Miller et al v. Treado et alMEMORANDUM in Support re MOTION for Protective Order that Discovery SoughtD. Mass.December 22, 200621253_4.DOC IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS PETER J. MILLER, an individual, CLIFFORD HOYT, an individual, and CAMBRIDGE RESEARCH AND INSTRUMENTATION, INC., a Delaware corporation, Plaintiffs, v. PATRICK TREADO, an individual, and CHEMIMAGE CORP., a Delaware corporation, Defendants. Civil Action No. 05-10367-RWZ PLAINTIFFS’ MEMORANDUM IN SUPPORT OF PLAINTIFFS’ MOTION FOR A PROTECTIVE ORDER THAT THE DISCOVERY SOUGHT BY DEFENDANTS THROUGH DEP OSITION NOT BE HAD, OR, IN THE ALTERNATIVE, THAT SUCH DISCO VERY MAY BE HAD ONLY THROUGH CONTENTION INTERROGATORIES OR, IN THE ALTERNATIVE, THAT SUCH DISCOVERY BE APPROPRIATELY L IMITED IN SCOPE Plaintiffs Cambridge Research and Instrumentation, Inc. Peter J. Miller, and Clifford Hoyt (collectively, “CRI”) pursuant to LR 7.1(b)(1), hereby present a memorandum of reasons, including citations of proper authorities, in support f the accompanying motion for a protective order that the discovery sought by defendants through deposition not be had under Fed.R.Civ.P. 26(c)(1); or, in the alternative, that such discovery may be had only by means of contention interrogatories under Fed.R.Civ.P. 26(c)(3); or, in the alternative, that such discovery be appropriately limited in scope under Fed.R.Civ.P. 26(b)(2). Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 1 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 2 - INTRODUCTION Protective orders are appropriate when “justice requir s to protect a party or person from annoyance, embarrassment, oppression, or undue burdn o expense”. See Fed.R.Civ.P. 26(c). During plaintiff Peter J. Miller’s October 17, 2006, deposition, counsel for ChemImage harangued Miller, a layman with no legal training or background, for conclusions of law regarding inventorship in hypothetical situations. Despite Miller’s efforts to answer these questions (by tying them to specific facts that he kn w about), despite Miller’s explanations that he did not know the legal terminology involved, despite Miller’s complaints that the questions were “too abstract” (as they were not tied to any facts or specific examples), and over counsel for CRI’s objections, counsel for ChemImage persisted in seeking legal opinions based on hypothetical and ill-defined factual situations. After forty-five minutes of such questions, counsel for CRI finally instructed the witness to sp answering, and counsel for ChemImage moved on to other topics, and the deposition continued. The question which counsel for CRI instructed Miller not to answer is one of two questions that are the subject of this motion for a protective order under Rule 26(c). The other question also asked for an expert legal opinion, and thus wa improper for seeking an expert legal opinion from a lay witness. In addition, the question involved an issue (i.e., novelty) completely irrelevant to inventorship, even though this Court has limited the scope of fact discovery in this action to the issue of inventorship. Based on thislimited scope, for example, counsel for ChemImage instructed one of the named inventors of the ‘962 patent-in-suit not to answer a question during his deposition. See Exhibit 1 , Nelson Deposition excerpts, pp. 112-116, see, Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 2 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 3 - e.g., p. 113:19-21 (counsel for ChemImage asking “what is the relevance of this to the issue of co-inventorship?” before instructing witness not to answer).1 This Court should grant the protective order (1) preventing counsel for ChemImage from asking Miller these two questions (i.e., order that no such discovery be had under Fed.R.Civ.P. 26(c)(1)); or (2) in the alternative, order that such discovery may be had, but only by means of contention interrogatories, under Fed.R.Civ.P. 26(c)(3); and/or (3) in the alternative, order that such discovery, whether by deposition or contention interrogatory, be limited, under Fed.R.Civ.P. 26(b)(2), to the factual basis for CRI’s legal contentions concerning inventorship of the claims in the ‘962 patent-in-suit. STATEMENT OF FACTS On September 28, 2006, the Court held a pre-trial conference in which it was decided that, inter alia, the scope of fact discovery would be limited to the issue of inventorship. See, e.g., Sept. 28, 2006 Elec. Docket Entry (“Inventorship only”). The Court subsequently decided two motions based on this narrowing of subject matter for fact discovery. See, e.g., Sept. 29, 2006 Order [D.E. 83] (CRI’s motion to compel “granted asto document requests relating to the inventorship claim and denied as to document requests r lating to the other claims”); and Oct. 27, 2006 Order [D.E. 85]. On October 17, 2006, plaintiff Peter J. Miller was deposed for over eight (8) hours, excluding all breaks. Miller had been designated by CRI as a 30(b)(6) witness for certain topics, and also had been noticed as an individual. See, Exhibit 2 , ChemImage’s Notices of Deposition. 1 Counsel for ChemImage has yet to file a motion for a protective order under Fed.R.Civ.P. 26(c) concerning this question. Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 3 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 4 - Throughout the deposition, Miller answered counsel for ChemImage’s questions on a wide range of subjects. The morning session was uneventful, but, after the lunch break, counsel for ChemImage began asking argumentative and hypothetical questions looking for legal opinions on inventorship. After Miller answered a question about manufacturing parts for a third party manufacturer (or “OEM”), ChemImage asked: Where a third party comes to CRI and asks for one of its products for incorporation of a larger system, does CRI consider its lf a co-inventor of the larger system? Exhibit 3 , Miller’s Deposition, p. 87:9-12. Counsel for CRI objected, but allowed Miller to answer the question as best he could. Miller gave an almost two minute response to the qustion. Ex. 3, pp. 87:15-88:11. Not satisfied with the answer, counsel for ChemImage persist d with argumentative and hypothetical questions: Going back to the situation where the third party comes and buys a product from CRI, take the obvious example, liquid crystal unable filter, and incorporates it into a larger system. Is it CRI’s position that they’re a co- inventor of the larger system? Ex. 3, p. 89:5-10. Once again, counsel for CRI objected, but allowed Miller to answer the question as best he could. See Ex. 3, p. 89:13-24. Continuing with his argumentative and hypothetical questions, counsel for ChemImage asked (misstating Miller’s testimony): [When the customer] asks for, lack of a better descriptor, a customized LCTF, a liquid crystal tunable filter, for incorporation i to a broader system, I take it from your answer that CRI would take the position that they were a co- inventor of the larger system based on the customization of the liquid crystal tunable filter? Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 4 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 5 - Ex. 3, p. 90:1-10. Counsel for CRI again objected, but allowed Miller to answer the question as best he could. Miller volunteered a real-life example where CRI made a customized LCTF for a third party, and how the inventorship issue and ownership rights were handled in that case. Ex. 3, pp. 90:13-91:18.2 Counsel for ChemImage pressed on: Has that been the case in all instances where CRI has produced a component part, a subcomponent for the broader system, that CRI takes the position as they are a co-inventor of the broader system? Ex. 3, p. 91:19-22. After objecting, counsel for CRI again allowed thewitness to answer the question as best he could. Ex. 3, pp. 92:1-94:2. Counsel for ChemImage persisted: I guess the way we have gotten down this road, I asked you whether you thought CRI was the co-inventor of the broader system made by [name omitted]3, and you had answered I don’t know if there’s a patent or patentable matter in the broader system. And I guess what—how w uld that affect your position on whether you’re a co-inventor of the broader system? Ex. 3, p. 100:12-19. Once again, counsel for CRI objected, but allowed Miller to answer the question as best he could. The witness answered that he did not know “what the legal standard is” for co- inventorship. Ex. 3, p. 101:2. Counsel for ChemImage asked for the witness’s definition of “inventor under the patent law”, to which the witness responded with his “high-tech engineer’s layman understanding of that”. Ex. 3, pp. 101:16-102:3. Counsel for ChemImage continued: 2 The Court has previously indicated its desire to have as many documents unsealed as possible. S e, e.g., Sept. 29, 2006 Order [D.E. 83] (“The parties have agreed to unseal as many documents as possible. The court thanks the parties for their efforts.”). In order to keep this memorandum unsealed, only small portions of Miller’s depositi n transcript, which has been designated confidential in its entirety, are quoted herein, and certain portions are described/paraphrased so as to not make confidential informati n public. No quotation in this memorandum constitutes a waiver of confidentiality of other portion of Miller’s deposition transcript. 3 See Footnote 2. Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 5 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 6 - Under your definition, taking that as face value, do you need to know how the entire system operates to be a co-inventor of that system? Ex. 3, p. 102:4-7. Counsel for CRI objected, and counsel for ChemImage restated the question: Using your definition of co-inventor, if you don’t know how the broader system operates—[A. Right.]—but you’ve made, as you’ve described, a significant contribution to the broader system say by building a component of the broader system, do you still consider yourself a co-inventor of the broader system? Ex. 3, p. 102:11-17. Counsel for CRI objected again, and Miller answered: I don’t know what system you’re talking about. If you’re making reference to, for example, the [name omitted]4 one, I don’t even know what it is. I don’t know what context you’re looking for me to answer. Ex. 3, p. 102:19-22. Despite this answer, counsel for ChemImage continued to ask the same question, over the objections of CRI’s counsel, finally leading to: Q. If you’ve made a significant contribution in a broader system, accepting the definition of inventorship you gave a moment ago, Mr. Miller, and you don’t know how the broader system works, do you still consider yourself a co- inventor of the broader system? MR. HOLMBERG: Objection. A. So then to answer it, it’s a little bit, to my mind still, a bit of an abstract question, meaning, if I-- MR. PAVANE: Excuse me. This is Marty Pavane. I’m going to interject a further objection. We’re going to seek a protective order. There seems to be at this point, you’re way far afield. What you’re doing is nothing more than asking this witness hypothetical questions as an expert, and he’s not an expert. He’s here to answer fact questions about what happened here, not hypothetical questions about different situations. And we’ll move for a protective order on this, so move on to your next line of questioning. Ex. 3, p. 104:9-105:5. 4 See Footnote 2. Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 6 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 7 - Counsel for CRI instructed the witness not to answer, and thus now seeks a protective order concerning this question which seeks an expert legal opinion based on a vague set of hypothetical facts. CRI also seeks a protective order concerning another question at Miller’s deposition, which also sought an expert legal opinin, but on an irrelevant issue. Thus, there are two questions at dispute in this motion (the “Disputed Inquiries”):5 (1) “If you’ve made a significant contribution in a broader system, accepting the definition of inventorship you gave a moment ago, Mr. Miller, and you don’t know how the broader system works, do you still consider yourself a co-inventor of the broader system?” Ex. 3, p. 104:9-13. (2) “Mr. Miller do you consider there to be any novel invention set forth in the ‘962 patent?” Ex. 3, p. 94:5-6. On October 27, 2006, counsel for CRI requested confirmation from counsel for ChemImage that ChemImage was still insisting on seeking answers to the two Disputed Inquiries above. See Exhibit 4 , CRI’s October 27, 2006 letter. On November 3, 2006, counsel for ChemImage confirmed that it was. See Exhibit 5 , ChemImage’s November 3, 2006 letter. In “the spirit of LRs 7.1(a)(2) and 37.1(a),” counsel for CRI suggested a compromise in a letter dated November 13, 2006. See Exhibit 6 , Counsel for CRI’s November 13, 2006 letter. Specially, counsel for CRI suggested: … if you serve contention interrogatories on these qu stions, our client will provide written answers in accordance with the Federal Rules. We believe contention interrogatories are the appropriate means for obtaining answers to your questions. See, e.g., Smithkline Beecham Corporation v. Apotex Corp., 2004 WL 739959, *2 (“…, a party may properly resist a Rule 30(b)(6) deposition on grounds that the information sought is more appropriately discoverable through contention interrogatories.”). Furthermore, contention interrogatories address both the defendants’ right to obtain answers concerning the contentions of plaintiffs and our concern that the non-lawyer 5 There were other instances where counsel for CRI instructed Miller not to answer, but each one was either resolved or subsequently answered (see, e.g., Ex 3, pp. 56:17-57:23; pp. 58:13-63:7; and pp. 97:1-98:11). Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 7 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 8 - plaintiff deponents were being asked to provide plaintiffs’ legal contentions in the context of a deposition. See, e.g., Smithline, at *3: … Although Alphapharm contends that it seeks the facts, opinions, and subjective beliefs of Smithkline, our review of the disputed questions reveals that Alphapharm was asking Smithkline’s witness to take a legal position with respect to certain statements in Smithkline’s patents. It would be very difficult for a non-attorney witness to answer such questions at a deposition. A better method would be for Smithklne to respond to interrogatories because than it would be a l to receive input from both its attorneys and persons familiar with the patents. See Exxon Research [& Eng’g Co. v. United States], 44 Fed. Cl. [597,] at 601 [(Fed.Cl. 1999)] (holding that contention interrogatories were more appropriate than depositions to inquire about claim construction). Accordingly, we will require Smithkline to respond … through interrogatories. We will await a written response to our proposed compromise before filing our motion for a protective order (which will also uggest this compromise). On November 16, 2006, counsel for ChemImage rejectd ounsel for CRI’s proposal, arguing that CRI “cannot tell Defendants how they should conduct discovery” and that the suggestion for contention interrogatories was only “a means of deflecting attention from the actual issue resulting from their impermissible instruction to Peter Miller not to answer questions during his deposition on October 17th.” See Exhibit 7 , Counsel for ChemImage’s November 16, 2006 letter. THE LAW As stated by the Supreme Court: We agree, of course, that the deposition-discovery rules are to be accorded a broad and liberal treatment. No longer can the time-honored cry of "fishing expedition" serve to preclude a party from inquiring to the facts underlying his opponent's case. ... But discovery, like all matters of procedure, has ultimate and necessary boundaries. As indicated by Rules 30(b) [now 26(c)] Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 8 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 9 - and (d) and 31(d), limitations inevitably arise when it can be shown that the examination is being conducted in bad faith or in such a manner as to annoy, embarrass or oppress the person subject to the inquiry. And as Rule 26(d) provides, further limitations come into existence when the inquiry touches upon the irrelevant or encroaches upon the recognized domains of privilege. Hickman v. Taylor, 329 U.S. 495, 507-508 (1947). Rule 26(c) authorizes the court to make orders for the protection of parties and persons from whom discovery is being sought, and provides “ample powers of the district court to prevent abuse”—“[w]ith this authority in hand, judges should not hesitate to exercise appropriate control over the discovery process”. Herbert v. Lando, 441 U.S. 153, 177 (1979). The moving party must show good cause for a protective order. Cipollone v. Liggett Group, Inc., 785 F.2d 1108, 1121 (3rd Cir. 1986), cert. denied 479 U.S. 1043. Besides an order “that the disclosure or discovery not be had,” a motion for a protective order under Rule 26(c) may seek an order “that the discovery be had only by a method of discovery other than that selected by the party seeking discovery”. Fed.R.Civ.P. 26(c)(1) and (3). Furthermore, pursuant to a motion under Fed.R.Civ.P. 26(c), the scope of discovery “may be limited by the court if it determines that: … (iii) the burden or expense of the proposed discovery outweighs its likely benefit, taking into account …the importance of the issues at stake in the litigation, and the importance of the proposed discovery in resolving the issues.” Fed.R.Civ.P. 26(b)(2); see also: The court may order that certain matters not be inquired into, or that the scope of the discovery be limited to certain matters. Ever since the days of the former equity bill of discovery there has been applied to discovery "the principle of judicial parsimony," by which, when one issue may be determinative of a case, the court has discretion to stay discovery on other issues until the critical issue has been decided. Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 9 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 10 - Vol. 20, Wright & Kane, FEDERAL PRACTICE & PROCEDURE, §88 (2006) (citing Sinclair Ref. Co. v. Jenkins Petroleum Process Co., 289 U.S. 689 (1933)). Legal contentions are not a proper subject for factu l discovery. Goss Int’l Americas, Inc. v. Man Roland, Inc., 2006 WL 1134930, at *1 (D.N.H.) (where deposing attorney asked deponent questions concerning claim construction, and defending attorney refused to continue deposition—“Counsel for Goss was correct in objecting, because claim construction is a question of law, and legal contentions are not a proper subject for factual discovery.”). Indeed, as quoted in counsel for CRI’s November 13, 2006 letter above, contention interrogatories, rather than depositions of fact witnesses, are the appropriate means to obtain the legal contentions of the opponent. Smithkline Beecham Corp. v. Apotex Corp., 2004 WL 739959, at *2 (E.D. Pa) (ruling that legal positions should be ascertained by means of interrogatories rather than deposition); I re Indep. Serv. Org. Antitrust Litig., 168 F.R.D. 651, 654 (D. Kan. 1996) (granting protective order against Rule 30(b)(6) deposition inquiry into legal conclusions, on grounds that producing responses to such questions was “overbroad, inefficient, and unreasonable”); McCormick- Morgan, Inc. v. Teledyne Indus., Inc., 134 F.R.D. 275, 287-88 (N.D.Ca. 1991), rev’d in unrelated part, 765 F. Supp. 611 (N.D.Ca. 1991) (ordering both parties to use contention interrogatories rather than Rule 30(b)(6) deposition t ascertain other side’s legal position); United States v. District Council of New York City, 1992 U.S. Dist. LEXIS 12307, at *48 (S.D.N.Y. August 18, 1992). This is especially true in a patent case, where “the bases for contentions do not consist exclusively of relatively straightforward facts or evidence, as might be true, by contrast, in a case arising out of a traffic accident.” McCormick-Morgan, 134 F.R.D. at 287. Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 10 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 11 - A fact witness, in contrast to an expert witness, “is not the proper witness to respond to hypothetical facts or circumstances.” Hartzell Mfg., Inc. v. American Chemical Technologies, Inc., 899 F.Supp. 405, 409 (D. Minn. 1995) (ordering that the lay witness not be asked such questions in a deposition). It is clear that “[u]nder the Federal Rules of Evidence, speculative opinion testimony by lay witnesses … is generally considered inadmissible.” Washington v. Dept. of Transportation, 8 F.3d 296, 300 (5th Cir. 1993); Freedom Wireless, Inc. v. Boston Communications Group, Inc., 369 F.Supp.2d 155, 157 (D.Mass. 2005) (striking inventor’s lay witness testimony as it fell “within the realm of expert opinion”). ARGUMENT ChemImage’s Disputed Inquiries improperly seek lega opinions from Miller, a layman with no legal training. In both his capacity as a designated 30(b)(6) witness for CRI, and as an individual, Miller was a fact witness. Fed.R.Civ.P. 30(b)(6); see also Fed.R.Evid. Rules 701, 702 (recognizing the difference between lay and expert witnesses). The First Disputed Inquiry required Miller to speculate whether, (i) if he had made a hypothetical “significant contribution” to a hypothetical “broader system”, and (ii) he did not know “how the broader system works”, he would consider himself a “co-inventor” of the hypothetical and undefined “broader system”. First, inventorship is a legal question (see, e.g., Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)), and thus, this request for a legal opinion is not a proper one for a fact witness at deposition. To the extent that it is reasonable to make such an inquiry, it is more appropriately made in a contention interrogatory. Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 11 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 12 - However, this inquiry is neither reasonable nor appro riate, whether made in a deposition or a contention interrogatory. The terms of the qustion itself are so vague and hypothetical as to render the question meaningless. See, e.g., Williams v. Thomas Jefferson University, 54 F.R.D. 615, 617 (E.D.Pa. 1972) (“Hypothetical questions must be based upon facts of record, for example, the testimony of a witness who has been subjected to cross examination”). In Williams, the Court did not allow hypothetical questions in the deposition of a surgeon, where the questions were “not founded upon a definite statement of facts”—“They ask what might be observed during the course of surgery [based on a broad description of a hypothetical injury]. At best the answers would have to be speculative and might differ according to a variety of unstated background circumstances.” Id. For over forty-five minutes, counsel for ChemImage had been asking, and Miller had been doing his best to answer, broad and vague requests for legal opinions about inventorship based on a set of ill-defined and vague hypothetical facts. During that forty-five minutes, there were no attempts to anchor the terms “significant contribution”, “broader system”, or “knowing how a broader system works” to any defined facts (hypothetical or not), or to any documents in this case. Counsel for ChemImage did not ask if Miller had made a “significant contribution” to the ‘962 patent-in-suit, or, if he thought he had, what that “significant contribution” was. Counsel for ChemImage did not ask Miller about the “broader system” in the ‘962 patent-in-suit, or, a fortiori , how the “broader system” in the ‘962 patent-in-suit “works”. Counsel for ChemImage did not ask a single question about why plaintiffs contend that Miller was a co-inventor of the ‘962 patent-in-suit. Instead, counsel for ChemImage chose to ask increasingly complicated, vague, and hypothetical legal questions, without any stated relationship to the facts of this case. Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 12 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 13 - The Second Disputed Inquiry required Miller to form a legal opinion as to whether there was a “novel invention” in the ‘962 patent-in-suit (an issue irrelevant to inventorship). “Novelty” is a term of art in patent law, and concerns the requirement that an invention be “new” as defined by 35 U.S.C. §102(a), (e), or (g). See, e.g., 1 Donald S. Chisum, CHISUM ON PATENTS, §3.01. ChemImage’s inquiry involves legal concepts and terminology, and therefore, as in Smithkline, McCormick-Morgan, and Goss Int’l, such inquiry is not a proper question for a fact witness. See also, e.g., Williams, 54 F.R.D. at 617 (“However, as propounded, the qustion is ambiguous and involves legal concepts beyond the training of a doctor. Question 8 is also improper because of its use of the legal term, ‘neglig nce’”). To the extent that it is reasonable to make such an inquiry, it is more appropriately made in a contention interrogatory. However, this inquiry is not appropriate at this time, whether made in a deposition or a contention interrogatory. Novelty is completely irrelevant o the inventorship of the ‘962 patent- in-suit. "Inventorship is a question of who actually invented the subject matter claimed in a patent," Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993). As explained in Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994), "conception is the touchstone of inventorship, the completion of the mental part of invention." Conception requires "an idea that was definite and permanent enough that one skilled in the art could understand the invention." Id. at 1228. Novelty is unrelated to conception. Indeed, even if the ‘962 patent-in-suit was invalid for lack of novelty, plaintiffs would still have the right to be named inventors. See, e.g., Frank's Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363, 1377 (Fed. Cir. 2002) (the court ordered the trial court to determine inventorship, despite the fact the patent had been ruled invalid—“Nothing in the Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 13 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 14 - statute governing a court's power to correct inventorship, 35 U.S.C. §256, however, prevents a court from correcting the inventorship of an unenforceable patent”). This Court has stayed the other areas of discovery in this case, in order that the “critical issue” of inventorship be determined first. See, e.g., Sept. 28, 2006 Elec. Docket Entry; Sept. 29, 2006 Order [D.E. 83]; and Oct. 27, 2006 Order [D.E. 85]. It is manifestly unfair to limit CRI’s scope of discovery to the inventorship issue, but allow ChemImage to pursue discovery through deposition on novelty, an issue irrelevant to inventorship. “The principle of judicial parsimony” should fall equally on all parties. See, e.g., Vol. 20, Wright & Kane, FEDERAL PRACTICE & PROCEDURE, §88 (2006) (“‘the principle of judicial parsimony’ by which, when one issue may be determinative of a case, the court has discretion to stay discovery on other issues until the critical issue has been decided.”) (citing Sinclair Ref. Co. v. Jenkins Petroleum Process Co., 289 U.S. 689 (1933)). Miller should not be forced to return to a depositi n and answer either of the Disputed Inquiries. If the Court finds that either of these questions should be answered, the appropriate means of discovery are contention interrogatories. Moreover, on the basis of Rule 26(b)(2), the scope of discovery should be appropriately narrowed so that (a) the question on the issue of novelty (which is irrelevant to the present action) is eliminated, unless and until the stay of discovery on issues unrelated to inventorship has been lifted, and (b) the factual basis (e.g., the “significant contribution”, the “broader system”, and “knowing how a broader system works”) for the disputed hypothetical question has a definitive and clear foundation. CONCLUSION At least on the basis of the above, plaintiffs respectfully request that the Court: Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 14 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 15 - (1) grant a protective order barring ChemImage from asking Miller the Disputed Inquiries (i.e., order that such discovery not be had, pursuant to Fed.R.Civ.P. 26(c)(1)); or (2) in the alternative, order that such discovery may be had, but only by means of contention interrogatories, under Fed.R.Civ.P. 26(c)(3); or (3) in the alternative, order that such discovery, whether by deposition or contention interrogatory, be limited, under Fed.R.Civ.P. 26(b)(2), to CRI’s contentions concerning inventorship of the claims in the ‘962 patent-in-suit. Respectfully submitted, PETER J. MILLER, CLIFFORD HOYT, and CAMBRIDGE RESEARCH AND INSTRUMENTATION, INC., By their attorneys: Dated: December 22, 2006 /s/ Teodor Holmberg Martin B. Pavane (admitted pro hac vice) Teodor J. Holmberg (BBO# 634708) COHEN, PONTANI, LIEBERMAN & PAVANE LLP 551 Fifth Avenue New York, New York 10176 Tel. (212) 687-2770 E-mail: tidge@cplplaw.com Brian L. Michaelis (BBO# 555159) Erin E. McLaughlin (BBO# 647750) BROWN RUDNICK BERLACK ISRAELS LLP One Financial Center Boston, MA 02111 Tel. (617) 856-8200 E-mail: BMichaelis@brownrudnick.com Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 15 of 16 Memorandum in Support of Plaintiffs’ Motion For a Protective Order that the Discovery Sought by Defendants through Deposition Not be Had, or, In the Alternative, Be Had through Contention Interrogatories or, In the Alternative, Be Limited in Scope - 16 - CERTIFICATE OF SERVICE I hereby certify that the document identified in the top right-hand portion of this page and filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF). Dated: December 22, 2006 /s/ Teodor Holmberg Teodor J. Holmberg (BBO# 634708) Case 1:05-cv-10367-RWZ Document 93 Filed 12/22/2006 Page 16 of 16 EXHIBIT 1 FILED UNDER SEAL Case 1:05-cv-10367-RWZ Document 93-2 Filed 12/22/2006 Page 1 of 1 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 1 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 2 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 3 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 4 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 5 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 6 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 7 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 8 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 9 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 10 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 11 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 12 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 13 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 14 of 15 Case 1:05-cv-10367-RWZ Document 93-3 Filed 12/22/2006 Page 15 of 15 EXHIBIT 3 FILED UNDER SEAL Case 1:05-cv-10367-RWZ Document 93-4 Filed 12/22/2006 Page 1 of 1 Case 1:05-cv-10367-RWZ Document 93-5 Filed 12/22/2006 Page 1 of 2 Case 1:05-cv-10367-RWZ Document 93-5 Filed 12/22/2006 Page 2 of 2 Case 1:05-cv-10367-RWZ Document 93-6 Filed 12/22/2006 Page 1 of 3 Case 1:05-cv-10367-RWZ Document 93-6 Filed 12/22/2006 Page 2 of 3 Case 1:05-cv-10367-RWZ Document 93-6 Filed 12/22/2006 Page 3 of 3 Case 1:05-cv-10367-RWZ Document 93-7 Filed 12/22/2006 Page 1 of 3 Case 1:05-cv-10367-RWZ Document 93-7 Filed 12/22/2006 Page 2 of 3 Case 1:05-cv-10367-RWZ Document 93-7 Filed 12/22/2006 Page 3 of 3 Case 1:05-cv-10367-RWZ Document 93-8 Filed 12/22/2006 Page 1 of 2 Case 1:05-cv-10367-RWZ Document 93-8 Filed 12/22/2006 Page 2 of 2
