EDVA Judge Denies Production of Non-Testifying Experts' Test Results in Patent Case

Posted on July 22, 2011 by Dabney Carr

On July 18, EDVA Judge Gerald Bruce Lee rejected MeadWestvaco’s effort to obtain the results of expert testing done by Rexam PLC shortly after it received MeadWestvaco's cease and desist letter regarding its patent for a "Fragrance Product, Dispenser and Dispenser Assembly. MeadWestvaco Corp. v. Rexam PLC, Case No. 1:10CV511, 2011 U.S. Dist. LEXIS 78028 (E.D.Va. July 18, 2011) (found here).

After receiving MeadWestvaco's cease and desist letter, Rexam hired counsel who retained two experts to test Rexam's product but Rexam decided not to identify either expert to testify at trial. MeadWestvaco moved to compel production of the test results.  Judge Lee, as Magistrate Judge Jones had done before him, dismissed all of MeadWestvaco's arguments. 

Judge Lee found:

  • The materials at issue were clearly work product, as they were obtained after MeadWestvaco had threatened suit. 
  • MeadWestvaco failed to establish any substantial need for the information because Rexam had produced the testing that it planned to rely on at trial, MeadWestvaco performed its own tests on the allegedly infringing product, and MeadWestvaco had an opportunity to cross-examine Rexam’s testifying expert. 
  • Rexam had not waived work product protection because neither consulting expert would testify at trial and Rexam had not selectively disclosed any information relating to their testing.
  • Since it could not show “substantial need” for the materials, MeadWestvaco could not meet the higher standard of “exceptional circumstances” under Fed. R. Civ. P. 26(b)(4)(D)(ii) to require production.
  • Sandvik Intellectual Property AB v. Kennametal, Inc., 2011 U.S. Dist. LEXIS 11104 (W.D. Pa. Feb. 4, 2011) did not apply because that case involved internal testing, not testing done by an outside expert and not done at the request of an attorney.
  • Rexam did not waive the work product privilege by denying in its Answer that its products infringed MeadWestvaco’s patent.

Judge Lee’s ruling is a straightforward application of the rules governing consulting experts with which all litigators are familiar. In fact, it’s not clear why MeadWestvaco persisted in appealing Judge Jones’ decision to Judge Lee. Regardless, Judge Lee’s decision provides patent litigators with a good summary of the law governing expert discovery for citation in future EDVA cases.
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EDVA District Judge Reverses Magistrate Order Requiring a Foreign Defendant to Travel to Virginia for Deposition

Posted on May 20, 2010 by Dabney Carr

In a recent trade secret case, Judge Ellis addressed an issue that often comes up in intellectual property litigation but is rarely litigated: Do out of state defendants have to come to Virginia for a deposition?

The last case that addressed this issue in Virginia was Armsey v. Medshares Mgmt., 184 F.R.D. 569 (W.D. Va. 1998), which is not only more than twelve years old, it is a magistrate’s decision, and so its precedential value was uncertain.

In Judge Ellis’ decision, In re: Outsidewall Tire Litigation, 2010 U.S. Dist. LEXIS 44019 (E.D. Va. May 4, 2010) (found here), the defendants, which were based in Dubai, allegedly conspired with a former employee of the plaintiff to steal plaintiff’s tire designs. The plaintiff sought to take the depositions of the defendants in Virginia by noticing Rule 30(a)(1) depositions of the defendants’ managing agents and a Rule 30(b)(6) deposition of three related corporate defendants. Notably, while the corporate defendants had been served, they had not filed counterclaims. If they had, they likely would have been subject to deposition in Virginia under E.D. Va. Local Rule 30(A).

Applying Armsey, Magistrate Judge Davis held that the witnesses had to travel to Virginia for a deposition because the witnesses frequently traveled for business (though not to Virginia) and because of the time difference between Virginia and Dubai.

Judge Ellis reversed, holding that courts have generally recognized that there is a presumption that depositions of a corporate defendant, whether under Rule 30(a)(1) or Rule 30(b)(6), should be taken at the corporation’s principal place of business. The presumption can be overcome only under special circumstances, such as:

  • When the deponent regularly conducts business in the place where the deposition is sought.
  • When the governing law of the defendant’s principal place of business would prevent the deposition or frustrate the deposing party’s legitimate discovery-related objectives.
  • Where the foreign deponents had previously disregarded deposition orders.

Judge Ellis found that Armsey properly applied the presumption, but he overruled the magistrate judge’s order because:

  • While the witnesses traveled frequently, they did not frequently come to the forum district.
  • There was no showing that Dubai law would hinder the deposition, and the defendants agreed to conduct the deposition under the Federal Rules
  • There was no evidence that disputes requiring judicial intervention were likely

Interestingly, Judge Ellis went on to state that it was appropriate for the defendants to pay the travel costs and attorneys’ fees for travel time for two of the plaintiff’s attorneys to travel to Dubai. Conversely, if the deposition had taken place in Virginia, the judge stated, the deponents travel costs would be borne by plaintiffs. While not stating a hard a fast rule, Judge Ellis’ comments about the shifting of costs could well be relevant to future cases.

Finally, the plaintiff claimed that holding the depositions in Virginia would facilitate service of process on one of the witnesses, who was named as a defendant individually. Judge Ellis rejected this argument, emphatically stating that “[f]acilitating service of process on managing agents of foreign corporations is not a legitimate reason to compel deponents to appear in Virginia.”

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