United States District Court, D. Delaware
R. FALLON UNITED STATES MAGISTRATE JUDGE.
Wilmington this 16th day of May,
2018, the court having considered the parties'
letter submissions and the arguments presented during the May
15, 2018 discovery dispute hearing, (D.I. 180; D.I. 181; D.I.
182; D.I. 183; 5/15/18 Tr.), IT IS HEREBY ORDERED THAT
plaintiff AgroFresh, Inc.'s ("AgroFresh")
motion to compel the production of certain categories of
documents identified in the privilege log of defendants Decco
U.S. Post-Harvest, Inc., UPL Ltd., Cerexagri, Inc., and
Essentiv LLC (collectively, "Decco") remains under
consideration pending an in camera review, and
Decco's request for the inclusion of a proposed patent
prosecution bar in the protective order is denied.
August 3, 2016, AgroFresh filed a complaint against Dr. Nazir
Mir ("Dr. Mir"), MirTech, Inc.
("MirTech"), and Decco (collectively,
"defendants"). (D.I. 2 at ¶ 1) The complaint
arises out of a failed business relationship between
AgroFresh and MirTech, and includes claims of ownership of
certain intellectual property, breach of contract, tortious
conduct, and patent infringement. Count I of the complaint
seeks a declaration of ownership of United States Patent No.
9, 394, 216 ("the '216 patent"), which was
developed and filed by MirTech, and was automatically
assigned to AgroFresh pursuant to the Commercial Agreement
and the Consulting Agreement (together, the
"Agreements"). (Id. at ¶¶ 28-30,
66-75; D.I. 97 at 4-5) Count IV of the complaint alleges that
Dr. Mir and MirTech fraudulently induced AgroFresh to sign an
extension to the parties' agreements in October 2015.
(Id. at ¶¶ 92-101)
October 2016, the parties jointly moved to bifurcate Counts I
and IV of the complaint in an effort to simplify and clarify
the disputed issues in the case. (D.I. 18) The court held a
bench trial in March 2017, and issued an opinion outlining
the findings of fact and conclusions of law on June 30, 2017.
(D.I. 97) Specifically, the court concluded that all
improvements to the technology were automatically assigned to
AgroFresh, including the technology covered by the '216
patent. Moreover, the court determined that Dr. Mir
fraudulently induced AgroFresh into executing an extension to
the Agreements by not disclosing either the '216 patent
technology or his business relationship with Decco.
(Id. at 33-34)
August 18, 2017, AgroFresh filed its first amended complaint
against defendants, which contained additional claims against
Dr. Mir and MirTech including breach of contract, fraud, and
willful patent infringement. (D.I. 106)
September 15, 2017, AgroFresh executed a Private Settlement
Agreement with Dr. Mir and MirTech, pursuant to which Dr. Mir
and MirTech admitted the allegations in the first amended
complaint and agreed to entry of judgment against them on all
counts of the original complaint and the first amended
complaint. (D.I. 115 at ¶ 3; D.I. 180, Ex. C)
court held a discovery dispute hearing on May 15, 2018 to
address, among other issues, the applicability of the common
interest privilege to documents listed on the privilege log,
and the addition of a prosecution bar to the terms of the
Common interest privilege.
resolve the issue of whether the common interest privilege
applies to Decco's pre-joint venture and pre-litigation
communications with MirTech between November 2014 and August
2016, the court finds it necessary to review a sampling of
the documents in camera. See Princeton Digital Image
Corp. v. Ubisoft Entm't SA, C.A. No. 13-335-LPS-CJB,
5/11/18 Oral Order (D. Del. May 11, 2018) (citing INVISTA
N. Am. S.d.r.l. v. M&G USA Corp., C.A. No.
11-1007-SLR-CJB, 2013 WL 12171721, at *7-8 (D. Del. June 25,
2013)). Accordingly, based on the chart of log entries
provided at Exhibit B to AgroFresh's May 9, 2018 letter
submission (D.I. 180), Decco is ordered to produce twenty
(20) documents from the first category, fifteen (15)
documents from the second category, and fifteen (15)
documents from the third category. The parties confirmed on
the record during the May 15, 2018 teleconference that they
resolved the dispute as it pertained to the fourth category
of documents. The in camera production shall be made
to the court on or before May 30, 2018 by
submitting the documents to the Clerk's Office in a
sealed envelope labeled "Confidential."
request to include a prosecution bar in the parties'
stipulated protective order is denied. A party seeking to
include a patent prosecution bar in a protective order bears
the burden of showing good cause for the prosecution bar.
See In re Deutsche Bank Trust Co. Ams., 605 F.3d
1373, 1378 (Fed. Cir. 2010). Prosecution bars are evaluated
on a counsel-by-counsel basis, and the analysis focuses on
whether the patent prosecution activities entail competitive
decisionmaking. Id. at 1378-79. The court must then
balance the risk of inadvertent disclosure or competitive
harm against the potential harm to the opposing party from
limiting its choice of counsel. Id. at 1380.
the present case, Decco seeks to apply the proposed
prosecution bar to AgroFresh's only in-house attorneys,
Mr. Thomas Ermi and Mr. Mina Thomas, as well as Mr. Lynn
Tyler, AgroFresh's retained litigation counsel who is
also involved in the inter partes review
("IPR") of the '216 patent. (D.I. 181 at 4)
Decco's primary concern is potential competitive harm in
the event AgroFresh amends its claims without authorization
from the Patent Trial and Appeal Board ("PTAB")
through June 8, 2018, or with Board authorization thereafter,
following Decco's production of its "highly
confidential technical information." (Id.)
9. As a
preliminary matter, Mr. Ermi and Mr. Thomas are barred from
receiving materials designated Highly Confidential under the
terms of the existing protective order. (D.I. 17 at 11-13)
The record further reflects that neither Mr. Ermi nor Mr.
Thomas is a registered patent attorney, and neither
communicates directly with the Patent and Trademark Office
("PTO"). (D.I. 181, Ex. 13) Consequently, a
prosecution bar is not necessary ...