Deering Milliken Research Corp. v. Tex-Elastic Corp.
Deering Milliken Research Corp. v. Tex-Elastic Corp.
Opinion of the Court
ORDER
These actions, which are combined for purposes of the motions hereafter disposed of, involve the right of the plaintiff Deering Milliken Research Corporation (hereafter referred to as DMRC) to recover payments allegedly due under certain sublicense agreements between it and a number of the defendants herein covering the use of certain patented processes or for infringement. In denying liability, the defendants have, inter alia, put in issue the validity of the patents embraced in the sublicense agreements and have charged anti-trust violations, on account of which recovery against the plaintiff is in turn sought.
The matter before me now involves the application of the plaintiff, DMRC, for a protective order under Rule 26(b) (4), relieving it from answering, either in whole or as presently phrased, certain interrogatories propounded by the defendants.
The first objection made by the plaintiff is directed at so much of Interrogatories 5 to 10, inclusive, 19(d) and 51 as would require information regarding opinions, reports or analyses prepared by counsel. It contends that, unless so limited, the interrogatories are violative of the attorney-client privilege or the work-product doctrine of Hickman v. Taylor (1947) 329 U.S. 495, 67 S.Ct. 385, 91 L. Ed. 451, as incorporated in revised Rule 26(b) (3). The defendants respond that, by their interrogatories in question, they do not demand the production of any opinions, “documents, or any tangible things” but seek merely an identification of the same; and they contend that any objections such as those now raised by DMRC are premature and should await the filing of a motion to produce. In any event, the defendants assert that the mere identification of the opinions, reports and memoranda would not infringe on the attorney-client privilege or the
Of course, if the attorney-client privilege and the work-product doctrine are inapplicable to patent and antitrust suits, then the objections by the plaintiff are without merit. It seems clear to me, however, that there is no sound basis for this contention; and that, taking into consideration the peculiar features of these types of action, both the attorney-client privilege and the work-product doctrine are to be honored.
The plaintiff also objects to Interrogatory 14 which seeks the name and address of, and the nature of agreement with all licensees of the plaintiff. In their argument justifying this Interrogatory, the defendants state that the purpose of this Interrogatory is to ascertain whether any licensee has been given terms different from those extended the defendants in these suits. While I am sure the Interrogatory was not designed for this purpose, plaintiff fears that compliance with such Interrogatory would generate additional delinquencies by its other licensees. Since the defendants indicate that their only purpose in this Interrogatory is to ascertain whether any other licensee of the plaintiff has received different terms from those accorded the defendants themselves, I am at this time restricting this Interrogatory to requiring an answer by the plaintiff whether it has extended to any licensee of the patents in question any terms different from those extended any of the defendants. After the plaintiff has answered the Interrogatory as thus phrased, the defendants may, as they feel it appropriate, apply to the Court for the right to file such additional interrogatories as the answer of the plaintiff may suggest to be in order.
The plaintiff has also objected to Interrogatory 15 which seeks identification of all parties to whom a license has been offered and on what terms. The purpose of this Interrogatory, as I understand the argument of the defendants, is the same as that which prompted Interrogatory 14 and for the reasons already stated I think the same should be limited at this time to inquire whether the plaintiff has offered to any party other than the defendants, a license to use the patents in question on terms different from that extended to the defendants.
A ruling on Interrogatory 20 is deferred. Section 122, 35 U.S.C., “enjoins only the patent office to maintain the confidence” attaching to patent applications. Britt Tech Corporation v. L & A Products, Inc. (D.C.Minn. 1963) 223 F.Supp. 126. And,- while the Courts will not hesitate to require a party to answer whether it has filed or abandoned a patent application despite this Section, it normally does not do so unless it is clear that such information is materially connected with the instant litigation. Whether the information sought by this Interrogatory meets such test can best be determined after the other interrogatories have been answered.
The plaintiff objects to Interrogatories 23 and 24 on the grounds that the Interrogatories are burdensome, too general and seek information not reasonably calculated to lead to the discovery of admissible evidence. Such Interrogatories seek an identification of all “documents” either under the control or known to plaintiff which “mention or pertain” to any of the patents in suit or the applications forming the basis therefor, or which “mention or pertain” to any ap
The objections to Interrogatories 45 and 46 are sustained at this time. So far as I can ascertain, no circumstances such as those in Rocform Corp. v. Acitelli-Standard Concrete Wall, Inc. (6th Cir. 1966) 367 F.2d 678, are present in these cases.
The plaintiff has objected to Interrogatory 47 as unduly burdensome, seeking confidential information and information not reasonably calculated in discovery to lead to admissible evidence. So far as the Interrogatory seeks information as to completed, patent license agreements between the plaintiff and other patentees covering the false twisting of textile yarns, the Interrogatory involved in (a) and (b) is approved with the exception that the term “documents” in (b) shall be limited to letters, along with any enclosures attached thereto. The objection to (c) is sustained. This is without prejudice to the right of the defendants to renew their request under this Interrogatory.
In connection with Interrogatory 48, the objection of the plaintiff to (d), (e) and (f) is sustained. The objections to (a), (b), (c), (g) and (h) are disallowed with the exception that such Interrogatory is limited to “agreement” and does not include “business transaction and/or”.
The objections to Interrogatory 49 are disallowed with the exception that the term “transaction” shall be limited to “agreement”.
Finally, the plaintiff seeks to have Interrogatory 56 confined to proceedings involving the patents and processes involved in these actions. For the time-being, it will be so limited.
The plaintiff, also, objected to Interrogatory 1(b) but such Interrogatory was amended at hearing so as to remove plaintiff’s objection.
The plaintiff likewise incorporated in its motion request for extension of time to answer or object to Interrogatories 2, 16 and 25-44, as served on plaintiff on September 24, 1970, and this motion was orally granted by extending time for answering until December 15, 1970.
Leave is granted the plaintiff to answer the Interrogatories to which its objections were disallowed or the Interrogatories amended herein within twenty (20) days from the date hereof.
And it is so ordered.
. See, Lee v. Electric Products Company (D.C.Ohio 1963) 37 F.R.D. 42, 45; Gretsky v. Miller (D.C.Mass. 1958) 160 F.Supp. 914, 915; Harvey v. Eimco Corporation (D.C.Pa. 1961) 28 F.R.D. 380, 381.
. For authority that such privileges are applicable to patent actions, see, as representative cases In re Natta (3d Cir. 1969) 410 F.2d 187, cert. den. Montecatini Edison S.p.A. v. E. I. duPont de Nemours & Co., 396 U.S. 836, 90 S.Ct. 95, 24 L.Ed.2d 87; Harvey v. Eimco Corporation (D.C.Pa. 1961) 28 F.R.D. 380; United States v. Anderson (D.C.Colo. 1963) 34 F.R.D. 518; Vilastor-Kent Theatre Corp. v. Brandt (D.C.N.Y. 1956) 19 F.R.D. 522; Ellis-Foster Company v. Union Carbide & Carbon Corp. (D.C.N.J. 1958) 159 F.Supp. 917.
For authority that such privileges apply in anti-trust actions, see, for instance, Radiant Burners, Inc. v. American Gas Association (7th Cir. 1963) 320 F.2d 314, cert. denied 375 U.S. 929, 84 S.Ct. 330, 11 L.Ed.2d 262.
. See, Stix Products, Inc. v. United Merchants & Mfgrs., Inc. (D.C.N.Y. 1969) 47 F.R.D. 334, 339:
“The Court agrees with the Special Master that even the identification of a communication between attorney and client in terms of the date and subject might well tend to defeat the very purpose of the privilege.”
Cf., Behrens v. Hironimus (4th Cir. 1948) 170 F.2d 627, 628; N. L. R. B. v. Harvey (4th Cir. 1965) 349 F.2d 900, 905, 16 A.L.R.3d 1035.
. See Natta v. Zletz (7th Cir. 1969) 418 F.2d 633, 636; McCormick, Evidence, p. 123 (1954).
. See Sperry Rand Corp. v. International Business Mach. Corp. (D.C.Del. 1968) 45 F.R.D. 287, 291:
“Instead, the documents now submitted to the Court for an in, camera inspection will be individually examined and tested against the requisites for a meritorious claim of privilege.”
Reference
- Full Case Name
- DEERING MILLIKEN RESEARCH CORPORATION v. TEX-ELASTIC CORPORATION, Defendant DEERING MILLIKEN RESEARCH CORPORATION v. LAWRENCE TEXTURING CORPORATION, Defendant DEERING MILLIKEN RESEARCH CORPORATION v. NATIONAL SPINNING COMPANY, Inc., Defendant DEERING MILLIKEN RESEARCH CORPORATION v. UNITED MERCHANTS AND MANUFACTURERS, INC., Defendant DEERING MILLIKEN RESEARCH CORPORATION v. TEXFI INDUSTRIES, INC., Defendant DEERING MILLIKEN RESEARCH CORPORATION v. The DUPLAN CORPORATION and Burlington Industries, Inc., Defendants DEERING MILLIKEN RESEARCH CORPORATION v. MADISON THROWING COMPANY, Defendant DEERING MILLIKEN RESEARCH CORPORATION v. The SCHWARZENBACH-HUBER COMPANY, Defendant DEERING MILLIKEN RESEARCH CORPORATION v. OLYMPIA MILLS, INC., Defendant DEERING MILLIKEN RESEARCH CORPORATION v. JONATHAN LOGAN, INC., Defendant DEERING MILLIKEN RESEARCH CORPORATION v. LEON-FERENBACH INCORPORATED, Defendant DEERING MILLIKEN RESEARCH CORPORATION v. HEMMERICH INDUSTRIES, Defendant DEERING MILLIKEN RESEARCH CORPORATION v. FRANK IX & SONS VIRGINIA CORPORATION
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- Published