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Jenny Yoo Collection, Inc. v. Essense of Australia, Inc.

United States District Court, D. Kansas

November 20, 2019

JENNY YOO COLLECTION, INC., Plaintiff,
v.
ESSENCE OF AUSTRALIA, INC., Defendant.

          MEMORANDUM AND ORDER

          JULIE A. ROBINSON, CHIEF UNITED STATES DISTRICT JUDGE

         This matter comes before the Court on Defendant Essence of Australia, Inc.'s (“Essence”) Motion for Protective Order (Doc. 122) asking the Court to forbid the taking of the deposition of Kay Chin as noticed by Plaintiff Jenny Yoo Collection, Inc. (“JY”), and JY's Motion to Continue Markman Hearing (Doc. 108) in order to conduct a deposition of Ms. Chin. The parties' expedited briefing is complete and the Court is now prepared to rule. As explained below, Essence's motion for protective order is granted. JY's motion to continue the Markman hearing in order to depose Chin is denied; the Court concludes that construction of the claims in JY's design patents at issue for the two dresses is adequately presented in the parties' written submissions without the need for a hearing.

         I. Background

         JY asserts claims against Essence for alleged trade dress infringement and patent infringement of the ‘D120 Patent and ‘D723 Patent on two bridesmaid dresses. JY identified Chin as a potential witness in its initial disclosures served on Essence on July 3, 2018.[1] On August 21, 2018, Magistrate Judge Gwen E. Birzer entered a phased Initial Patent Scheduling Order allowing for early claim construction.[2] Claim construction discovery was to be completed by November 30, 2018, and claim construction briefing was to be completed by February 8, 2019. Judge Birzer denied JY's request to modify the initial scheduling order to have claim construction proceedings occur at the summary judgment phase after the completion of all fact and expert discovery, as opposed to the completion of claim construction discovery, but extended the claim discovery deadlines.[3] The claim construction discovery deadline was ultimately continued until March 15, 2019.[4] This Court, at its discretion, was to then set a date to hear and decide the parties' claim construction issues, after which a scheduling order for the remainder of discovery and other pretrial matters would be set.

         On January 15, 2019, the court issued a protective order in light of JY's attempt to extend discovery geared toward infringement and invalidity, not claim construction.[5] In that order, Judge Birzer addressed the claim construction standard for design patents, where the claims are described by drawings, not words.[6] Highly summarized, the court found that JY appeared to be seeking discovery from Essence's designers in order “to find out how [Essence] construed [JY's] patent drawings in designing its own dresses, which would enable [JY] to advocate for a claim construction more likely to lead to a finding of infringement, ” which would be an “improper use of extrinsic evidence.”[7] The court also viewed JY's discovery requests as an attempt to circumvent the court's previous order “by trying to fit in all discovery before claim construction proceedings, which is also contrary to this District's Patent Local Rules.”[8]

         JY filed a motion to reconsider the January 15 protective order prohibiting depositions of Essence's designers and a motion to strike Essence's proposed claim construction and extrinsic evidence. Judge Birzer denied both motions in a comprehensive order issued July 31, 2019.[9] Highly summarized, the court concluded that there was no clear error because it did not, and does not, misapprehend either the proper scope of claim construction discovery or the reason JY is seeking the discovery at issue, the law of extrinsic evidence in claim construction, or the use of extrinsic evidence.[10] Notably, the court concluded by pointing out the need for this case to move past claim construction, which has been impeded by “the parties' (and their counsel's) unwillingness and inability to follow the Court's orders and to work with each other in a civil manner.”[11] Although it declined to impose sanctions at the time, the court strongly encouraged the parties to review and consult the Pillars of Professionalism regarding their interactions with each other.[12]

         On August 30, 2019, this Court set a claim construction hearing (“Markman hearing”) for October 22, 2019.[13] On September 30, 2019, Essence filed motions in limine to exclude the reports, affidavits, and testimony of two of JY's claim construction witnesses, Kay Chin and Jeffrey Trexler.[14] On October 8, 2019, the Court set a telephonic pre-Markman hearing for October 15, 2019 at 11:00 a.m., and advised the parties to be prepared to address the expected parameters of the Markman hearing, witnesses and evidence to be presented, the motions in limine, and any other matters to be brought to the Court's attention.[15] That day, JY filed a Motion to Continue the Markman hearing until late November or December 2019, so that it could conduct a trial deposition of Ms. Chin in Honolulu, Hawaii, which it intends to use in lieu of calling Ms. Chin as a live percipient and expert witness at the hearing. Essence advised JY and the Court that it objected to a continuance as well as to the untimely deposition of Ms. Chin. JY declined the Court's email suggestion to proceed with oral argument on the claim construction issues October 22, as supplemented by Ms. Chin's deposition if the Court finds appropriate. Counsel for JY also advised the Court by email that they were unavailable to participate in the scheduled pre-hearing telephone conference on October 15, as well as the alternative date offered by the Court of October 11, 2019. The Court then converted the October 22 Markman hearing to a pre-Markman hearing, where it heard argument on the motions in limine and the need for an evidentiary claim construction hearing on the design patents at issue.

         At the pre-Markman hearing, counsel for Essence clarified that the verbal description for the ‘D120 and ‘D723 Patents was not for the drawings, but for the terms used in the description of what is shown in the drawings covered by the Patents. Counsel for JY clarified that its position is that in a design patent case, the claims are represented by the drawings and only the drawings, and that Essence incorrectly argues that the words contained in the drawings have a meaning separate and apart from the drawings themselves. When Essence separated out those words from the drawings, JY responded by connecting those words to the drawings. The Court granted the parties' request to file additional submissions regarding the Manual of Patent Examining Procedure (“MPEP”) and the significance of the terms “as shown and described” and “as shown” in the claims. The Court took the motions to exclude and continue under advisement and informed the parties it would endeavor to issue an order as soon as practicable in the coming weeks.

         At the hearing, JY also raised the issue of Ms. Chin being deposed in Hawaii as part of another case it is prosecuting against David's Bridal in the Southern District of New York, where a claim construction hearing on the same patents was scheduled for November 13, 2019, and stated that it would invite Essence to participate in that deposition. The Court declined to order Essence to attend, leaving it up to Essence to decide whether or not to attend in light of the motions pending before the Court.

         Undeterred by this Court's ruling or Judge Birzer's rejection of JY's attempts to modify and circumvent the phased scheduling order, JY proceeded to schedule Ms. Chin's deposition in this case for November 7 and 8, 2019, in Honolulu, Hawaii. JY did not consult Essence in advance of issuing the Notice, which states that JY intends to use Ms. Chin's deposition as evidence at any claim construction hearing scheduled in this matter as well as at trial. After the parties unsuccessfully conferred in an effort to resolve the dispute, Essence moved for a protective order. The Court ordered expedited briefing, noting that pursuant to D. Kan. Rule 26.2(a), the deposition to which the motion for protected order is directed is stayed pending an order of the Court.[16]

         While the motions were pending, on November 5, 2019, United States District Judge Paul G. Gardephe entered an order in the New York case granting the parties' joint request to continue the Markman hearing until January 3, 2020, clarifying that the court would allow witness testimony and other evidence at the hearing, and ruling the motions in limine to preclude the testimony of Trexler and Chin are premature, with leave to renew upon completion of expert discovery.[17] In response to this Court's email inquiry whether the motion for protective order was moot in light of Judge Gardephe's order, JY advised that Ms. Chin's deposition had been postponed but that it intends to reschedule her deposition as noticed in the David's Bridal case for both claim construction and as a “trial deposition, ” and requested this Court rule on the motion for the protective order and motion to continue the claim construction hearing to conduct Chin's deposition. Essence responded that the motion for protective order was moot for the time being, but it would renew its objection to any future notice of deposition of Ms. Chin. To date, JY has not re-noticed Ms. Chin's deposition in either proceeding.

         II. Discussion

         A. Protective Order

         Fed. R. Civ. P. 26(c) governs protective orders and states, in relevant part, that “[t]he court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense ” including “forbidding the disclosure or discovery.”[18] The party seeking to quash a notice of deposition must show “good cause” for the requested protective order.[19] To establish “good cause” under Rule 26(c), the movant “must clearly define the potential injury to be caused by requested discovery.”[20] Further, “the moving party must make ‘a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements.'”[21] The district court has broad discretion to decide when a protective order is appropriate and what degree of protection is required.[22] The Supreme Court has explained that “[t]he trial court is in the best position to weigh fairly the competing needs and interests of the parties affected by discovery. The unique character of the discovery process requires that the trial court have substantial latitude to fashion protective orders.”[23]

         Essence argues that a protective order is justified because JY's attempt to depose Ms. Chin is both untimely and unauthorized and would cause Essence undue burden and expense if allowed to proceed as noticed. JY responds that Ms. Chin is a “critical witness” uniquely qualified to provide both fact and expert testimony in the Markman claim construction hearing and that because her deposition is a “trial deposition, ” it does not matter that the period for claim construction discovery is closed.

         The Court finds good cause to grant Essence's motion and will not permit the deposition of Ms. Chin to proceed as noticed. First, per the Patent Local Rules and Judge Birzer's previous orders, phased discovery before the Markman hearing is limited to discovery directed at claim construction, which closed on March 15, 2019. JY's attempts to argue that deadline does not apply to Ms. Chin are not well taken. D. Kan. Patent Rule 4.4 is clear that “[n]ot later than 28 days after the filing of the Joint Claim Construction Statement, the parties must complete all discovery relating to claim witnesses, including experts, identified in the Preliminary Claim Construction and (D. Kan. Pat. Rule 4.2) or Joint Claim Construction Statement (D. Kan. Pat. Rule 4.3).” JY has not moved to reopen claim construction discovery and any attempt to take Ms. Chin's deposition for purposes of claim construction is thus late by more than eight months. And although not addressed in this Order, it bears repeating that Ms. Chin's affidavit and testimony at the Markman hearing are subject to a pending motion in limine.

         Moreover, the fact that JY has labeled Ms. Chin's deposition as a “trial deposition” does not afford it special treatment in this district. Magistrate Judge Angel Mitchell recently rejected a party's attempt to label twelve depositions as “trial depositions” and not for the purposes of discovery in order to avoid the discovery deadline in the scheduling order, and explained the rationale for not granting purported “trial depositions” special treatment.[24] Citing the weight of recent authority as well as the language of Fed.R.Civ.P. 30 through 32, the court declined to draw such a distinction, stating “[t]o hold otherwise would circumvent scheduling order deadlines and create confusion as to the applicable rules. For example, parties could wait until after discovery ends to marshal evidence, so long as they did so under the guise that they were taking ‘trial depositions.'”[25]

         The Court agrees that at this point in the phased discovery proceedings, JY's deposition of Ms. Chin likewise must be treated like any other discovery deposition, despite its label. Although D. Kan. Rule 30.3 provides an exception for the deposition of a material witness who agrees to appear at trial but later becomes unable, or refuses to attend, to be taken at any time before trial, JY is attempting to take a deposition for use at a Markman hearing.[26] Trial has not been set in this matter, nor has the trial phase of discovery commenced. JY cannot dispute that the discovery window for claim construction closed on March 15, 2019, or that the deadline included all depositions for claim construction witnesses, including experts.[27]

         Second, JY scheduled the deposition without first hearing from Essence and its counsel regarding a mutually convenient time or the feasibility of the date and location of the deposition. Notably, the November 7 and 8 dates were tied to the November 13, 2019 Markman hearing scheduled in the New York case. However, on November 5, 2019, the New York court granted the parties' joint motion to continue the Markman hearing until January 3, 2020.[28] That court also ruled that Ms. Chin's deposition will not proceed until the issues regarding discovery of related materials are resolved. Accordingly, JY's argument that, given the time constraints and Ms. Chin's “limited availability, ” it had no choice but to schedule her deposition on the only feasible dates is no longer tenable.

         Finally, the Notice makes clear that JY intends to cover issues other than claim construction at the deposition that will arise at trial, such as infringement and invalidity. Judge Birzer has made clear that this case has bifurcated deadlines and the only type of discovery that is permitted before this Court issues a claim construction order is discovery related to claim construction. Indeed, JY has been warned against trying to get a head start on fact discovery and the Notice of Ms. Chin's deposition is yet another inappropriate attempt to circumvent the scheduling order and engage in premature discovery. With all due respect to Judge Gardephe, the New York court operates under different Local Patent Rules and that case is in a very different procedural posture-there is no phased scheduling and discovery in that case. Under these circumstances, the Court finds that quashing the notice of deposition is warranted to protect Essence from prejudice and undue burden and expense.[29] Nothing in this order should be construed as preventing or limiting Plaintiff from deposing Ms. Chin during the fact stage of discovery, if warranted.

         B. Motion to Continue Markman Hearing

         JY requests the Court continue the Markman hearing so that it may depose Ms. Chin. Although this ground for continuance is no longer relevant given the Court's grant of a protective order, the Court revisits the need for a claim construction hearing in light of the nature of the design patents at issue and the parties' comprehensive written submissions, as recently supplemented.

         Claim construction is a matter of law for the court.[30] “The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not change, the scope of the claims.”[31] The Supreme Court's decision in Markman does not obligate a court to hold a separate evidentiary hearing to construe the claims, but only requires that the court construe the claims itself and not delegate that task to the jury.[32] As the Federal Circuit has explained, the ...


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