Intellectual Property Law

Court Allows Discovery of Communications Between Trial and Opinion Counsel

By Brian Wm. Higgin

     David Donoghue at the Chicago IP Lit. Blog reports today about a discovery matter in a Northern District of Illinois patent case: Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.). According to David, Magistrate Judge Cox "granted in part a motion to compel discovery regarding defendant’s advice of counsel defense. The Court ordered defendants to product a technical witness that provided opinion counsel information because opinion counsel was unable to remember the substance of conversations between the two. The Court also ordered production of communications between opinion counsel and trial counsel related to the patent in suit. These communications were within the scope of defendant’s waiver, even though a deposition of trial counsel would not have been allowed." 

     This opinion is one of many to be published post-Seagate, and further illustrates the extent to which courts will allow discovery once the opinion of counsel defense is raised by defendants in patent litigation matters. Click here for summaries of other post-Seagate cases.

Full post as published by Maryland Intellectual Property Law Blog on February 12, 2008 (boomark / email).