d/b/a WAC LIGHTING CO., Defendant.
MEMORANDUM AND ORDER
J. Casper United States District Judge
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.
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. 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.
WAC's Motion to Compel Production of Flaissier
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).
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).
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).
Motion for Summary Judgment
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.
Standard of Review
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