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Georgia IP Litigation: May 2013

BLOGS: Georgia IP Litigation

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Friday, May 24, 2013, 2:10 PM

Court Addresses What a Lay Corporate Witness Designee Do to Prepare for a 30(b)(6) Deposition in a Patent and Admonishes Parties to Cooperate in Discovery or Sanctions Will Be Assessed

Plaintiff Bayer Healthcare Pharmaceuticals, Inc. (“Bayer”) and Dow Pharmaceutical Sciences, Inc. (“Dow”) (collectively “plaintiffs”) sought specific relief after an emergency status conference had been held at their request.  The relief sought included (1) an extension of the statutory 30-month stay based on defendants’ discovery cooperation failure; (2) to extend discovery; (3) to add parties based on new information; (4) to receive 5-days notice of any ANDA transfer or other change in ANDA circumstances; and (5) to shift discovery costs.  Defendants River’s Edge Pharmaceuticals, LLC (“River’s”) and Teresina Holdings, LLC (“Teresina”) (collectively defendants) filed two motions to compel and for sanctions against plaintiffs.

In response to plaintiffs’ request, the Court (1) extended the statutory stay for 7 months; (2) extended discovery for 6 months; (3) granted plaintiffs permission to amend their complaint; (4) required plaintiffs be given 5-days notice of any transfer of ANDA or change in ANDA circumstances; and (5) found the issue of shifting discovery costs was not property before the Court.  Nevertheless, the Court commented that circumstances outlined by plaintiffs in their motion for a status conference troubled the Court and admonished the parties to be candid with each other and the Court and to work together to resolve discovery disputes.  The Court added a charge to plaintiffs to be more forthcoming and expeditious in handling requests for discovery from defendants.

Having disposed of plaintiffs’ motion, the Court next turned to defendants’ motion to compel Dow to produce a knowledgeable and prepared 30(b)(6)[1] witness within 30 days and pay defendants’ attorney fees in connection with the 30(b)(6) deposition that occurred.  The Court found that Dow produced a prepared designee, that no further deposition was required, and that no sanctions were warranted.  The witness had reviewed the inventor’s notebooks in question for 10 to 15 hours in preparation for the deposition and referred to those notebooks as containing the answers to deposition questions.  The Court found “defendants refused to allow the witness to review nay of those notebooks” during the deposition and “did not bring a single research or laboratory notebook to introduce as exhibits.”  The Court noted that a 30(b)(6) deposition was not a memory contest and that personal knowledge was not required to be a designee.

The Court also noted that some questions asked the witness were outside the scope of a 30(b)(6) deposition, involving principles of law or were improperly seeking to elicit scientific or technical testimony from a lay witness.  The Court cited Brazos River Auth. v. GE Ionics, Inc., 469 F.3d 416, 434-435 (5th Cir. 2006) (“[A] Rule 30(b)(6) deponent ‘cannot make comments that . . . require expert qualifications.”).  While the defendants may have wanted the Dow employee with the most knowledge on the topics, “it is axiomatic that ’the party seeking discovery is not entitled to insist on a specific person as the corporate representative and it likewise cannot demand the testimony of the designee . . . with the ‘most’ knowledge of a given matter.’”  The Court cited Kendall Lakes Towers Condo. Ass’n v. Pac. Ins. Co., No. 10-24310, 2011 U.S. Dist. LEXIS 138953, at *25 (S.D. Fla. Dec. 2, 2011).

The Court further found that the defendants failed to pursue an appropriate line of follow-up questions to elicit the information that complain they did not receive.

The Court then turned to another motion by defendants, referred to as its “omnibus motion for sanctions.”

The Court looked unfavorably on this motion.  The Court noted that neither side had “clean hands” in the discovery process in the case and cautioned that further disputes would likely result in sanctions.  The Court did not find a violation of the meet-and-confer requirements and that the requests for discovery and an immediate designation of a corporate representative were mooted by the extension of discovery granted and defendants’ admission that they were now receiving some of the documents.  The Court further found Dow to be a nominal plaintiff only in the case to provide Bayer with standing and, therefore, rejected defendants’ request that Dow be required to file a separate claim construction brief.

No sanctions were awarded to either side.

The case is Bayer Healthcare Pharmaceuticals, Inc. et al. v. River’s Edge Pharmaceuticals, LLC, et al., Civil Action File No. 1:11-CV-01634-RLV  in the United States District Court for the Northern District of Georgia, Atlanta Division, and the Order was entered on April 26, 2013, by District Court Judge Robert L. Vining, Jr.

[1] “[Federal] Rule [of Civil Procedure] 30(b)(6) governs deposition notices directed to organizations. The deposition notice ‘must describe with reasonable particularity the matters for examination.’ Fed.R.Civ.P. 30(b)(6).  In response, the organization must designate one or more persons to testify on its behalf as to those matters.  Id.  ‘The persons designated must testify about information known or reasonably available to the organization.’  Id.  Continental Cas. Co. v. First Fin. Employee Leasing, Inc., 716 F.Supp.2d 1176, 1189 (M.D. Fla. 2010).

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Wednesday, May 22, 2013, 12:44 PM

Copyright Infringement Action Against Former Employees Fails to Present Issues of Fact for Jury

This action by a business against former employees contained a copyright claim and a plethora of state law claims relating to a software program for document imaging and integration with other software.  The copyright assertions addressed the software developed by the former employees, one of whom had been the lead software engineer for plaintiff.

The Court cited MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d 1548 (11th Cir. 1996), for the underlying elements of copyright infringement at issue.  Specifically, he noted that protected expressions must have been copied by the defendant and the copied elements must meet the constitutional requirement of originality and be of importance to the copied work.  Although copying is required, it can be inferred by proof of access to the copyrighted work together and similarities in the allegedly infringing work, sufficient to make the two works substantially similar to a lay person.  The defendant is thereafter entitled to rebut plaintiff’s conclusion with evidence of independent creation.

Copying fails into two distinctive categories – literal and nonliteral.  Source code and object code constitute the literal elements of a computer program.  Non-literal elements are what is generated by operation of the code on a computer, such as screen displays, menus, and command structure.  The standard is higher for infringement of non-literal elements, which must be virtually identical to infringe.

The Court noted that plaintiff did not file a motion for a preliminary injunction, did not seek discovery of defendants’ source code and did not hire an expert to examine the code or use a working version of defendants’ program.  The failure to compare source code was fatal to a finding of literal infringement.  The failure to examine a functioning version of defendants’ program precludes a finding of substantial similarity.

The Court noted that plaintiff had submitted affidavits concluding infringement had occurred, but without a stated or inferable basis for the conclusion.  Plaintiff dismissed the examination of code as meaningless because defendants could destroy evidence of copying, but the Court noted that plaintiff had not acted expeditiously to prevent any such destruction from happening – waiting over a year to file and seeking no preliminary relief.

In granting defendants’ summary judgment motion on the copyright claim, the Court further noted testimony from plainiff’s expert that undermined plaintiff’s substantial similarity assertion – plaintiff’s expert “concluded that the Defendants’ product was inferior” to plaintiff’s product – they tried to achieve the functionality but failed.  Having disposed of the federal copyright issue, the Court remanded the pendant claims to the state courts for resolution.

The case is Advanced Technology Services, Inc. v. KM Docs, LLC, et al., Civil Action File No. 1:11-CV-3121-TWT  in the United States District Court for the Northern District of Georgia, Atlanta Division, and the Order was entered on April 9, 2013, by District Court Judge Thomas W. Thrash.

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Disclosure Requirements to Conduct a “Meaningful Deposition” of an Expert under Northern District of Georgia Local Patent Rule 6.3(b)(4)

Motions to strike testimony of Defendant’s Expert and Plaintiff’s rebuttal expert were denied by Judge Jones in this patent dispute over a interface technologies.  Two paragraphs comprising 373 words described the intention of Defendants’ expert to provide testimony “about the history, evolution, development, and technical operation of … interface technologies.”   Plaintiff moved to strike this testimony as failing to provide a summary of each opinion the expert proposes to offer at the Claim Construction Hearing.  The Court noted that Plaintiff was correct that Defendant’s expert had not disclosed any opinions that he intended to offer.

Plaintiff in turn offered a rebuttal expert merely stating by way of description that the expert would “provide rebuttal expert testimony” to the testimony allowed from Defendants’ expert (should any be allowed).

Both parties relied upon LPR 6.3(b)(4) which specifically requires “a summary of each opinion to be offered in sufficient detail to permit a meaningful deposition of that expert.”  The Court took a practical approach to interpreting the rule and conforming the ruling to the holding in Friskit, Inc. v. RealNetworks, Inc., No. C 03-5085 FMS, 2005 WL 6249309 (N.D. Cal. Mar. 22, 2005), which applied an identical local rule.  Friskit precluded testiomy because the offering party “failed to provide the level of disclosure required under its local rule by merely ‘reserving the right to sue an expert, without addressing the specifics of his/her testimony.”  2005 WL 6249309, at *1.

In reliance on Friskit, Plantiff contended Defendants  merely recited topics the expert would cover, not opinions that he holds  Despite the failure to summarize the opinion the expert intended to offer, the Court pointed out that the type of information the expert was sharing – “developmental background and technical operation of the technology at issue – is not readily susceptible to a brief summary.”  In short, sufficient information was disclosed to allow for a meaningful deposition – as required by the local rule.

The Court further noted that the disclosures of a rebuttal expert are necessarily confined to rebutting the testimony of the affirmative expert.  Therefore, the simple disclosure that the Plaintiff’s expert would be testifying “as a rebuttal expert in the field of the claimed invention at the relevant time” was sufficient for a meaningful deposition to be taken.

Both motions were denied.

The Court’s approach was practical and tailored to fit the requirements of Claim Construction Hearings, where expert testimony is not being directly offered to establish infringement, validity, or apply claims to an accused product.  By framing its expert’s testimony as being historical, factual, and more in the nature of a primer on the technology, the Defendants convinced the Court that the Plaintiff would be able to meaningfully explore any areas of concern in the deposition.  After allowing the Defendants’ expert to testify without specifying particular opinions to offer, the Court ruled that it would suffice for Plaintiff’s expert to merely state that he/she would rebut the opinions Defendants’ expert should offer.

While this Order should serve as a valuable model and precedent for experts providing technology primers and field of invention histories in the Claim Construction Hearings, citing it to avoid full disclosures of infringement, invalidity, and inequitable conduct opinions is unlikely to meet with similar results.

The case is Synchrome Technology, Inc. v Toshiba America Information Systems, Inc. and Asmsung Semiconductor, Inc., Civil Action File No. 1:09-CV-01736-SCJ  in the United States District Court for the Northern District of Georgia, Atlanta Division, and the Order was entered on April 25, 2013, by District Court Judge Steve C. Jones.

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Monday, May 13, 2013, 11:06 AM

Composer accuses famed Atlanta Rapper Young Jeezy of copyright infringement in misappropriating lyrics to song provided to rapper in 2009.

Brian Smith (Smith), who describes himself as a music producer and songwriter specializing in urban music, filed his complaint seeking an injunction, damages, and attorney fees against Jay W. Jenkins d/b/a Young Jeezy Music (Jenkins), Demetrius L. Stewart d/b/a Shawty Redd Songs (Stewart), UMG Recordings, Inc. (UMG), Island Def Jam Music Group (IDJ), Universal Music Group Distribution, Corp (UMGD), EMI Music Publishing (EMI), and EMI April Music, Inc. (EMIA) (collectively, Defendants).

According to the complaint, Smith wrote an original song entitled “Roll On Em” and obtained registration No. SRu872-428 after filing on May 27, 2008.  Smith’s manager, Jasmine Norwood, provided an electronic copy of the song by email to Stewart in 2009.  The work “Jizzle” was released by Defendants in July 2010 and Smtih first heard it the following month – August 2010.

Thereafter, on October 28, 2010, IDJ registered a copyright of the sound recording of Jizzle.  The complaint asserts that as a result, Smith lost substantial revenues, good will, and relationships with future clients, precluding Smith’s ability to expand his goodwill.  The nature of the goodwill that Smith alleges has been lost may be better understood by listening to Young Jeezy’s performance of the song.  Warning:  The lyrics are not intended for classroom dissection.

The lawsuit targets relief from copyright infringement pursuant to 17 U.S.C. § 101, et seq., including, injunctive relief, expenses of litigation, and a declaratory judgment on ownership of the derivative work.

The case is Brian Smith v. Jay W. Jenkins et al., No. 1:13-cv-1235-RLV, filed 4/16/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to U.S. District Judge Robert L. Vining, Jr.

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