Discovery and Claim Charts

i nsider
The Intellectual Property
Summer 2012
A Publication of Volpe and Koenig, P.C.
Inside this
Issue
Discovery and Claim Charts
Discovery and Claim
Introduction
Charts.......................................1
Claim charts are important
tools for being successful
in negotiating licensing
agreements with patent
infringers and for prevailing
in patent infringement litigation.
It is important to establish, however, to
what extent these documents are privileged and
discoverable. In a license negotiation for example,
it is important to present a strong position for negotiation,
but also important not to put confidential information at risk unnecessarily.
This article summarizes whether and to what extent claim charts are privileged.
Declaratory Judgment
Actions in IP................................4
Firm News….................................6
By John Donch and Jonathan Lombardo
Attorney-Client Privilege and Claim Charts
In the United States, the attorney-client privilege is the oldest of the privileges
for confidential communications recognized by the common law.1 Its purpose
is to encourage full communication between attorneys and their clients, and it
recognizes that sound legal advice serves the public interest and depends upon the
lawyer being fully informed by the client.2 Such information is not discoverable.3
Although privilege issues are decided on a case-by-case basis, the general rule
is that confidential communication made for the purpose of performing legal
services to the client is privileged.4
See Upjohn Co. v. United States, 449 U.S. 383, 389 (1981) (describing scope of attorney-client privilege).
See id (discussing purpose of attorney-client privilege).
3
See Fed. R. Civ. P. 26(b)(1). Rule 26(b)(1) (stating non-privileged, relevant information is discoverable).
4
See 1-18 Weinstein’s Evidence Manual §18.03[3][a] (Matthew Bender & Co. 2011) (stating general rule).
1
2
continued on page 2
continued from cover
The attorney-client privilege, however, does not protect the
disclosure of the underlying facts included in communication.5
As a result, the privilege does not protect disclosure about
what facts a client knows. This implies that the underlying
factual basis for a patent infringement suit is not protected. For
example, the factual basis of how a claim is allegedly infringed
would not be protected.
Waiver of the privilege can occur in several situations. Voluntary
disclosure or consent to the disclosure of privileged information
to a third party that is not covered by the privilege constitutes
waiver.6 Answering questions about the underlying facts of a
communication, however, does not qualify as a waiver because
as stated above the privilege does not protect the underlying
facts.7 For example, the disclosure of a claim chart containing
privileged material to a third party could waive the attorneyclient privilege, but answering questions based on the factual
information in a claim chart would not.
In patent cases, both patent owners and alleged infringers are
able to obtain discovery of detailed information about the other
party’s contentions of either infringement or non-infringement.8
Specifically, courts have held that claim charts specifying how
each element of each claim of a patent-in-suit is infringed are not
protected by the attorney-client privilege, nor are they attorney
work product because such information must be disclosed
in order to prove the case of the party alleging infringement.9
Similarly, patentees are entitled to discovery of the invalidity
contentions that may be made by an accused infringer such as
the effect of prior art and other facts supporting a defense of
non-infringement.10
Some information, however, in a claim chart can be privileged.
The court in S.S. White Burs, Inc. v. Neo-Flo, Inc. stated that while
the claim charts, the claim constructions, and the infringement
analyses had to be disclosed by the plaintiff in the case, only
the non-privileged material within those documents was
discoverable.11 This holding implies that any legal advice
included within the claim charts may be kept confidential.12
The district court in Funai Elec. Co. v. Orion Elec. Co. denied a
motion to compel the plaintiff’s interpretation of each claim or
element of the patent-in-suit after the plaintiff objected to the
request as seeking privileged attorney work product.13
More recently, the district court in Monsanto Co. v. E.I. du Pont
de Nemours & Co. denied a motion to compel the plaintiff in
an infringement suit to provide information that specifically
addresses how each element in the asserted claims is found in
the defendants’ products.14 The court held that the plaintiff’s
disclosure of claim charts setting forth the allegedly infringed
claims, stating whether the alleged infringement was literal
or under the doctrine of equivalents, identifying the accused
product, and discussing the plaintiff’s infringement allegations
was sufficient.15 The more precise technical information sought
by the defendant was held to be privileged or constitute attorney
work product and would later be disclosed in the plaintiff’s
expert reports.16
See Upjohn Co., 449 U.S. at 395 (1981) (concluding that underlying facts are not privileged).
See 1-18 Weinstein’s Evidence Manual §18.08 (Matthew Bender & Co. 2011) (discussing waiver
methods).
7
See id. (describing limitations on waiver).
8
See 6-26 Moore’s Federal Practice - Civil § 26.46 [12][a] (Matthew Bender & Co. 2011) (summarizing scope of discovery in patent infringement cases).
9
See S.S. White Burs, Inc. v. Neo-Flo, Inc., 56 Fed. R. Serv. 3d (Callaghan) 965, 2003 U.S. Dist. LEXIS
7718 at *7 (E.D. Pa. 2003) (citing New L&N Sales and Marketing, Inc. v. Big M, Inc, 2001 U.S. Dist.
LEXIS 1150, 2001 WL 111613 at *8 (E.D. Pa. Feb. 1, 2001)) (granting motion to compel requiring claim
charts, claim constructions, and infringement analyses); see also Carver v. Velodyne Acoustics, Inc.,
202 F.R.D. 273, 274 (“…objections on the grounds of attorney-client and work-product privilege are
meritless. The claim charts are relevant and discoverable”); see also Diagnostic Sys. Corp. v. Symantec
Corp., Case No. SACV 06-1211 DOC, 2009 U.S. Dist. LEXIS 53916 at *19-23 (C.D. Cal. 2009) (granting
motion to compel in case involving company, whose sole business is in enforcing its patents, and
requiring disclosure by that company of its “Preliminary Infringement Contentions” describing and
explaining its infringement theories).
10
See 6-26 Moore’s Federal Practice - Civil § 26.46 [12][b] (Matthew Bender & Co. 2011) (discussing
discoverability of invalidity contentions). See also Scovill Mfg. Co. v. Sunbeam Corp., 61 F.R.D. 598,
602 (requiring alleged infringer “to list the descriptions and drawings that it contends are indefinite
and inadequate, to list the claims that it contends are indistinct and inadequate, and to refer to the
documentary support, if any, for such contentions”) (D. Del. 1973) (emphasis added); see also Mead
Corp. v. Riverwood Natural Resources Corp., 145 F.R.D. 512, 518 (D. Minn 1992) (“In this action for
patent infringement, plaintiff is entitled to discover the factual basis for assertion of defenses and the
Counterclaim”).
11
S.S. White Burs, Inc. v. Neo-Flo, Inc., 56 Fed. R. Serv. 3d (Callaghan) 965, 2003 U.S. Dist. LEXIS 7718
at *10-11 (E.D. Pa. 2003) (emphasis added) (allowing privileged material in claim charts to remain
protected).
5
6
See e.g. Funai Elec. Co. v. Orion Elec. Co., 2002 U.S. Dist. LEXIS 14466 at *42-43 (S.D.N.Y. 2002)
(denying motion to compel one party to provide “interpretation of each claim or element of the Patentin-Suit” because party already provided their “specific bases for their argument that the claims of the
Patents-in-Suit are not infringed” and their explanations of contentions that claims are invalid).
13
See id. (protecting plaintiff’s attorney work product).
14
Monsanto Co. v. E.I. du Pont de Nemours & Co., 2011 U.S. Dist. LEXIS 56900 at *11-12 (E.D. Mo. 2011)
(denying motion to compel production of plaintiff’s precise technical information).
15
See id. (describing sufficiency of plaintiff’s disclosures).
16
See id. (discussing rationale behind denial of motion).
12
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2
Summer 2012 Insider Volpe and Koenig, P.C.
continued from page 2
While claims charts are discoverable, it is clear from the case
law that privileged information within the claim charts can still
be protected by the attorney-client privilege.
License Negotiations Not Privileged
If claim charts are used in settlement negotiations with the
objective of obtaining a licensing agreement, there is no special
privilege that protects those documents. The Federal Circuit has
recently held that there is no settlement negotiation privilege
related to reasonable royalties and damage calculations in patent
cases. It follows that claim charts used in negotiations that lead
to licensing agreements may be discoverable.17
In In Re MSTG, Inc., the Federal Circuit for the first time considered
whether communications related to reasonable royalties and
damages are protected from discovery based on a settlement
negotiation privilege.18 MSTG, Inc. had sued AT&T Mobility, LLC
and other cell phone providers claiming infringement of their
patents covering 3G mobile telecommunications technologies.19
MSTG eventually settled with all of the defendants except
for AT&T.20 The settlement agreements granted most of the
defendants licenses under the patents-in-suit.21 AT&T then sought
discovery into the negotiation of these settlement agreements
under the theory that they could be relevant to the calculation
of a reasonable royalty if AT&T were found to be infringing the
patents.22 MSTG objected to the request, and the magistrate
denied AT&T’s motion to compel.23 However, AT&T’s motion to
reconsider was granted by the magistrate judge following MSTG’s
expert report on reasonable royalties, which partially relied on a
deposition of an MSTG executive indicating that the settlement
agreements reflected litigation-related compromises.24 MSTG
was then required to produce the negotiation documents leading
to the license agreements.25
In denying MSTG’s writ of mandamus to vacate the district
court’s order and adopt a new settlement negotiation privilege,
the Federal Circuit considered the factors relied upon by the
Supreme Court when defining new privileges.26 One of these
factors weighing against the definition of a new privilege was the
fact that Federal Rule of Evidence 408 permits the admissibility
of settlement negotiations under some circumstances.27
The Federal Circuit declined to decide what limits can be placed
on the discovery of settlement negotiation documents because
that issue was not presented.28 The circuit court did note,
however, that other courts have imposed heightened standards
for discovery in order to protect confidential settlement
discussions.29
As a result,
while settlement
negotiations relating
to reasonable royalties
and damage
calculations in patent
cases are not
privileged, the court
has discretion in
deciding whether to
allow discovery of those
negotiations. Claims
charts used in settlement
negotiations may be protected from discovery by a court in order
to protect confidentiality. Obtaining non-disclosure agreements
before sharing claim charts during negotiation is one method
to manifest an intention to maintain the confidentiality of the
negotiation.
Conclusion
Because claim charts, infringement analyses, and theories of
invalidity are relevant to the claims and defenses of a patent
infringement case, such documentation may be discoverable.
Furthermore, there is no privilege for settlement negotiations
in patent cases, and therefore claim charts exchanged during
negotiations may be discoverable. The attorney-client privilege
protects only the legal advice within claim charts, not the
element-by-element infringement contentions made by a party.
The attorney-client privilege and attorney work product can also
be asserted to protect information related to claim interpretation
and precise technical information produced by experts. 
17
See In Re MSTG, Inc., 675 F.3d 1337 (Fed. Cir. 2012) (holding that reasonable royalties and damage
calculations information from settlement negotiations not privileged).
18
See id at 1339 (concluding that there is no privilege).
19
See id (describing background of case).
20
See id (discussing settlements of other defendants).
21
See id (summarizing content of settlements with other defendants).
22
See id at 1339-40 (outlining AT&T’s request).
23
See id at 1340 (providing overview of initial denial of AT&T’s request).
24
See id (discussing MSTG’s expert report and resulting reconsideration of AT&T’s request).
25
See id (describing order for MSTG to produce settlement negotiation information).
26
See id at 1343-46 (explaining analysis of factors relied upon by Supreme Court to define new
privilege).
27
See id at 1344 (summarizing Federal Rule of Evidence 408).
28
See id at 1347 (describing limitation of holding).
29
See id (stating that it is still in court’s discretion to decide discoverability of settlement negotiation
information).
Volpe and Koenig, P.C. 215-568-6400 vklaw.com
3
Declaratory Judgment
Actions in IP
By John Donch and Amber Stiles
The Typical Scenario
It is an all-too-common scenario faced by companies today. The company, while bustling along, making new, innovative products, receives some sort of indication or notice
that it may be infringing on the intellectual property rights
of another. The notice may be a letter, or simply an implied
threat, but the message is clear – an IP holder thinks infringement is occurring. Faced with the prospect of infringement litigation, the company finds itself between a rock and
a hard place: either cease the allegedly infringing activity
and lose any revenue derived from that activity, or continue
to engage in the alleged infringing activity and risk damages
and willful infringement.
What Can an Alleged Infringer Do?
There is a procedural device intended to provide alleged infringers with a means of coping with the scenario described
above - a declaratory judgment (DJ) action. A DJ action
allows adversarial parties to “clear the air” surrounding
the intellectual property (IP) rights in question.
As it pertains to IP law, an alleged infringer
can bring a DJ action to determine whether
the asserted patent or trademark in
question is unenforceable or invalid.
The DJ action may also seek an order
that the alleged infringer’s conduct,
product, etc. does not infringe the
patent or trademark
(i.e., non-infringement).
When Can a DJ Action
Be Brought?
A DJ action may be brought
as a preemptive measure by
continued on page 5
4
Summer 2012 Insider Volpe and Koenig, P.C.
continued from page 4
the party threatened by a patent infringement suit, or, if the
infringement action is already underway, the alleged infringer may assert the DJ action as a counterclaim against
the patent holder so long as the DJ plaintiff can show an
underlying case or controversy exists between the parties relating to the patent in question. The actual case or
controversy requirement gives the federal court jurisdiction over the DJ action pursuant to Article III of the Constitution. However, a DJ action is not an absolute right. The
court may exercise its discretion as to whether it will hear
the DJ action.
apprehension of suit” is no longer a requirement for determining whether an actual case or controversy exists.
The Shaping of the DJ Jurisdiction Test
The Circuit courts are split on this issue. For example, under Federal Circuit precedent set in Super Sack Mfg. Corp. v.
Chase Packaging Corp., when a defendant counterclaims for
a DJ action on patent invalidity, a patent holder may promise not to sue, and divest the court of jurisdiction over the
DJ action. The Second Circuit held the same, but for trademarks, in Nike, Inc. v. Already, LLC dba Yums. By contrast, the
Ninth Circuit held that a promise not to sue does not divest
the court of its jurisdiction over a DJ action in Bancroft &
Masters, Inc. v. Augusta National Inc.
The test for whether there is jurisdiction over the DJ action
is not a bright-line. Many courts have weighed in on the
test; each contributing and shaping it into its current form.
For many years, the test for determining if a case or controversy existed was one established by the Federal Circuit in
Arrowhead Industrial Water, Inc. v. Ecolochem, Inc. Accordingly, a case or controversy only existed when a party has
1.) an objectively reasonable apprehension of being sued
for patent infringement, and 2.) there was infringing activity or concrete steps towards infringing activity with the
intent to infringe by the DJ plaintiff.
However, in 2007, the Supreme Court shifted the emphasis
of the DJ action test from the “reasonable apprehension of
suit” to focus on a “totality of the circumstances” analysis in MedImmune, Inc. v. Genentech, Inc. In MedImmune,
a licensee sought a DJ action for patent invalidity but did
not cease paying royalties to the patent holder because
the licensee did not want to terminate the license. Eighty
percent of the licensee’s revenue was derived from the
licensing agreement and a failure to pay the agreed upon
royalty would result in an injunction against the licensee,
effectively destroying its business.
The Supreme Court held that Article III jurisdiction does not
require a DJ plaintiff to risk its livelihood in order to qualify
as a justiciable case or controversy; a DJ plaintiff does not
have to materially breach its licensing agreement to seek
a DJ action. The totality of the circumstances in MedImmune warranted Article III jurisdiction over the DJ and the
general consensus after MedImmune is that a “reasonable
The Circuit Split over Divestiture of DJ
Jurisdiction
The various courts hold differing positions on whether the
court can be divested of its Article III jurisdiction in certain
situations. For instance, when an IP right holder promises
not to sue an alleged infringer, it renders the underlying infringement case moot, but does that divest the court of its
Article III jurisdiction over a DJ action in the case?
Reconciling the Circuit Split
The Supreme Court will soon weigh in on the matter. On
June 25, 2012, the Court granted certiorari in Already, LLC
dba Yums v. Nike, Inc., an appeal of the Nike, Inc. Second Circuit case. In that case, Nike alleged that Yums was infringing one of its trademarks and Yums counterclaimed for
cancellation of the mark. Nike then provided Yums with a
covenant not to sue, limited to Yums current activity related to the Nike mark, as well as colorable imitations. Yums
seeks to maintain its DJ action, despite the covenant not
to sue.
In granting certiorari, the Court will address whether a federal district court is divested of Article III jurisdiction over
a party’s challenge to the validity of a federally registered
trademark if the registrant promises not to assert its mark
against the party’s then-existing commercial activities. The
implication of a decision in favor of the petitioner would
effectively make it more difficult for IP holders to withdraw
their disputes by promising not to sue. 
Volpe and Koenig, P.C. 215-568-6400 vklaw.com
5
firm news
Volpe and Koenig Takes Part in NASABA’s Ninth Annual Convention
Volpe and Koenig was proud to participate in the Ninth Annual North American South Asian Bar Association (NASABA)
Convention, which took place in Philadelphia, PA on June 2830. Associate Neil Maskeri served as Conference Co-Chair
and Associate Aneesh Mehta was Sponsorship Co-Chair for
the event. Turhan Sarwar, also an Associate with the firm, attended the event along with Maskeri and Mehta. In addition,
Volpe and Koenig sponsored the convention and hosted the association’s Board Meeting prior to the start of the event.
Said Maskeri, “NASABA offers unique networking and career
development opportunities. The relationships that I have made
through NASABA are extremely strong.
Having the opportunity to be a part of NASABA’s leadership
has been a great experience for me. It’s hard to believe that
I attended my first NASABA Convention as an attendee just
two years ago and that this year I was one of the Convention
Co-Chairs helping organize the most successful convention in
NASABA’s nine-year history.
Pictured (l-r) Ashwath Trasi, Neil Maskeri, Emilie Ninan,
Anne Gwal, and (in the background) Honorable Amul Thapar
Volpe and Koenig understands the importance of diversity and
supporting the minority community. The firm also understands
the importance of supporting their associates and their development. They understood my commitment to NASABA and
supported my efforts 100%.”
Former Pennsylvania Governor, Ed Rendell
The theme of this year’s convention was “It All Starts Here!”
and attendees enjoyed legal insight from a panel of attorneys,
legal scholars, and respected members of the industry. Events
included engaging panels with topics on intellectual property
law, healthcare law, immigration law, employment law, cross
border transactions, and sports law. Speakers included three
former U.S. Supreme Court clerks, three federal judges, including Honorable Theodore A. McKee, Chief Circuit Judge, United
States Court of Appeals for the Third Circuit. Maskeri gave the
convention’s closing remarks at the National Constitution Center on June 30th. 
Pictured (l-r) Jolsna John, Nadeem Bezar, and Emilie Ninan
6
Summer 2012 Insider Volpe and Koenig, P.C.
Volpe and Koenig Welcomes Associate Gregory Grace
Gregory Grace has joined the Firm as an Associate in the Firm’s Philadelphia office. Greg
concentrates his practice in drafting and prosecuting patent applications both domestically and internationally as well as client counseling, licensing, litigation, and opinions regarding invalidity, non-infringement, and freedom to operate. Greg’s prosecution experience
includes computer software/hardware, business methods, financial business methods,
and electro-mechanical. He was formerly with an AM LAW 100 general practice firm and
prior to that with a large intellectual property boutique firm.
Greg is admitted to practice before the US Patent and Trademark Office and is a member
of the DC and Pennsylvania Bars. He received his J.D. from The George Washington University Law School, where he was awarded the Chris Bartok prize for excellence in patent
law. Greg also received a B.S. degree in Computer Science from George Mason University
and a Master’s Degree in Computer Science from Georgia Institute of Technology. Prior to
becoming an attorney, Greg was a software developer for various companies and a product manager for Siemens AG in Munich Germany.
Eleven Attorneys at Volpe and Koenig Named Among Top in
Pennsylvania by Super Lawyers®
Pictured (l-r) Ryan W.
O’Donnell, Anthony S.
Volpe, Douglas J. Bucklin, PhD, John C. Donch,
Jr., John J. O’Malley,
Randolph J. Huis, Neil C.
Maskeri, Gerald B. Halt,
Jr., Robert D. Leonard,
Aneesh A. Mehta, (not
pictured C. Frederick
Koenig, III)
Volpe and Koenig is proud to announce that eleven of its attorneys have been selected for Pennsylvania Super Lawyers® and
Rising Stars® for 2012. The Super Lawyers® list includes Shareholders Gerald B. Halt, Jr., Randolph J. Huis, C. Frederick Koenig,
III, John J. O’Malley and Anthony S. Volpe. The Rising Stars® list
includes Shareholders John C. Donch, Jr., Robert D. Leonard, and
Ryan W. O’Donnell, as well as Associates Douglas J. Bucklin,
PhD, Neil C. Maskeri, and Aneesh A. Mehta.
Selections for this list are made by the research team at Super
Lawyers, which is a service of the Thomson Reuters Legal Division based in Eagan, Minnesota.
Volpe and Koenig, P.C. 215-568-6400 vklaw.com
7
f i rm news cont i n u e d
Founding Shareholder Named Among 2012’s
Top 100 Attorneys in Pennsylvania and Philadelphia by Super Lawyers®
Founding Shareholder Anthony S. Volpe has earned the distinction of being included in the
“Top 100 Pennsylvania Super Lawyers®” as well as the “Top 100 Philadelphia Super Lawyers®” for 2012. Volpe has been named to the Pennsylvania Super Lawyers list every year
since 2005.
Volpe and Koenig Officially Kicks Off Its
2012 IPromise™ Charitable Giving Fund
The Firm began the summer by kicking off its 6th Annual 2012 IPromise™ Charitable
Giving Fund on June 4th. Applications were submitted through July 31st to non-profits
that support health and human services or arts and culture. Two organizations in each
category will be invited to present to the committee this fall. IPromise supports Greater
Philadelphia and Princeton, NJ area non-profit organizations by helping them continue
their good work in the region by awarding $20,000
grants to each of two qualified organizations.
IPromise has presented more than $180,000
to date to local non-profit organizations.
The Intellectual Property Insider is a quarterly publication from Volpe and Koenig,
P.C. For a complimentary subscription, please email your contact information
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attorney-client relationship. © 2012 Volpe and Koenig, P.C.
8
Summer 2012 Insider Volpe and Koenig, P.C.
News Credits
Editor . . . . . . . . . . . . . . . . . . . John Donch
Contributing Authors . . . . . John Donch
Jonathan Lombardo
Amber Stiles
Contributor . . . . . . . . . . . . . . Neil Maskeri