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In patent infringement litigation, the holder of the patent cannot resist discovery of issues relating to claim construction on attorney-client privilege or work-product grounds, because claim interpretations must be disclosed to prove the case in the first instance, a federal magistrate judge has ruled. “Because the essence of a patent infringement suit is the comparison between the elements of two products, this element-by-element disclosure is necessary to inform [the defendant] of the exact nature of plaintiff’s claims,” U.S. Magistrate Judge Jacob P. Hart wrote in S.S. White Burs Inc. v. Neo-Flo Inc. In the suit, S.S. White Burs and Temple University claim that Neo-Flo is infringing on a patent for a dental “bur” — the part of a dental drill that has a serrated head larger than the shank. Hart rejected the plaintiffs’ argument that discovery on claim interpretation issues is inappropriate because claim construction is an issue for the court alone to decide. “Plaintiffs’ argument … obscures the fact that it is up to them, and not to the court, to develop some theory as to how they were wronged,” Hart wrote. Hart also rejected the argument that such information is protected by privilege. “Claim interpretations are not protected by the attorney-client privilege, nor are they attorney work product, since plaintiffs will have to disclose them to prove their case,” Hart wrote. The ruling is a victory for Neo-Flo’s attorneys — Daniel J. Layden and Ronald P. Schiller of Piper Rudnick’s Philadelphia office, and Robert B. Kennedy and Lea Hall Speed of Baker, Donelson, Bearman & Caldwell in Memphis, Tenn. In interrogatories, the defense lawyers had asked for “all claim construction and infringement analyses (inclusive of claim charts) ever prepared in relation to plaintiffs’ allegation that defendant has infringed [the patent].” The team of plaintiffs’ lawyers — Bart T. Murphy, Gary R. Gillen and Thomas J. Ring of Wildman, Harrold, Allen & Dixon in Chicago, along with Brian J. Urban and Camille M. Miller of Cozen O’Connor in Philadelphia — objected, calling the request “vague, ambiguous and overly broad and unduly burdensome.” The objection also said such materials were “irrelevant” and “immaterial” since they would not “lead to the discovery of admissible evidence.” In their brief, plaintiffs’ lawyers argued that they should not have to reveal their claim construction until discovery has ended and they submit a brief for a Markman hearing. The U.S. Supreme Court, in its 1996 decision in Markman v. Westview Instruments Inc., held that issues of claim construction are for the court to decide prior to trial. The effect of the Markman decision was to add a pretrial phase to the litigation in which the lawyers battle over the meanings of key terms and phrases found in the patent claim. Hart found that defendants are entitled to discovery to prepare for the Markman hearing. “ Markman hearings are scheduled at the end of discovery so that the parties have enough time to exchange the information which will make the hearing meaningful,” Hart wrote. “There is no reason to postpone discovery as to the nature of the action. If plaintiffs subsequently change or further develop their claims, they are entitled to update their interrogatory responses,” Hart wrote. Nonetheless, Hart found that one of Neo-Flo’s interrogatories was worded in a way that the response would likely include privileged matter. In the interrogatory, defense lawyers asked: “If plaintiffs have construed any of the patent claims … in determining that defendant has infringed [the patent], please state with specificity the meaning given each patent claim construed, identify each person who construed each patent claim, and identify everyone and everything relied upon in construing each patent claim.” Hart found that the use of the phrase “everyone and everything relied upon” could include privileged documents. He ordered that those documents “should be listed in a privilege log and not disclosed.” But Hart also ordered that the plaintiffs “should identify non-privileged material upon which they have relied, such as other patents, Patent Office decisions, technical literature, or the like.” Finally, Hart found that the plaintiffs were correct in pointing out that Neo-Flo “has no basis for demanding that they produce information in a specific form, such as a chart.” Nonetheless, Hart ordered the plaintiffs to prepare a claim chart “because this is a clear and frequently-used means for comparing patent claims.”

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