United States District Court, Western District of New York
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 recent research regarding
the broader technology of pressure sensitive adhesives.
I. Moore's Recent Research Regarding Pressure Seal Adhesives
If the "question under the doctrine of equivalents is whether an
accused element is equivalent to a claimed element, the proper time for
evaluating equivalency — and thus knowledge of interchangeability
between elements — is at the time of infringement, not at the time
the patent was issued." Warner-Jenkinson Co., Inc. v. Hilton Davis
Chemical Co., 520 U.S. 17, 37 (1997).
SRC rightly points out that the critical infringement issue here is
whether Moore's patented adhesive and SRC's principally accused adhesive
in light of the fact that SRC's adhesive contains only methyl
methacrylate ("MMA") while Moore's contains a blend of MMA and styrene.
Furthermore, SRC has secured documents and testimony which suggest that
Moore was engaged in efforts to design an alternative to the `128
adhesive in the mid-1990s, which is around the time that SRC is alleged
to have first infringed the `128 patent. See Item 237, pp. 5-6.*fn1
SRC suggests that if Moore has performed research aimed at developing
an alternative to the `128 adhesive, then there is a reasonable
possibility that Moore's researchers made statements and expressed
opinions on whether certain proposed alternative formulations are
equivalent to the `128 adhesive or whether other alternative formulations
are different from or inferior to the `128 adhesive. Further, if these
statements were made and these opinions were expressed in and around the
time of the alleged infringement, see supra (discussing
Warner-Jenkinson), they could prove relevant not only as admissions,
prior inconsistent statements, or even statements against Moore's
interests, but also as evidence of whether people of ordinary skill in
the polymer art considered MMA and styrene to be equivalent. At the very
least, SRC contends that these kinds of statements and opinions would be
reasonably calculated to lead to the discovery of admissible evidence.
The court agrees. This aspect of SRC's motion is granted. Moore should
produce documents and information regarding its efforts to design and
develop alternatives to the `128 adhesive. While Warner-Jenkinson will
only require Moore to produce information on research that took place in
and around the time of SRC's alleged infringement of the `128 patent, the
fact is that Moore claims ongoing infringement by SRC. Thus, the
applicable scope of time continues to run and, as a result, may encompass
any of Moore's efforts to design an alternative to the `128 adhesive.
II. Moore's Recent Research Regarding Pressure Sensitive Adhesives
In its August 2000 order, the court reasoned that SRC was entitled to
discover certain information and documents relating to Moore's research
into pressure sensitive adhesives. At that time, the court acknowledged
that this area of information was discoverable relative to the issues of
prior art and the `128 patent's validity, but not as to the issues of
infringement and equivalency. See Item 193, p. 6.
Furthermore, while the court is directing discovery of Moore's efforts
to design an alternative to the `128 patent, see supra, it does so
because that information may pertain to the issues of infringement and
equivalence. It suffices to say that the same argument cannot be made in
support of SRC's demand for discovery of Moore's recent research
regarding pressure sensitive adhesives. Moore's recent research on this
particular technology is neither relevant to the claims or defenses of any
party, nor would it be reasonably calculated to lead to the discovery of
admissible evidence. The court has considered SRC's reply arguments
favoring discovery of these materials and finds them unpersuasive. See
Item 301, pp. 4-5. For these
reasons, the aspect of Motion 16 which is directed at Moore's recent
research regarding pressure sensitive adhesives is denied.
For the reasons stated herein, SRC's motion for reconsideration of the
court's oral discovery order of September 2000 (Item 237) is granted in
part and denied in part.