Discovery Misconduct

Boss v. Yamaha (Fed. Cir. 2009)

Boss sued Yamaha for infringement of its patents covering a snowmobile seat. After an unfavorable claim construction, Boss admitted that it could not prove infringement. On appeal, the Federal Circuit affirmed the construction and the verdict of noninfringement.

The interesting portion of the opinion focused on the alleged discovery abuses by Yamaha’s counsel. Although a moot point (because Boss did not appeal its motion for sanctions that had been denied), the Federal Circuit felt compelled to at least verbally admonish the attorneys “unacceptable” conduct.

[I]t appears from the record presented to us that Yamaha’s discovery practices were less than commendable. For example, on several occasions Yamaha date-stamped documents to be filed with the district court using the court’s time stamp, but did not actually place the document in the court’s drop-box at that time. Rather, Yamaha actually filed the documents, by placing them in the drop-box, several days after the “filed” stamp was placed on the documents. After the district court realized that this was not an isolated incident, but happened several times, it admonished Yamaha, stating that “[t]his deceitful conduct will not be tolerated” and that this inappropriate practice “is particularly egregious when . . . the court is liberal in granting extensions of time.” The court further noted that “counsel in this case have been admonished before about the gamesmanship that has been taking place in this lawsuit.” In addition, regarding Yamaha’s interpretation of communications with the district court, the court further characterized Yamaha’s actions as “unreasonabl[e]” and “disingenuous.” This type of conduct during litigation is unacceptable and reflects a lack of respect for both the opposing party and the court.

Despite the ruling on misconduct, Yamaha walks away without any sanctions.

27 thoughts on “Discovery Misconduct

  1. “So ,for a Patent Attorney, the only things that are subject to the privilege are those communications that occur in preparation for litigation. Even then, the materials must be privileged on their face, with a big notice along the lines, ‘ATTORNEY CLIENT PRIVILEGED COMMUNICATION – PREPARED IN ANTICIPATION OF LITIGATION.’”

    Just Visiting is too kind in calling this a “bit of an oversimplification.” Every bit of it is simply wrong.

  2. “So ,for a Patent Attorney, the only things that are subject to the privilege are those communications that occur in preparation for litigation”

    This is a bit of an oversimplification of a complex issue. There isn’t a single all/circuits universal rule about this stuff, but communications between attorney and client regarding prosecution that aren’t shared with the patent office may be privileged.

    And it isn’t that patent attorneys are treated like patent agents, but rather that whatever privilege applies extends to patent agents and probably to foreign agents as well as to patent attorneys.

  3. Further re 37 CFR 10.24, roughly 95% of all current patent applications are published at 18 months, and thereafter normally nothing filed therein could be considered privileged. Likewise, anything in the files of any issued patent. [It is amazing what some reviewed PTO files contain on their face that went right over the head of some typical young non-lawyer patent examiner.]
    Furthermore, if the misconduct noted is by a co-worker, is just politely pointing it out to them, to give them an opportunity to address it, sufficient [as someone has suggested] if they then refuse to do anything about it? I would think the answer you would get from the PTO Office of Enrollment and Discipline is NO.
    Which is why I always thought that 37 CFR 10.24 and state bar equivalents could more dangerous than some people think, if enforced. Especially for associates and junior partners, who might stand to lose a lot, if it ever gets investigated, for the conduct of someone else that they just happened to know about at the time.
    [The long list of all the things the PTO considers to be violations is not just all those in 37 10.23, but also 37 10.18, etc.] [The inconsistency between panel decisions of the CAFC on what is inequitable conduct is no help either.]

  4. “for a Patent Attorney, the only things that are subject to the privilege are those communications that occur in preparation for litigation. Even then, the materials must be privileged on their face, with a big notice along the lines, “ATTORNEY CLIENT PRIVILEGED COMMUNICATION – PREPARED IN ANTICIPATION OF LITIGATION.”

    And of course it goes without saying that these discovery rules are never ever broken during litigation. Moreover, no communictions between attorneys/agents and their clients, whether electronic or paper, are ever accidentally lost or erased. You might as well take all those communications and upload them to the internet for public access. Why delay the inevitable?

  5. Glass Houses said, “LB/Jay: you’re right, that hyperbolic statement is over the top for law in general and definitely for public record documents like the case DC has cited. But for prosecution in front of the PTO for which 37 CFR 10.24 applies, most everything is privileged and not public.”

    Last I heard, Courts had repeatedly, unanimously, and enthusiastically held that Patent Attorneys practicing before the USPTO are acting in their capacities as Patent Agents, and that client communications in preparation for and in relation to that activity are NOT protected by Attorney-Client privilege. So ,for a Patent Attorney, the only things that are subject to the privilege are those communications that occur in preparation for litigation. Even then, the materials must be privileged on their face, with a big notice along the lines, “ATTORNEY CLIENT PRIVILEGED COMMUNICATION – PREPARED IN ANTICIPATION OF LITIGATION.” As a patent attorney practicing before the USPTO, I presume that very few, if any, materials that I prepare, actions I perform, and communications that I have with clients are subject to privilege.

  6. “To the extent that a judge is an attorney, I believe that he or she still has an ethical obligation, as an attorney, to refer an appropriate matter for discipline.”

    That may be the case, but it’s distinct from a judge disciplining an attorney within a judgment or opinion through sanction or censure. Even in a case where the judge refers an attorney to the bar I don’t think it would be appropriate for him or her to prejudge the outcome as the issue isn’t properly before the court.

  7. “Generally, though, it’s not the court’s job to discipline the attorneys. That’s the role of the bar association.”

    To the extent that a judge is an attorney, I believe that he or she still has an ethical obligation, as an attorney, to refer an appropriate matter for discipline. And I have a non-specific recollection of reading opinions where the judge indicated that they were referring a matter for discipline, so I think that some judges in some circumstances feel it called for.

    It’s not like there are ethical detectives sitting around the bar associations actively looking for matters that need their attention. Unless someone refers a matter in to them, they won’t know to open a case and start an investigation.

  8. “”"”"This type of conduct during litigation is unacceptable and reflects a lack of respect for both the opposing party and the court.”"”"”

    It’s unacceptable?
    It was accepted.

    This is like the 10 year old parents – “Now Bobby, you are not allowed to write on the walls.”
    Bobby writes on the walls.
    “Bobby, this is unacceptable. Don’t let it happen again.”

    Unacceptable – “that which is not accepted.”

    Perhaps the court could use one of these adjectives instead:

    Lamentable.
    Unprofessional.
    Unethical.
    Deceitful.

    But surely it’s not unacceptable if, in fact, it is accepted.

  9. “And what tragic fate befell those attorneys?”

    It’s hard to say what effect it might’ve had on their careers, but I can say that the California Bar did not formally discipline them. This is probably because CellPro did not want to bring a complaint because the record strongly suggested that CellPro knowingly requested a bogus opinion letter, so its own hands were pretty dirty.

    Again, though, it’s not really within the court’s power or purview to discipline attorneys in a case like this. It would be different if it were a case of the client suing the attorney for malpractice, and the Federal Circuit does not shirk from mentioning particular attorneys in those cases.

    See, e.g., the cases discussed in this Patently-O post from 2007:

    link to patentlyo.com

  10. “But for prosecution in front of the PTO for which 37 CFR 10.24 applies, most everything is privileged and not public.”

    I’m not aware that privilege takes on special meaning for patent prosecution. Client secrets and privilege are not the same thing. Likewise, “not public” is not the same as privileged.

  11. “the Federal Circuit called out, by name, an in-house counsel who sought a bogus opinion letter and the attorney who authored the letter. The case also identified the firm at which the in-house counsel had been partner”

    And what tragic fate befell those attorneys?

  12. “the attorneys charged with misconduct are never mentioned by name or firm.”

    That’s not strictly true. In the Johns Hopkins v. CellPro case, the Federal Circuit called out, by name, an in-house counsel who sought a bogus opinion letter and the attorney who authored the letter. The case also identified the firm at which the in-house counsel had been partner.

    Generally, though, it’s not the court’s job to discipline the attorneys. That’s the role of the bar association.

  13. I have commented on here before in similar cases that the attorneys charged with misconduct are never mentioned by name or firm.

    I think that is wrong.

  14. It was improper for the Federal Circuit to comment on the alleged misconduct because that issue was not properly before it.

  15. While a bit odd (and probably only the tip of the iceberg), Yamaha’s “practices” here are nothing compared to the shenanigans certain firms routinely engage in during litigation.

    Have you heard the phrase “scorched earth” before?

  16. “Once you’ve brought material to the prosecuting attorneys attention, you’re done, legal obligations are finished. And since that person is usually your boss, don’t you want to be finished?”

    I’m sorry, but I’m not following your hypo here. You seem to be thinking of the specific case of disclosing prior art to the prosecuting attorney with the expectation that it should be disclosed in an IDS. (If that is not what you are referring to, my apologies). And I admit I’m not a mind reader as to what rationale might have existed in that attorney’s mind for not submitting such a reference, and so, would agree that such circumstances would not invoke rule 10.24.

    But another hypo would the case where a patent is found unenforceable due to inequitable conduct. It would seem to me that such circunstances should be reported to the PTO under rule 10.24.

  17. LB/Jay: you’re right, that hyperbolic statement is over the top for law in general and definitely for public record documents like the case DC has cited. But for prosecution in front of the PTO for which 37 CFR 10.24 applies, most everything is privileged and not public.

    Once you’ve brought material to the prosecuting attorneys attention, you’re done, legal obligations are finished. And since that person is usually your boss, don’t you want to be finished?

  18. Also, with all due respect, the suggestion implicit in the phrase “Glass Houses” would only be true as to those of us who perform actions morally equivalent to lying to the court about the date we are filing something. I like to think most of us stay well away from that line.

  19. “Everything we see, smell and touch is privileged.”

    Even recognizing that this is a hyperbolic statement, it’s not even close to being true.

  20. Paul, the 37 CFR 10.24 version has no teeth. “A practitioner possessing unprivileged knowledge…”

    Everything we see, smell and touch is privileged.

    Would that it was otherwise sometimes so could more easily cull the herd.

  21. Merely mentioning attorney misconduct in a decision is useless without ever identifying the attorneys involved.
    [If the trial [not just the appellate] attorneys are named in a decision, then at least some future potential client careful enough to check case reports first before retaining them might read about it, which would be at least some indirect sanctioning effect.]
    BTW, the PTO has its own mandatory misconduct reporting requrement [AKA "squeal rule"] for all registrants, comparable to the above state bar equivalent. It is 37 CFR 10.24. Most patent attorneys and agents seem to be unaware of it.

  22. I don’t understand why judges or lawyers complain on the record about ethical misconduct without referring the circumstances to the state Board of Bar Overseers. In Massachusetts, at least,Rule 8.3 would require such a referral:

    RULE 8.3 REPORTING PROFESSIONAL MISCONDUCT
    (a) A lawyer having knowledge that another lawyer has committed a violation of the Rules of Professional Conduct that raises a substantial question as to that lawyer’s honesty, trustworthiness or fitness as a lawyer in other respects, shall inform the Bar Counsel’s office of the Board of Bar Overseers.

    When conduct crosses the line, there is an ethical obligation to report it. Moreover, a little more activity in that regard would go a long way towards curtailing such activities.

  23. “. . . Boss admitted that it could not prove infringement. . . . Federal Circuit affirmed”

    “Yamaha walks away without a victory”

    Dennis, did you mean “Yamaha walks away WITH a victory”?

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