Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Dyson, Inc. v. Sharkninja Operating LLC

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

February 2, 2017

DYSON, INC., et al., Plaintiffs,
v.
SHARKNINJA OPERATING LLC, et al., Defendants.

          MEMORANDUM OPINION AND ORDER

          JOHN W. DARRAH United States District Court Judge

         On September 30, 2016, Magistrate Judge Cox granted Defendants' Motion for Letters of Request, also known as Letters Rogatory, for the Deposition of Certain Individuals in the United Kingdom, Singapore, and Denmark in part and denied it in part. Magistrate Judge Cox granted the request for Letters Rogatory but limited the testimony topics. Defendants filed Objections to Order Regarding Requests for International Discovery [294].

         BACKGROUND

         Plaintiffs Dyson, Inc. and Dyson Technology Limited (collectively, “Dyson”) filed a Second Amended Complaint against Defendants SharkNinja Operating LLC and SharkNinja Sales Company (collectively, the “Defendants”), alleging three counts of design infringement associated with United States Design Patents No. D577, 163 (the “‘163 Patent”), No. D668, 010 (the “‘010 Patent”), and No. D668, 823 (the “‘823 Patent”).

         The ‘163 Patent lists Peter Gammack, Michael Peace, William White, William Milne, Richard Hickmott, and James Dyson as named inventors. In its Final Infringement Contentions of November 26, 2014, Dyson asserted that the priority date for the ‘163 Patent was July 19, 2006; in a supplemental interrogatory response served in March 2016, Dyson amended the priority date to May 5, 2005. Gammack, Milne, and Dyson have sat for depositions. They stated that the design patents relevant to this suit resulted from a collaborative process, and they were unable to identify which portions of the design could be attributed to which named inventor. Peace, White, and Hickmott have not been deposed and reside in Singapore, the United Kingdom, and Denmark, respectively. Peace, White, and Hickmott are refusing to appear for a deposition voluntarily.

         Defendants filed a motion requesting the Court to issue Letters of Request and submit them to the “Competent Authorities of the United Kingdom, Singapore, and Denmark, pursuant to the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters.” (Dkt. 235-1, p. 1.) Defendants submitted three proposed Letters for Request that are virtually identical, which included an exhibit describing the testimony sought from Peace, White, and Hickmott.

         The topics for examination listed in the exhibit were: “1) ‘Matters relating to the patents-in-suit' (i.e., circumstances surrounding the conception and development of the ‘163 patent, the ‘823 patent, and the ‘010 patent, the roles played by the named inventors and other Dyson employees in that conception and development, and ‘[k]knowledge and understanding of the state of the art of the fields of handheld and stick vacuum cleaner design'); 2) ‘Matters relating to Dyson' (i.e., descriptions of the deponent's job duties, employment agreements with Dyson, and information regarding Dyson's designs for vacuum cleaners); and 3) ‘Matters relating to this Lawsuit' (i.e., the deponent's knowledge of the factual basis for Dyson's infringement claims, and discussions the deponent had about the lawsuit with Dyson or any other person).” Dyson, Inc. v. SharkNinja Operating LLC, No. 1:14-CV-0779, 2016 WL 5720702, at *1 (N.D. Ill. Sept. 30, 2016).

         LEGAL STANDARD

         This issue is governed by Federal Rule of Civil Procedure 72(a), which provides:

When a pretrial matter not dispositive of a party's claim or defense is referred to a magistrate judge to hear and decide, the magistrate judge must promptly conduct the required proceedings and, when appropriate, issue a written order stating the decision. A party may serve and file objections to the order within 14 days after being served with a copy. A party may not assign as error a defect in the order not timely objected to. The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

Fed. R. Civ. P. 72(a). “The clear error standard means that the district court can overturn the magistrate judge's ruling only if the district court is left with the definite and firm conviction that a mistake has been made.” Weeks v. Samsung Heavy Indus. Co., Ltd., 126 F.3d 926, 943 (7th Cir. 1997). To prevail on their objections, Defendants must show that Magistrate Judge Cox's order was clearly erroneous or contrary to law. See Makowski v. Smith Amundsen LLC, No. 08-CV-6912, 2012 WL 3643909, at *1 (N.D. Ill. Aug. 21, 2012).

         ANALYSIS

         Defendants object to Magistrate Judge Cox's holding that Peace, White, and Hickmott are not likely to have relevant information regarding the ‘010 Patent and the ‘823 Patent, the patents covering the stick-vacuum designs. Magistrate Judge Cox held that Peace, White, and Hickmott were “much less likely to have relevant information” regarding the ‘010 Patent and the ‘823 Patent, as they are only listed as inventors on the ‘163 Patent. Dyson, Inc. v. SharkNinja Operating LLC, No. 1:14-CV-0779, 2016 WL 5720702, at *4 (N.D. Ill. Sept. 30, 2016). Therefore, the Letters Rogatory were limited to testimony concerning the ‘163 Patent.

         Defendants requested Letters of Request to the United Kingdom, Singapore, and Denmark, pursuant to the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters. The Hague Convention procedures are available to “facilitate the gathering of evidence by the means authorized by the Convention.” Societe National Industrielle Aeropatiale v. United States District Court for the Southern District of Iowa, 482 U.S. 522, 540 (1987). The procedures include Letters Rogatory issued by United States District Courts and submitted to the foreign judicial authority of other signatory nations. See Id. ÔÇťAmerican courts, in supervising pretrial proceedings, should ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.