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Duhn Oil Tool, Inc. v. Cooper Cameron Corp.

October 15, 2009

DUHN OIL TOOL, INC., PLAINTIFF,
v.
COOPER CAMERON CORPORATION, DEFENDANT.



The opinion of the court was delivered by: Gary S. Austin United States Magistrate Judge

ORDER REGARDING PLAINTIFF DUHN OIL TOOL, INC.'S MOTION TO COMPEL DEFENDANT COOPER CAMERON CORPORATION'S PRODUCTION OF WITNESSES FOR DEPOSITIONS, AND DOCUMENTS (Doc. 308) AND RELATED CROSS-CLAIMS.

I. INTRODUCTION

Pending before the Court is Plaintiff Duhn Oil Tool, Inc.'s ("Duhn") Motion to Compel Defendant Cooper Cameron Corporation's ("Cameron") Production of Witnesses for Depositions and Documents, filed on June 30, 2009. Generally speaking, Duhn seeks discovery pertinent to its claim that Cameron willfully infringed upon its patent. The parties filed a Joint Statement regarding the motion on August 4, 2009. (See Doc. 324.)

II. RELEVANT PROCEDURAL BACKGROUND

Duhn filed its complaint on November 9, 2005, alleging infringement of its United States Patent number 6,920,925 ("'925 patent"). (Doc. 1.) On March 15, 2006, Cameron filed its answer and counterclaim. (Doc. 15.) On April 12, 2006, Duhn filed its answer to the counterclaim. (Doc. 18.)

On July 20, 2007, Duhn moved to amend its complaint to assert a claim that Cameron's acts of patent infringement were willful. (Doc. 101.) The motion was withdrawn on August 22, 2007. (Doc. 108.) On November 10, 2008, Duhn filed a Motion for Preliminary Injunction and Request for Leave to Amend Complaint. (Doc. 240.) Cameron opposed on November 24, 2008. (Doc. 247.) On January 13, 2009, Duhn moved to amend its complaint. (Doc. 268.) On January 21, 2009, Cameron moved to amend its answer and counterclaim. (Doc. 274.) On February 6 and 9, 2009, the parties filed oppositions to the motions. (Docs. 277-278.) Replies were filed on February 13 and 17, 2009. (Docs. 281-282.)

On March 4, 2009, District Judge Oliver W. Wanger granted Duhn's motion to amend the complaint. That same date, the Court denied in part and granted in part Cameron's motion. (Doc. 286 [counterclaims of unenforceability regarding U.S. Patent Nos. 7,322,407 & 7,416,020 will not be tried with determination of validity of '925 patent].)

On March 12, 2009, Duhn filed its First Amended Complaint. (Doc. 291.) On March 24, 2009, Cameron filed its First Amended Counterclaim. (Doc. 292.) Duhn filed its answer to the counterclaim on March 26, 2009. (Doc. 293.)

On March 31, 2009, Cameron filed a Motion to Strike the First Amended Complaint. (Doc. 294.) Duhn filed its opposition on May 22, 2009. (Doc. 300.) Cameron replied on June 1, 2009. (Doc. 302.) On June 9, 2009, Cameron's motion to strike was denied. (Doc. 304.) On June 23, 2009, Cameron filed its answer to the amended complaint. (Doc. 306.)

The instant motion followed. (Doc. 308.) A joint statement concerning the discovery dispute was filed August 4, 2009. (Doc. 324.) The matter was taken under submission, without oral argument, by this Court on August 25, 2009, pursuant to Local Rule 78-230(h). (Doc. 341.)

III. JOINT INTRODUCTORY STATEMENTS*fn1

Generally speaking, at issue here is whether Cameron can assert the attorney-client privilege and work product doctrine in response to particular discovery responses propounded by Duhn.

Duhn's Statement

Duhn argues that when Cameron asserted the defense of reliance upon an opinion of counsel in response to its claim of willful infringement, Cameron waived its right to claim attorney client and work product privileges for all documents and testimony related to the opinion from advice counsel ("Opinion"). Duhn asserts the waiver is a broad subject matter waiver and relies upon In re Echostar Commc'n Corp., 448 F.3d 1294, 1301 (Fed. Cir. 2006). (Doc. 324 at 1.)

More specifically, Duhn complains that Cameron has improperly refused to produce in house counsel, Manish Vyas, and its Federal Rules of Civil Procedure rule 30(b)(6) witness for purposes of deposition. Duhn also alleges Cameron has refused to produce documents and discovery responses related to the advice of counsel defense, other than that prepared by Fletcher Yoder. (Doc. 324 at 1.)

Duhn believes that further justification in support of its motion is evidenced by Cameron's actions, to wit: rather than relying on the Opinion, Cameron designed and manufactured two alternative frac mandrels during the pendency of this litigation. Duhn claims it "know[s] that Cameron considered at least two opinions (and likely three) in changing its business strategy and coming out with these attempted designarounds." (Doc. 324 at 1-2.) According to Duhn, Mr. Vyas and trial counsel Rogers were conducting a separate infringement analysis and provided Cameron with advice regarding "designs that attempted to workaround Duhn's patent." (Doc. 324 at 2.) Duhn argues that the relevant law mandates it be permitted to review "the full extent of communications and the information Mr. Vyas and Cameron considered, as well as any other opinions regarding the subject of infringement." (Doc. 324 at 2.)

Lastly, Duhn asserts that Cameron is employing delay tactics to prejudice Duhn's ability to participate in discovery and effectively prepare for trial. (Doc. 324 at 3.)

Cameron's Statement

Cameron acknowledged that in response to Duhn's claim of willful infringement, it asserted certain defenses, including reliance on a noninfringement opinion issued by opinion counsel Tait Swanson and Lee Eubanks of Fletcher Yoder. (Doc. 324 at 3.)

Cameron asserts that it has produced, in response to Duhn's written discovery requests, documents including the Opinion, all communcations and documents exchanged between Cameron and its opinion counsel regarding the subject matter of the noninfringement Opinion, and all documents and communications between Cameron and its opinion counsel regarding the subject matter of the Opinion, "even if those documents and communications themselves were not communicated from opinion counsel to Cameron . . .." (Doc. 324 at 3-4.)

Cameron claims it complied with the holdings set forth in In re EchoStar Commc'ns Corp., 448 F.3d 1294 and In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007). More particularly, the "[d]ocuments that embody the advice-of-counsel (the traditional opinion letter itself)" and "[u]ncommunicated work product that reflects a communication between opinion counsel and the client regarding the subject matter of the Opinion." (Doc. 324 at 4.) Cameron did not produce communications with trial counsel, based upon the holding in Seagate, wherein the court held that "'asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege for communications with trial counsel.'" (Doc. 324 at 4-5.)

Cameron points out that it and opinion counsel compiled and produced a detailed privilege log pertaining to the documents and categories of documents withheld based upon assertions of the attorney-client and work product privilege. It states it took special care to redact privileged information from that which must be produced and noted the redactions in the privilege log. (Doc. 324 at 5 & Ex. 10.) Cameron also took care to redact information "unrelated to infringement issues, which is the subject matter of the noninfringement Opinion" in reliance upon In re EchoStar, 448 F.3d at 1297. (Ibid.)

Cameron states that in response to Duhn's deposition requests, it "presented its opinion counsel for deposition on June 23, 2009" and filed a motion to quash the deposition of Manish Vyas seeking this Court's guidance.*fn2 (Doc. 324 at 6.) Cameron points out Duhn's "refusal to recognize [its] in-house trial counsel as 'real trial counsel.'" (Doc. 324 at 6.)

IV. THE DISCOVERY AT ISSUE

The purpose of discovery is to make trial "less a game of blind man's bluff and more a fair contest with the basic issues and facts disclosed to the fullest practicable extent possible." United States v. Procter & Gamble, 356 U.S. 677, 683 (1958). Discovery will also serve to narrow and clarify the issues in dispute. Hickman v. Taylor, 329 U.S. 495, 501 (1947).

Federal Rules of Civil Procedure rule 26(b) establishes the scope of discovery and states in pertinent part:

Parties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party, including the existence, description, nature, custody, condition, and location of any books, documents, or other tangible things and the identity and location of persons having knowledge of any discoverable matter. For good cause, the court may order discovery of any matter relevant to the subject matter involved in the action. Relevant information need not be admissible at trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence.

"The party who resists discovery has the burden to show that discovery should not be allowed, and has the burden of clarifying, explaining, and supporting its objections." Oakes v. Halvorsen Marine Ltd., 179 F.R.D 281, 283 (C.D. Cal. 1998); Nestle Foods Corp. v. Aetna Casualty & Surety Co., 135 F.R.D. 101, 104 (D. N.J. 1990).

Here, Plaintiff Duhn asserts, (1) it is entitled to see all documents regarding non-infringement opinions and documents relating to Defendant's reliance upon the opinions; (2) it is entitled to responses from Defendant regarding verbal and written assessments of the risk of infringement; (3) that Defendant lacks a valid reason for failing to produce witnesses pursuant to Federal Rules of Civil Procedure rule 30(b)(6); (4) that Duhn is entitled to take the deposition of Manish Vyas; and (5) that good cause exists to compel production of the witness for deposition and for the production of documents and information. (Doc. 308.)

A. The Eighth Set of Interrogatories - Numbers 35 & 37-40

On or about May 14, 2009, Duhn propounded its Eighth Set of Interrogatories to Cameron. (Doc. 324, Ex. 5.)

Cameron does not specifically respond to Duhn's interrogatory requests in its Joint Statement argument. Rather, Cameron stated it has "produced all documents in the Categories 1 and 3 which the Federal Circuit held in Echostar are subject to the waiver triggered by the advice-of-counsel defense" and that Duhn has not presented this Court with "any proof of the 'unique circumstances to extend waiver to trial counsel . . . set forth in Seagate." (Doc. 324 at 29.)

Plaintiff's interrogatories and Defendant's specific responses thereto are as follows:

INTERROGATORY NO. 35:

Identify each and every counsel that provided an opinion regarding whether or not YOUR ACCUSED DEVICES infringe the '925 patent.

RESPONSE TO INTERROGATORY NO. 35:

Defendant Cameron incorporates by reference General Objections 1 through 3 as if fully stated here. Subject to and without waiving its objections, defendant responds as follows:

Lee Eubanks

Tait R. Swanson Fletcher Yoder 7915 FM 1960 West, Suite 330 Houston, TX 77070

INTERROGATORY NO. 37:

Set forth, with particularity, the opinion(s) prepared by any CAMERON in house or outside counsel regarding whether or not YOUR ACCUSED DEVICES infringe the '925 patent.

RESPONSE TO INTERROGATORY NO. 37:

Defendant Cameron incorporate by reference General Objections 1 through 3 as if fully stated herein. Subject to and without waiving its objections, Defendant responds as follows:

Pursuant to Rule 33(d) of the Federal Rules of Civil Procedure, Defendant Cameron refers to records produced in this action from which information responsive to this Interrogatory may be derived or ascertained. The legal Opinion provided by Lee Eubanks and Tait Swanson of the Fletcher Yoder law firm, and the related billing records, were produced as document numbers CAM44245-44972.

INTERROGATORY NO. 38:

Identify each and every document and discussion that was used by counsel to prepare the opinions set forth in YOUR response to interrogatory number 37.

RESPONSE TO INTERROGATORY NO. 38:

Defendant Cameron incorporate by reference General Objections 1 through 3 as if fully stated herein. Subject to and without waiving its objections, Defendant responds as follows:

Pursuant to Rule 33(d) of the Federal Rules of Civil Procedure, Defendant Cameron refers to records produced in this action from which information responsive to this Interrogatory may be derived or ascertained. The legal Opinion provided by Lee Eubanks and Tait Swanson of the Fletcher Yoder law firm, and the related billing records, were produced as document numbers CAM44245-44972.

INTERROGATORY NO. 39:

Identify each person to whom any of the opinion(s) set forth in YOUR response to interrogatory number 37 were communicated to, whether communicated in document, electronic, or oral form.

RESPONSE TO INTERROGATORY NO. 39:

Manish Vyas - written opinion communicated in document and oral form.

Thomas Taylor - opinion communicated in oral form.

INTERROGATORY NO. 40:

Identify the specific counsel(s) [sic] and opinion(s) that CAMERON relied upon in deciding to introduce its NEW STYLE ...


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