28
Mar
By Eric Schweibenz
On March 22, 2011, ALJ Carl C. Charneski issued the public versions of Order No. 16 (dated March 2, 2011), Order No. 18 (dated March 4, 2011), and Order No. 19 (dated March 4, 2011) in Certain Adjustable-Height Beds and Components Thereof (Inv. No. 337-TA-734).  In Order No. 16, ALJ Charneski granted-in-part Respondent Medical Depot, Inc., d/b/a Drive Medical Design and Manufacturing’s (“Drive Medical”) motion to compel Complainant Invacare Corporation (“Invacare”) to respond to certain interrogatories and requests for production of documents and things.  In Order No. 18, the ALJ granted-in-part Invacare’s motion to compel Drive Medical to produce documents relevant to certain document requests and to respond to certain interrogatories.  In Order No. 19, ALJ Charneski granted-in-part Drive Medical’s motion to quash subpoenas directed at Drive Medical’s former patent counsel and the patent counsel’s former law firm.

In Order No. 16, ALJ Charneski determined that Invacare should be compelled to respond to certain Drive Medical interrogatories because the interrogatories are relevant to public interest considerations in the investigation.  However, the ALJ limited the scope of Invacare’s responses by only requiring Invacare to respond to the interrogatories with respect to information dating from August 2, 2010 or later, as opposed to the original interrogatory language requiring responses concerning information dating from January 1, 2006 or later.  ALJ Charneski also determined to compel Invacare to produce documents in response to a number of Drive Medical document requests, although he again limited the scope to August 2, 2010 or later.  Lastly, the ALJ denied Drive Medical’s motion to compel with respect to certain other document requests after finding those requests overly broad.

In Order No. 18, ALJ Charneski determined that Drive Medical should be compelled to produce documents in response to Invacare requests relating to the conception, design, and development of the accused products in the investigation, including Drive Medical’s Ultra Light Beds and Delta Beds.  In particular, ALJ Charneski found that the conception and development of the Ultra Light Beds are relevant to the issue of whether the design of the Delta Beds has significantly changed from that of the Ultra Light Beds, which is important in view of Invacare’s infringement contentions.  ALJ Charneski also determined that Drive Medical should be compelled to produce documents and respond to interrogatories relating to Invacare, the patents-in-suit, and Invacare’s products that practice the patents-in-suit.  However, the ALJ denied Invacare’s motion to compel to the extent that it requested documents relating to Invacare patents not asserted in the investigation.  The ALJ granted the motion to compel with respect to requests relating to the “mechanism, process, operation or function of the accused products.”  He also granted the motion to compel with respect to requests relating to “sales, pricing, inventory, and customs and importation information of the accused products,” except for one request that was directed to information concerning customers located outside the U.S.  Additionally, ALJ Charneski denied Invacare’s request that Drive Medical be ordered to hire an outside vendor to assist with the collection and production of certain missing documents, and instead ordered the parties to meet and confer and file a joint report concerning Drive Medical’s document collection and production efforts, and to telephonically inform the ALJ of any impasse.  Lastly, the ALJ ordered Drive Medical to submit all documents in its possession that have not been previously produced to Invacare and that relate to Drive Medical’s document preservation efforts (including Drive Medical’s document hold policy) for in camera review.

In Order No. 19, ALJ Charneski granted-in-part Drive Medical’s motion to quash Invacare’s subpoena duces tecum and ad testificandum to Klaus Stoffel and subpoena duces tecum to Wolff & Samson PC.  According to the order, Klaus Stoffel is Drive Medical’s former patent counsel and Wolff & Samson PC is Mr. Stoffel’s former law firm.  ALJ Charneski first found that Drive Medical does in fact have standing to move to quash the subpoenas in light of Drive Medical’s significant interest in preventing the disclosure by a third-party of Drive Medical’s allegedly privileged information.  According to the order, Drive Medical’s president, Richard Kolodny, testified at his deposition concerning certain emails from 2008 relating to patent searches conducted by outside counsel.  Drive Medical conceded that this testimony and the underlying emails had effected a limited waiver of attorney-client privilege with respect to the particular patent searches at issue.  However, Invacare argued that the waiver was much broader and extended to all attorney-client communications “relating to the same subject matter as the disclosed information.”  ALJ Charneski agreed with Drive Medical that the scope of the waiver was limited, and thus granted the motion to quash to the extent that it sought to narrowly limit the scope of the subpoenas to the 2008 emails and the related deposition testimony.