Summary
holding that responses to requests for admission given before claim construction ruling would be "confusing" as the respondent's interpretations would "not necessarily govern this action"
Summary of this case from SME Steel Contractors, Inc. v. Seismic Bracing Co.Opinion
Civil No. 1:05-CV-64 TS.
January 11, 2007
MEMORANDUM DECISION AND ORDER DENYING MOTION TO COMPEL
With the assistance of thorough and clear briefing from the parties, the court determines that a motion by Dell, Inc. (Dell) to compel Plaintiff Phillip M. Adams Associates, L.L.C. (Adams) to respond to certain requests for admission should be denied.
Defendant Dell Inc.'s Motion to Compel Answers to Dell's Requests for Admission Nos. 27-57 to Plaintiff (Motion to Compel), docket no. 176, filed November 13, 2006.
Nature of the Case
Adams alleges the defendant computer manufacturers have infringed on three of Adams's patents related to errors in floppy disk controllers. Adams alleges the infringement occurs in many specified models of Defendants' computers.
Amended Complaint at 2, docket no. 6, filed May 31, 2005.
Id. at 8.
Nature of the Motion
Dell moved to compel responses to requests for admission which asked Adams to admit or deny that certain elements of one of the patents in suit are disclosed by a prior patent in suit. While "the `002 patent and the `414 patent share common subject matter, namely, detection of defective floppy diskette controllers [they are] not related to each other, and therefore the `414 patent is [potentially] prior art to the `002 patent." Dell characterizes the requests as seeking "fact opinions" suitable for admissions — but Adams claims Dell is seeking to resolve legal issues. Adams also states that Adams cannot respond to these requests until the court completes claim construction. Dell, for its part, just wants "Adams to define its position regarding the differences between the patents in suit."Discussion
Both parties rely on cases from other trial courts compelling or not compelling similar discovery and other cases characterizing certain issues as issues of fact (proper for admissions) or issues of law (not proper for admissions). Pittway Corp. v. Fyrnetics, Inc. represents Adams' position. Pittway involved requests for the admission that specific "patents are prior art to the patent in suit." The court rejected these requests because they were "an effort to seek bald legal conclusions." A better drafted request asked the respondent to admit that claim language in a prior patent described the same subject as claim language in the patent in suit. But since that request also used the term "prior art," a response was not compelled.In Naxon v. GTE, the court considered requests less clearly seeking legal conclusions. The disputed requests for admissions quoted "selected language from the Naxon patent and ask[ed] that it be admitted that various elements disclosed in [another patent] satisfy that quoted language." The court declined to compel responses to the requests because they "seek to obtain an admission of the ultimate legal conclusion in the case rather than admissions of fact or of the application of law to fact." The court was also concerned that denials could provide a basis for attorneys fees sanctions under Rule 37 which "would amount to an end run around the `American Rule' that does not allow attorney's fees except in extraordinary cases." But the court pointed out that "it would probably approve interrogatories that call on a patentee to explain claimed distinctions between the claims of the patent in suit and the prior art."
212 U.S.P.Q. 919 (N.D. Ill. 1980).
Id. at 920.
Id.
Id. (citations and quotations omitted) (emphasis added).
Adams also relies on Tulip Computers Int'l., B.V. v. Dell Computer Corp. The Tulip court denied enforcement of requests for a different reason. The court held that "determining whether a product or process infringes or whether infringement has occurred involves the requirement of claim construction which is a legal determination within the province of the court." Therefore, "requests directed towards applying the claims of the patent or requiring application of the claims prior to any Markman ruling are not the application of law to facts relevant to the case, but in reality are requests for legal conclusions." The court found other requests problematic because they did not clearly state whether the "requests [were] directed to Tulip's, Dell's or the court's interpretation of the claim language."
210 F.R.D. 100 (D. Del. 2002).
Id. at 108.
Id.
Id.
The foundations of Tulip and Naxon decisions are similar. Even though a request may be phrased to appear factual, if it encroaches on legal turf, or reaches the ultimate decision of the court, the request will be seen as seeking a legal conclusion and cannot be compelled. Dell complains that Tulip was considering requests on the issue of infringement, but invalidity determinations are also factual determinations resting on the legal issues of claim construction.
Supporting Memorandum at 9.
In patent litigation, issues of fact and law are layered. As the court pointed out in Minnesota Min. Mfg. Co. v. Johnson Johnson Orthopaedics, Inc. (3M) issues of fact must be resolved before claim construction, which is a question of law. Then, "[i]dentity of invention is a question of fact . . ." Similarly, infringement is a question of fact, coming before the legal analysis of claim construction.
976 F.2d 1559 (Fed. Cir. 1992).
Id. at 1565.
It is this layering that is giving these parties a conceptual impasse. Dell is correct that its requests for admissions seek factual information, but that factual information rests on legal analysis (from Adams) and on legal conclusions of claim construction (from the Court).
Dell relies on Intertech Resources, Inc. v. Vital Signs, Inc., where admissions were requested "that the language contained in the claim section of [a prior patent] is identical to the language in the [disputed] patent." The Intertech court distinguished Naxon and Pittway because of language in 3M that "[i]dentity of an invention is a question of fact." Intertech ignores the 3M discussion of layers of fact and law. The Intertech court could have reached the same result by return to the text of the requested admissions. The requests sought comparison of language which is clearly a question of fact. By contrast, Naxon and Pittway sought analysis of language and a device, and an admission of comparability, which involves legal analysis. 3M does not affect the validity of Naxon and Pittway.
No. 94 C 5758, 1996 WL 637860, *2 (N.D. Ill. Nov. 1, 1996).
The sequential resolution of factual issues, leading to the legal determination of claim construction, is under way in this case. At that point, it should be possible for Adams to respond to the requests for admissions because both patents will have been construed. Then the admissions will narrow issues for trial. At this point, responses would be confusing, because they ask for Adams' responses to be based on Adams' interpretations, which will not necessarily govern this action. The court has authority to determine the timing and sequence of discovery, and in this instance, these requests will be better answered after claim construction is complete. While the issue is not framed now, it would seem very reasonable that the requests be answered within 30 days of claim construction.
See Order Granting Agreed Motion to Modify Scheduling Order, docket no. 196, filed November 30, 2006, and Order for Appointment of Robert L. Harmon as Special Master for Claim Construction, docket no. 175, filed November 13, 2006.
Defendant Dell Inc.'s Reply Memorandum in Support of its Motion to Compel Answers to Dell's Requests for Admission Nos. 27-57 to Plaintiff at 2, docket no. 204, filed December 7, 2006.
ORDER
IT IS HEREBY ORDERED that the motion to compel is DENIED.
Docket no. 176, filed November 13, 2006.