United States District Court, D. New Jersey
OPINION & ORDER
Stanley R. Chesler, U.S.D.J.
matter comes before the Court on the appeal of Magistrate
Judge Waldor's opinion and order, filed September 19,
2017, by Plaintiff Mondis Technology Ltd
(“Mondis”). For the reasons stated below, the
Magistrate Judge's order will be affirmed.
opinion and order appealed from (the “MJ
Decision”), in short, the Magistrate Judge denied the
motion by Defendants LG Electronics, Inc. and LG Electronics
U.S.A., Inc. (collectively, “LG”) for a
protective order and to quash a subpoena served on trial
counsel Jeffery Plies (“Plies”). Mondis has
appealed this decision.
first contends that the Magistrate Judge erred in determining
“that Mr. Plies' mental impressions concerning
preparation of the Spiro declarations are discoverable
because LG has a need for them.” (Mondis' Br. 16.)
First, this is a mischaracterization of the Magistrate
Judge's nuanced decision. Furthermore, crucially, Mondis
argues as if the work-product doctrine categorically blocks
discovery of an attorney's mental impressions, but this
is incorrect. As this Court stated years ago in In re
Gabapentin Patent Litig., 214 F.R.D. 178, 184 (D.N.J.
2003) - a decision that Mondis quotes repeatedly -,
“courts have been refining the contours of this
privilege as it applies to patent prosecutions and litigation
for many years, and there remains no bright line rule.”
Mondis quotes the Third Circuit's decision in In re
Cendant Corp. Sec. Litig., 343 F.3d 658, 663 (3d Cir.
2003), holding that mental impressions are “generally
afforded near absolute protection from discovery, ” but
this works against Mondis, for two reasons. First, the Third
Circuit wrote, “near absolute
protection” rather than “absolute protection,
” which leaves room for the exception. Second, Mondis
omits the sentence which follows, that such “work
product receives greater protection than ordinary work
product and is discoverable only upon a showing of rare and
exceptional circumstances.” The Magistrate Judge's
decision correctly recognized these legal principles and did
not err. On appeal, Mondis has not even attempted to
demonstrate that this case does not fit within the
exceptional circumstance exception.
next argues: “When patent prosecution activities
(including reexamination) take place concurrently with, or
are in anticipation of, litigation, these prosecution
activities are protected by the work-product doctrine.”
(Mondis' Br. 17.) Again, without commenting on the
accuracy of this assertion, as just explained, the protection
of the work-product doctrine is not absolute, but
near absolute. Mr. Plies' role as litigation
counsel does not cloak him with absolute protection for his
role during patent reexamination.
Mondis ignores, but the Magistrate Judge recognized, is that
attorneys engaged in patent prosecution are routinely subject
to discovery when the prosecution process is placed in issue.
See, e.g., V. Mane Fils, S.A. v.
Int'l Flavors & Fragrances, Inc., 2008 U.S.
Dist. LEXIS 63619, at *9 (D.N.J. 2008); Sandvik
Intellectual Prop. AB v. Kennametal, Inc., 2012 U.S.
Dist. LEXIS 84028, at *6 (W.D. Pa. 2012); aaiPharma, Inc.
v. Kremers Urban Dev. Co., 361 F.Supp.2d 770, 776 (N.D.
Ill. 2005). That LG voluntarily chose to have its trial
counsel engage in patent prosecution activity while this
lawsuit was pending does not and should not confer a blanket
immunity upon that attorney. If that were the case, parties
would be rewarded for making the strategic decision to use a
trial attorney to engage in patent prosecution activity which
would otherwise be routinely discoverable.
next argues that, while LG had outlined eight categories of
information it sought to discover from Mr. Plies, the
Magistrate Judge's decision did not present an
item-by-item discussion of each category. Mondis cites no
authority for the proposition that this constitutes
reversible error. Mondis then argues that, furthermore, LG
bore the burden of applying the Shelton factors to
each and every category, separately. Again, Mondis cites no
authority for the proposition that Shelton - or some
other controlling authority - forbids courts from being
efficient by aggregating arguments and categories of
information. This appears to be a meritless technicality that
Mondis has made up.
has missed the point that the Magistrate Judge explained
clearly: she refused to block the deposition of Mr. Plies in
its entirety, but recognized that some of his testimony might
be privileged. As her decision stated:
Mondis claims that the deposition of Mr. Plies could involve
“substantial non-discoverable and privileged
information.” (Opp. Brief, at 11). While this may be
true, it is unreasonable to conclude that all of Mr.
Plies' testimony would be privileged. Mondis'
argument that Mr. Plies' mental impressions are protected
is flawed and as indicated by the deposition of Mr. Gallo,
Mr. Plies is the only individual who can attest to certain
information regarding the inequitable conduct claim. If
certain questions are asked that are privileged, Mr. Plies
will be free to object.
(MJ Decision at 9.) Thus, the Magistrate Judge decided not to
pick through every single item on LG's list before the
deposition occurred, because objections to individual
questions may be made and decided later. This is an entirely
sensible approach, as it strikes the right balance between
one party's right to discover information with the
opponent's right to shield it. Mondis argues as if its
right to shield Mr. Plies from discovery is absolute and
total, and Mondis is wrong on this point. As the Magistrate
Judge correctly decided, it makes more sense to first allow a
deposition to occur, and reserve for later the application of
the Shelton factors to specific, individual
questions. Mondis' argument that the Shelton
analysis should not, at this stage, have been done in
aggregate is neither sensible nor based in law.
Magistrate Judge's non-dispositive order may be set aside
if it is clearly erroneous or contrary to law. 28 U.S.C.
§ 636(b)(1)(A). Mondis has not persuaded this Court that
the order at issue is clearly erroneous or contrary to law.
To the contrary, this Court has reviewed the Magistrate
Judge's decision, and finds that it balanced the
Shelton factors correctly. Magistrate Judge
Waldor's order, filed September 19, 2017, will be
these reasons, IT IS on this 15th
day of November, 2017
that Plaintiff's appeal (Docket Entry No. 232) of
Magistrate Judge Waldor's opinion and order, filed
September 19, 2017 is DENIED; and it is
that the Magistrate Judge's opinion and order, filed
September 19, 2017 ...