Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 12, 2012) (St. Eve, J.).
Judge St. Eve granted in part plaintiff Sloan’s motion to strike defendant Zurn’s “late asserted” invalidity defense, to compel discovery and for sanctions in this patent case involving dual mode flush valves.
Worn Zurn Flush Valve
Sloan seeks production of information regarding certain worn Zurn flush valves. While the worn valves may have been created for litigation, the work product doctrine would not cover the valves themselves or factual data regarding their fabrication and testing. Furthermore, Zurn lost any work product protection to the factual information by claiming that the worn Zurn flush valves invalidate the patent in suit. The Court, therefore, ordered Zurn to produce the worn valves, all non-privileged, factual information about them and a detailed privilege log. The Court also ordered a Rule 30(b)(6) deposition on the worn valve and that Zurn pay the costs and reasonable attorney’s fees of the deposition, the motion to compel and one Sloan attorney to attend the deposition because of Zurn’s continued refusal to produce the documents and answer deposition questions.
Community Center Worn Valve
A “plethora of rules” including LPR 2.1(b), 2.3 and 3.2 and Fed. R. Civ. P. 26(e), required Zurn to produce information regarding its Community Center Worn Valve invalidity defense before it did – after serving Zurn’s Final Invalidity Contentions. And the Community Center and Zurn worn valves were similar, but different. As such, it was a “close call” whether to allow Zurn to use the Community Center defense. The Court allowed Zurn to use its defense, but sanctioned Zurn requiring Zurn to pay Sloan’s reasonable attorney’s fees and costs for any necessary Community Center Worn Valve-related discovery.