Respondents Entitled to Discovery From Complainants' Litigation Counsel Who Previously Served As Reexamination Counsel


In the Matter of Certain Marine Sonar Imaging Sys., Prods. Containing the Same, and Components Thereof, Inv. No. 337-TA-926, Order No. 7 (Dec. 16, 2014) (J. Essex)

ALJ Essex denied Complainants Johnson Outdoors, Inc.'s and Johnson Outdoors Marine Electronics, Inc.'s motion to quash subpoenas served on the law firm of Fitzpatrick Cella Harper & Scinto, and three Fitzpatrick attorneys (collectively "Fitzpatrick Counsel"), who represent Complainants in the 926 Investigation.

Respondents Garmin International, Inc., Garmin North America, Inc., Garmin USA, Inc. and Garmin Corporation subpoenaed Fitzpatrick Counsel who also represented Complainants in a prior litigation and reexamination proceeding involving the same patents asserted in the 926 Investigation. Complainants asserted each had information and/or documents from the reexamination proceeding that were relevant to Garmin's claim of inequitable conduct.

Complainants argued that the information sought—Fitzpatrick Counsel's knowledge and awareness of prior art, analyses and decisions related to a third party, and dealings with the third party itself—had minimal relevance to the dispute, was protected by attorney-client privilege/work-product doctrine, and was accessible via less intrusive means. The ALJ disagreed, finding "no real dispute as to the relevance of the information sought by Garmin." Order at 5. And, while at least some of the contents might be privileged, both Complainants' and Respondents' counsel were experienced attorneys "fully capable of proceeding with [such] discovery without compromising any privilege." Id. at 7. Moreover, Complainants' arguments that the information sought was available via third parties was unpersuasive as there existed information "uniquely in the hands of [Complainants'] reexamination counsel that [was] not available from other sources." Id.  Finally, the ALJ noted that Complainants could not shield potentially harmful discovery "behind the cloak of privilege" because "the risk of having one's prosecution/reexamination counsel and litigation counsel be one in the same is a risk that Johnson Outdoors and Fitzpatrick Counsel willingly accepted in filing the instant investigation." Id. at 8-9.

Authors: Cherylyn Esoy Mizzo, Katherine Reardon