• ALJ Gildea Denies Motion to Compel Discovery from Non-Party in Certain Wind and Solar-Powered Light Posts and Street Lamps (337-TA-736)
  • May 5, 2011 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On April 26, 2011, ALJ E. James Gildea issued Order No. 11 denying without prejudice a motion to compel discovery from non-party Benjamin Halpern in Certain Wind and Solar-Powered Light Posts and Street Lamps (Inv. No. 337-TA-736).  The motion was filed by Gus Power Incorporated; Efston Science, Inc.; The StressCrete Group; and King Luminaire, Inc. (collectively, “Respondents”).  Complainants Duggal Dimensions, LLC; Duggal Energy Solutions, LLC; and Duggal Visual Solutions, Inc. (collectively, “Duggal”) opposed the motion.

    According to the Order, Halpern was one of the attorneys responsible for prosecuting the application that matured into the patent-at-issue in the investigation.  Respondents’ motion asserted that during Halpern’s deposition, Duggal repeatedly asserted the attorney-client privilege and instructed Halpern not to answer questions that were not privileged and were highly relevant to Respondents’ claims of improper inventorship and inequitable conduct.  Respondents thus requested that the ALJ compel Halpern to testify fully and completely at a reconvened deposition at Duggal’s expense. Duggal opposed Respondents’ motion, arguing that the information and documents sought by Respondents was properly protected by the attorney-client privilege.

    In the Order, ALJ Gildea determined that Respondents did not properly serve non-party Halpern with the motion to compel.  Thus, the motion was procedurally defective. Accordingly, ALJ Gildea denied Respondents motion without prejudice.  ALJ Gildea further noted that if “Respondents choose to re-file this motion as a motion to compel, Respondents should address in their motion whether, under the present circumstances, the Administrative Law Judge has the authority to compel nonparty Mr. Halpern.”