United States District Court, D. Delaware
LEONARD P. STARK UNITED STATES DISTRICT COURT.
Wilmington this 12th day of January, 2017, IT IS HEREBY
parties filed a Joint Letter Regarding Discovery Conference
Issues. (D.I. 400; see also D.I. 428 at 5, 8) It
identifies four disputes. The Court's rulings with
respect to these disputes follow.
Heartland's request that Kraft be ordered to further
supplement its answer to Interrogatory No. 12 (see
D.I. 400 at 1 -3) is GRANTED as detailed below. No later than
January 27, 2017, Kraft shall supplement its response to
Interrogatory No. 12 to clarify: (i) whether, prior to March
26, 2013, the individuals specifically listed in
Interrogatory No. 12, as well as Ken Davis and Debbie Wright,
knew of PCT Ackilli; had PCT Ackilli in their possession; or
looked at, read, or discussed PCT Ackilli's contents; and
(ii) why any of the foregoing individuals, including Ken
Davis and Debbie Wright, did not report PCT Ackilli to the
Patent and Trademark Office.
addition, no later than February 10, 2017, Kraft shall
produce all documents reflecting awareness of PCT Ackilli
(whether or not such documents explicitly refer to PCT
Ackilli). In order to comply with this Order, it will be
necessary for Kraft (to the extent it has not already done
so) to investigate whether any documents that do not
expressly reference PCT Ackilli but may reflect knowledge of
PCT Ackilli (because, for example, the contents of such
documents include matters addressed in PCT Ackilli, such as
buffered concentrates), do or do not reflect knowledge of PCT
Ackilli. Ifthey do reflect such knowledge, then such
documents shall be produced. If such documents do not reflect
such knowledge, then such documents need not be produced
(unless they need be produced due to some reason other than
the effect of this Order), but in that event Kraft shall
provide a log of such documents, sufficient to enable
Heartland and the Court to make a meaningful assessment of
Kraft's assertions that such documents remain privileged.
foregoing rulings are consistent with the Court's rulings
regarding waiver of attorney-client privilege. (See
D.I. 351, 352, 402) Kraft's contention that privilege was
not waived with respect to "general discussions of the
technology of PCT Ackilli, which may also be found in the
patented inventions (e.g., buffer, acid, mixing, etc.), but
that do not specifically reference PCT Ackilli or its
examples" (D.I. 400 at 2) is incorrect. It is not
necessary for a document to mention PCT Ackilli in order to
reflect an awareness of PCT Ackilli. While "[d]ocuments
and information that relate exclusively to the
technology of Ackilli or the Water Sensations product and
not also to Defendants' knowledge of and/or
decision not to disclose Ackilli are not within the scope of
the waiver" (D.I. 351 at 8) (emphasis added), it is
possible that a document that does not "specifically
reference" Ackilli may still also relate to
"Defendants' knowledge of and/or decision not to
disclose Ackilli." Nor is the Court persuaded that
Heartland has waived its right to request information
relating to Mr. Davis or Ms. Wright.
Heartland's request that the Court order that Kraft's
supplemental response to Interrogatory No. 12 be verified is
DENIED WITHOUT PREJUDICE to renew after receiving and
reviewing the supplemental response and after completion of
the Rule 30(b)(6) deposition of Kraft.
Court concludes that Fitch Even has waived attorney
work-product protection over the documents listed on its log,
as any such assertion of work-product protection is untimely.
After Kraft supplements its response to Interrogatory No. 12
and produces the documents (and/or log) required by this
Order, but no later than February 17, 2017, the parties shall
advise the Court whether there remains a dispute with respect
to production of any Fitch Even document and, if so, how they
propose such dispute(s) be resolved.
this time the Court is not appointing a Special Discovery
Master although the Court may do so if the parties continue
to have discovery disputes.
Heartland's motion for leave to file a second amended
answer (D.I. 405), to articulate a total of eight theories of
inequitable conduct, is GRANTED. Leave to amend is to freely
granted when justice so requires. See Fed. R. Civ.
Proc. 15(a). Good cause has been shown. See Fed. R.
Civ. Proc. 16. The second amended answer provides Kraft with
clear notice of the full extent of Heartland's
inequitable conduct contentions that Heartland will seek to
prove at trial. It aims to conform the pleadings to the facts
Heartland believes it discovered during discovery. Further
grounds for the relief sought include that, as noted above,
the Court is ordering additional discovery, which Heartland
may use as evidence to support its inequitable conduct
contentions, but may arguably not be pertinent to the
inequitable conduct theory in the currently-operative answer,
and that the Court is today ...