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MOORE U.S.A. INC. v. THE STANDARD REGISTER COMPANY
September 18, 2001
MOORE U.S.A. INC., AND TOPPAN FORMS CO., LTD., PLAINTIFFS,
THE STANDARD REGISTER COMPANY, DEFENDANT.
The opinion of the court was delivered by: John T. Curtin, United States District Judge
Presently before the court in this patent infringement suit is Motion
16 or Item 237, which is SRC's motion to reconsider the court's oral
discovery order of September 2000. The court heard oral argument on
August 8, 2001.
In August 2000, the court ruled that SRC was entitled to discovery of
information relating to Moore's research regarding pressure sensitive
adhesives, as well as pressure seal adhesives.
In light of the fact that SRC asserts invalidity of
the `128 patent as an affirmative defense, discovery
of Moore's work on other pressure-sensitive adhesives
appears reasonably calculated to lead to the discovery
of admissible evidence. As such, the court grants
SRC's motion to the extent that it calls for
production of certain documents relating
to Moore's pressure-sensitive and pressure-seal
Item 193, p. 6 (emphasis added). Moore interpreted the August 2000 order
as not requiring it to produce information relating to research that had
taken place after December 25, 1987, which was the date of the "priority
application" that was filed in Japan for what Moore claims ultimately
became the `128 adhesive. Item 237, Exh. J. On August 10, 2000, Moore
advised SRC of this interpretation. Subsequently, Moore agreed to produce
responsive information up to the date of the `128 patent's being issued
On September 13, 2000, SRC deposed Dr. David Rice, who is a Moore
research scientist. During the deposition, counsel for SRC attempted to
question Dr. Rice regarding Moore's research efforts — as to both
pressure sensitive and pressure seal adhesives — that had taken
place after the `128 patent was issued in 1990. Moore's counsel objected
to this line of questioning and directed his witness not to answer. The
court was contacted by telephone. A record was made of the argument and
decision. The court sustained Moore's objection:
The Court: Well, Mr. Enos, I suppose that as in any
other industry that the engineers and chemists at
Moore are always searching, and I suppose your company
does the same thing, to try to improve their product.
But really does that have anything to do with a patent
that was issued in 1990?
Let me do this, so you can continue. I think that
the objection to the question is appropriate.
Item 237, Exh. A, p. 178. The court invited SRC to file a written motion
if it still believed that it was entitled to the information. Id. at
179. On December 8, 2000, SRC filed the present motion and requested
relief from the court's oral order of September 13, 2000. Item 237.
SRC seeks discovery of information and documents relating to Moore's
"recent" research and development efforts in the areas of pressure
sensitive adhesives and pressure seal adhesives. "By `recent,' SRC means
all research conducted by Moore since the issuance of the `128 patent."
Item 237, p. 3 n. 7. It bears repeating that the technology of pressure
seal adhesives is a subset of the pressure sensitive adhesive
technology. Therefore, all pressure seal adhesives are pressure sensitive
adhesives, but not all pressure sensitive adhesives are pressure seal
As indicated supra, SRC demands two categories of documents and
information: (1) those relating to Moore's "recent" research regarding
pressure seal adhesives, specifically, Moore's efforts to design an
"alternative" to the adhesive embodied by the `128 patent ("the `128
adhesive") and (2) those relating to Moore's ...
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