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Dyson, Inc. v. Sharkninja Operating LLC

United States District Court, N.D. Illinois, Eastern Division

September 28, 2016



          Susan E. Cox United States Magistrate Judge

         For the reasons more fully discussed below, the Motion to Compel [244] filed by Defendants SharkNinja Operating LLC and SharkNinja Sales Company (collectively, “Shark”) is granted in part and denied in part.

         I. Background

         For the purposes of the instant motion, the Court assumes familiarity with the background facts in this suit, which were covered in Judge Darrah's Memorandum Opinion and Order denying Defendants' Motion for Summary Judgment of Noninfringement entered on September 2, 2015. (Dkt. 125.) Shark filed the instant motion to compel, seeking to compel responses to Shark's Interrogatories Nos. 10 and 17.

         During the pendency of this suit, Plaintiffs Dyson, Inc. and Dyson Technology Limited (collectively, “Dyson”) “filed paperwork to correct the inventorship” of two of the design patents at issue in this suit (the “'010 and ‘823 patents”). (Dkt. 241 at 3.) Dyson had previously alleged that a foreign priority date of August 27, 2010 applied to the ‘010 and ‘823 patents, and listed the inventors as Timothy Stickney, James Dyson, and Peter Gammack. (Dkt. 241 at 2-3.) On March 31, 2016, in response to Shark's interrogatories, and more than a year after Dyson's Final Infringement Contentions were filed, Dyson claimed that the ‘010 and ‘823 patents had a priority date of March 6, 2006. (Dkt. 244 at 4.) Shark contends these changes are intended to avoid prior art that would render Dyson's patents invalid. (Dkt. 244 at 2.) Dyson asserts that these changes resulted from information gleaned from notebooks and sketches reviewed during the course of discovery. (Dkt. 241 at 7.)

         On April 25, 2016, Dyson filed two Requests to Correct Inventorship Under 37 C.F.R. § 1.324 with the United States Patent and Trademark Office (“PTO”) that sought to remove Timothy Stickney as a named inventor on the ‘010 and ‘823 patents. (Dkt. 244, Exs. 6-7.) Both of these requests included statements from Mr. Stickney, Mr. Gammack, and Mr. Dyson, which read: “I agree to the change of inventorship to delete [Mr. Stickney] as an inventor.” (Id.) At his deposition, Mr. Dyson testified that he was asked to sign these statements by his attorneys, and that the reason for the change in inventorship was “probably” explained to him by his attorneys before he signed the statement. (Dkt. 244, Ex. 8 at 90:10-91:5.)

         Needless to say, Shark feels that it is entitled to additional discovery on inventorship, priority dates, and Dyson's reasoning for changing them years into the instant suit. At issue in the instant motion are Shark's Interrogatory 10 and Interrogatory 17. Interrogatory 10 seeks to have Dyson “identify and describe each Named Inventor's and any other person's contribution to the claimed design . . . including . . . the date(s), location(s), the relevant portion(s) of the claimed design involved, an identification of all witnesses who can corroborate such contribution, and an identification of all documents corroborating such contribution.” (Dkt. 244, Ex. 4.) In response, Dyson provided a table with each named inventor, their contribution, and the location. (Id.) The location for all ‘010 and ‘823 patents is Malmesbury, Great Britain. (Id.) As for the contribution, each entry states “[c]ollective contribution to overall design.” (Id.)

         Interrogatory 17 appears to seek information regarding the decision to remove Timothy Stickney as a named inventor on the ‘010 and ‘823 patents. It demands certain information regarding “each and every determination by Dyson of who does or does not qualify as a proper inventor” of the patents in the suit, including “(a) the specific date of each such determination; (b) the complete factual and legal basis for each such determination; (c) each individual involved in making each such determination . . .; (d) all documents considered in making or otherwise relating to each such determination; and (e) all communications relating to each such determination.” (Dkt. 244, Ex. 5.) After objecting to the Interrogatory on the basis of attorney-client privilege and the work product doctrine, Dyson responded that “around February and March 2016, Dyson's investigation during discovery in this case revealed that the invention claimed in the ‘010 and ‘823 patents was conceived and reduced to practice before Tim Stickney was involved and that he was incorrectly included as an inventor.” (Id.) In other words, the new priority date alleged by Dyson would make it impossible for Mr. Stickney to have been involved with the conception of the inventions embodied in the ‘010 and ‘823 patents. Therefore, the change in inventorship is directly related to Dyson's relatively new claim that priority date is March 6, 2006, not August 27, 2010. Shark has moved for an order compelling Dyson to provide more complete responses to Interrogatory Nos. 10 and 17.

         II. Discussion

         A. Interrogatory 10

         Shark moves for this Court to enter an order compelling Dyson to “provide a thorough and detailed response to Interrogatory No. 10” because “Dyson's five-word response is facially deficient.” (Dkt 244 at 9.) The information sought by Shark is clearly relevant, and Dyson does not argue otherwise. Section 102(f) of the patent code “mandates that a patent accurately list the correct inventors of a claimed invention, ” and misjoinder or nonjoinder of inventors will render a patent invalid. Pannua v. Iolab Corp., 155 F.3d 1344, 1349 (7th Cir. 1998). “[A] joint invention is simply the product of a collaboration between two or more persons working together to solve the problem addressed” by their invention, and Section 116 of the patent code “sets no explicit limit on the quantum of quality of inventive contribution required for a person to qualify as a joint inventor.” Fina Oil and Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). “However, a joint inventor must contribute in some significant manner to the conception of the invention, ” and each joint inventor “must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” Id. Thus, if Shark can prove that James Dyson or Petter Gamack did not meet the necessary quantum of contribution to be named a co-inventor on the ‘010 or ‘823 patents (i.e., misjoinder), or that Tim Stickney or some other Dyson employee was not named as a co-inventor despite having contributed in a way that would qualify them to be so named (i.e., nonjoinder), the patents will be rendered invalid.

         According to Shark, it “is entitled to know the factual basis for Dyson's contention that Mssrs. Dyson and Gammack, and only those two, jointly conceived the claimed designs, ” and “it would be fundamentally unfair to permit Dyson to dramatically change its invention story without being required to provide the facts that allegedly support its new theories.” (Dkt. 244 at 9.) However, Shark's argument presupposes that the only manner of uncovering the “facts” or the “factual basis” underlying Dyson's decisions and theories is through interrogatory responses. In its brief in response to the instant motion, Dyson notes that it has produced scores of laboratory notebooks, emails from several Dyson employees (including James Dyson and Peter Gammack), and its patent prosecution files, among other materials. (Dkt. 241 at 8.) Additionally, at the time the motion was filed, Shark had had the opportunity to take the depositions of James Dyson and Peter Gammack, [1] and several additional Dyson employees. In other words, Shark is not being denied any facts.

         Although Shark may not like the answer it received to this interrogatory, this Court does not believe that Dyson's response to Interrogatory Number 10 is obscuring facts related to inventorship from Shark, or that the response in inaccurate. The testimony in the case suggests that Mr. Dyson and others cannot recall who contributed what during the invention process, and Dyson's response to Interrogatory Number 10 is consistent with that testimony. Other courts have recognized that precise recollection of each individual's contribution to a design may be difficult to come by when an invention is created in a group setting. See Canon Comp. Sys. Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998). None of the cases that Shark cites stand for the proposition that a party must articulate with exacting detail each co-inventor's contribution in an interrogatory response, and the Court does not believe that such a response is required. Moreover, to the extent that Mr. Dyson or any other witness produced by Dyson is unable to provide a coherent, consistent version of how the designs underlying the ‘010 and ‘823 patents were created at trial, that failure is just as likely to cut in favor of Shark's potential invalidity defenses (i.e., by tending to prove that the inventors themselves have no recollection as to their supposed contributions, which is indicative of misjoinder) as it is to prevent Shark from proving those defenses. Therefore, the motion is denied as to Interrogatory Number 10.

         B. ...

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