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V. Mane Fils, S.A. v. International Flavors and Fragrances

August 19, 2008


The opinion of the court was delivered by: Hughes, U.S.M.J.



This matter comes before the Court on Motion by Plaintiff V. Mane Fils, S.A. ("Mane") to Quash a Subpoena (the "Subpoena") compelling non-party Kevin J. Dunleavy ("Dunleavy") (1) to appear for a deposition and (2) produce relevant documents [48], returnable July 21, 2008. Defendants International Flavors and Fragrances, Inc. ("IFF"), opposed the motion on July 7, 2008 and Mane filed its reply brief on July 23, 2008. The Court heard oral argument on August 19, 2008. For the reasons stated herein, Plaintiff's Motion is denied.


Mane alleges that IFF infringed its U.S. Patent Nos. 5,725,865 (the "'865 Patent") and 5,843,466 (the "'466 Patent") relating to monomenthyl succinante ("MMS"). (Def.'s Opp'n Br. at 2.) This motion specifically addresses whether Dunleavy, who represented Mane when it filed its applications for the '865 patent in 1995, must submit to a deposition and produce documents.

On August 29, 1995, Dunleavy, then representing Mane, filed an application for the '865 Patent. Id. On June 3, 1996, the United States Patent and Trademark Office, ("PTO") rejected or objected to all of the claims contained in the patent application. Id. Subsequently, on May 8, 1997, the patent examiner conducted an interview with Dunleavy. Id. at 4. On June 19, 1997, the PTO issued an advisory opinion allowing some of the claims in the patent that had formerly been objected to or rejected. Id. at 4. On August 27, 1997, following more conversations between Dunleavy and the patent examiner, the PTO approved some of the claims in the patent. Id. at 5. The '865 Patent was finally issued on March 10, 1998. Id.

On April 9, 1996, Dunleavy, as a representative of Mane, filed an application for the '466 Patent, as a continuation of the '865 Patent. Id. at 6. The PTO initially rejected the majority of claims within the patent. Dunleavy and the patent examiner had two further conversations, on May 4, 1998, and June 4, 1998. Id. Subsequently, the PTO allowed the patent, and the '466 Patent was issued on December 1, 1996. Id.

Defendant served a subpoena to compel Dunleavy's presence at a deposition to be held on June 30, 2008. In addition, Dunleavy was to produce: (1) all documents related to the '865 Patent and the '466 Patent; (2) all documents related to or referring to MMS; and (3) all communications regarding IFF and/or this litigation. (See Pl.'s Br. Ex. C). There is no dispute that the subpoena was properly served. On June 27, 2008, Mane filed the present Motion to Quash the Subpoena [dkt. entry no. 48]. The motion was opposed on July 7, 2008. [51]. Subsequently, Mane filed a reply brief on July 23, 2008 [55].

A Plaintiff's Arguments in Support of the Motion to Quash Plaintiff sets forth three arguments why the Motion to Quash should be granted. Specifically, Plaintiff argues that (1) IFF should not be allowed to raise inequitable conduct as a defense; (2) the information Dunleavy would provide is unreasonably cumulative or duplicative pursuant to Federal Rule of Civil Procedure 26(b)(2)(C)(i); and (3) any information Dunleavy would provide is protected by the attorney-client privilege. (Pl.'s. Br. at 1.)

Plaintiff argues that the Federal Circuit has not looked favorably upon inequitable conduct as a defense. The Federal Circuit has stated that

[T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague. Reputable lawyers seem to feel compelled to make the charge against other reputable lawyers on the slenderest grounds . . . They destroy the respect for one another's integrity . . . A patent litigant should be made to feel, therefore, that an unsupported charge of "inequitable conduct in the Patent Office" is a negative contribution to the rightful administration of justice.

See Pl's. Br. at 3 (citing Burlington Industries, Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988)). Upon this backdrop, Mane also contends that IFF's pleading of inequitable conduct as a defense was not made in good faith. (Pl.'s Reply at 2.) Mane further contends that the defense itself was not properly pled. Id. at 3. Mane argues that in order to plead inequitable conduct, IFF must show by clear and convincing evidence that "(1) [Dunleavy] failed to disclose material information in the patent prosecution (2) with the intent to deceive the PTO." (Pl.'s Reply Br. at 3) (emphasis in original). Mane claims that IFF has not alleged both of these elements. In the alternative, Mane claims that even if they had alleged both elements, the inequitable conduct affirmative defense was not pled with particularity as required by Federal Rule of Civil Procedure 9. Id. at 3. Plaintiffs further argue that even if inequitable conduct is properly pled, it is not necessary to depose Dunleavy to obtain information relevant to that defense. (See Pl.'s Br. at 5; see also Allergen Inc. v. Pharmacia Corp., 2002 U.S. Dist. LEXIS 19811 (D. Del. 2003).)

Plaintiff argues that any non-privileged information that Dunleavy could provide could be obtained by other means, and therefore would be unreasonably duplicative. (Pl.'s Br. at 5.) Mane says that any non-privileged information relevant to the case that Dunleavy would have could be found in the prosecution history of the patents, which is obtainable from the Patent Office. Id.

Lastly, Plaintiff argues that pursuant to Federal Rule of Civil Procedure 45(c)(3)(A)(iii), the Court must quash or modify a subpoena that "requires disclosure of privileged or other protected matter, if no exception or waiver applies." (Pl.'s. Br at 5; see also Fed. R. Civ. P. 45(c)(3)(A)(iii)). Specifically, Plaintiff argues that the document request made in the subpoena is overbroad, and Dunleavy could not properly respond to the requests without submitting privileged information. (Pl.'s Br. at 6.) Any knowledge relevant to this litigation that Dunleavy ...

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