On March 1, 2013, Judge Kinkeade issue and Order (available here) in Innovative Sonic Limited v. Research in Motion. RIM filed a motion to compel “information and materials pertaining to prelitigation testing performed by ASUSTeK engineers on certain RIM products, including the BlackBerry smartphone devices accused of infringing the patents-in-suit.” Judge Kinkeade, in a thorough opinion, denied the motion to compel, finding that the discovery at issue was protected by the work product doctrine:
The Court has little difficulty concluding that materials pertaining to ASUSTeK’s prelitigation infringement testing of the accused RIM products are protected by the work product doctrine. The record establishes that ASUSTeK engineers conducted the testing at the request of Plaintiff’s outside counsel in anticipation of litigation involving the patents-in-suit. ASUSTeK shared the test results only with Plaintiff’s counsel. None of ASUSTeK’s employees are expected to be called as witnesses at trial. Given these circumstances, the pre-litigation test reports, related files, and communications generated by ASUSTeK in this case are precisely the type of documents and tangible things that courts routinely recognize as protected work product material.
Judge Kinkeade cited many, many cases supporting his decision.
Plaintiff is represented by Darin Klemchuk and Kirby Drake, both of Klemchuk Kubasta LLP; and Andrew Mace, Lia Smith, Melissa Keyes, Ronald Lemieux, and Vidya Bhakar, all of Cooley LLP.
RIM is represented by David Pritikin, Edward Poplawski, John Wisse, Li Chen, Paul Tripodi, and Tung Nguyen, all of Sidley Austin LLP; Tala Toufanian, Sarah Columbia, Russell Hayman, Jon Dean, Hasan Rashid, and Eric Hagen, all of McDermott Will & Emery; and Brooks Taylor, Leon Carter, and Sean Hamada, all of Carter Stafford Arnett Hamada Mockler PLLC.
