Federal Circuit Report

• Jurisdiction: United States,Federal
• Citation: Vol. 47 No. 4
• Publication year: 2022
• Author: Aisha Mahmood Haley
• topic: Intellectual Property,Federal,Civil Procedure

FEDERAL CIRCUIT REPORT

Aisha Mahmood Haley
Reichman Jorgensen Lehman & Feldberg LLP

A TRAP FOR THE UNWARY: LEVERAGING RULE 37 TO KNOCK OUT YOUR OPPONENT'S CASE AFTER MLC INTELLECTUAL PROPERTY V. MICRON TECHNOLOGIES

In a sea of discovery, it is hard to tell what will really matter at trial. For example, most lawyers don't see contention interrogatories as case breaking. During fact discovery, through a contention interrogatory, you can try to box in your opponent's theories on infringement, damages, validity, and willfulness, but they will probably object—sometimes for pages. An all-too-common objection is that contention interrogatories seek premature disclosure of expert opinions. After all, there is usually a separate expert discovery period where reports on most issues in patent cases are exchanged.

And everyone has experienced a Rule 30(b)(6) deposition where the witness is totally unprepared on the designated topics. Apart from protesting to keep the deposition open (and maybe, if it's important enough, moving to compel), there's not much you can do about it.

But a recent Federal Circuit case provides a powerful tool to leverage your opponents' threadbare discovery to slice up their case: In MLC Intellectual Property, LLC v. Micron Technologies, Inc., 10 F.4th 1358, 1371 (Fed. Cir. 2021), the court cabined a party's case to the evidence in its cursory contention-interrogatory responses and unprepared Rule 30(b) (6) witness's transcript as a Fed. R. Civ. P. 37 sanction.

The Dispute

MLC Intellectual Property, LLC ("MLC") sued Micron Technologies, Inc. ("Micron") in 2014 on a series of patents drawn to, generally, a type of computer memory device. The details of infringement and of the damages model are less important for our purposes, but the discovery posture is: during fact discovery, Micron lodged a series of contention interrogatories, seeking identification and explanation of damages facts. For example, Micron's Interrogatory 6 asked for, "in detail the factual and legal basis and supporting evidence for the relief" sought in the complaint, including for "reasonable royalty" damages. MLC Intell. Prop., LLC v. Micron Tech., Inc., No. 14-CV-03657-SI, 2019 WL 2863585, at *6 (N.D. Cal. July 2, 2019) ("Discovery Opinion"). And Micron's interrogatory 22 sought "all facts, evidence, and testimony regarding any applicable royalty rates" MLC "intend[ed] to rely upon at trial,"

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including "complete detail" explaining "why those royalty rates are applicable." Id. at *9.

MLC first responded to interrogatory 6 with boilerplate objections and citations to ninety-three Bates-numbered documents. MLC, 10 F.4th at 1369. It later supplemented its response with the statement that the royalty rate would be based on the Georgia-Pacific factors and would include consideration of "relevant license agreements for the patented technology." Id. As to interrogatory 22, MLC represented that its royalty rate would at least be based on the Georgia-Pacific factors and consider license agreements, with a cite to seven Bates-numbered documents. Id. at 1370. Contained in these responses was a citation to the Hynix and Toshiba licenses, the key licenses at issue and...