Visteon Global Technologies, Inc. v. Garmin International, Inc.
903 F. Supp. 2d 521 (2012)
Rule of Law:
Information regarding when an alleged patent infringer became aware of its defenses is discoverable as it is relevant to the factors for awarding enhanced damages, even if the infringer stipulates it will not contest the subjective prong of the willful infringement test. Furthermore, an in-house attorney who was the sole director of a product's 'design-around' may be deposed on non-privileged factual matters related to that process when no other witness can provide the information.
Facts:
- Visteon Global Technologies, Inc. and Visteon Technologies, LLC ('Visteon') hold patents related to the function and operation of vehicle navigation devices.
- Garmin International, Inc. ('Garmin') manufactures and sells vehicle navigation devices that Visteon alleges infringe on its patents.
- In anticipation of the damages phase of litigation, Garmin developed a modified, allegedly non-infringing 'design-around' of its product.
- Garmin's in-house litigation counsel, Sam Korte, personally directed a Garmin engineer, Kent Bolton, to implement four specific software changes to create this design-around product.
- During his deposition, the engineer, Kent Bolton, stated he was simply carrying out Korte's directives and had no independent knowledge of the patents, the claims being designed around, or the purpose of the modifications beyond being for 'the Visteon matter'.
- Korte was identified as the only other person at Garmin with knowledge of the design-around process.
Procedural Posture:
- Visteon sued Garmin in the U.S. District Court for the Eastern District of Michigan for patent infringement.
- During discovery, Visteon filed a motion to compel discovery before a Magistrate Judge, seeking to depose a witness on the dates Garmin became aware of its defenses and to depose Garmin's in-house counsel, Sam Korte.
- The Magistrate Judge granted Visteon's motion to compel, ordering Garmin to produce the requested discovery.
- Garmin, as the objecting party, filed Objections to and an Appeal of the Magistrate Judge's Order with the District Judge.
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Issue:
Did the Magistrate Judge commit clear error or act contrary to law by compelling an alleged patent infringer to produce discovery on when it became aware of its litigation defenses and to produce its in-house counsel for a deposition regarding his central role in creating a 'design-around' product?
Opinions:
Majority - Borman, District Judge
No. The Magistrate Judge's order compelling discovery was not clearly erroneous or contrary to law. First, regarding the date(s) of awareness of defenses, even if Garmin concedes the subjective prong of the willful infringement test under In re Seagate, that information remains relevant to the separate inquiry for enhanced damages under 35 U.S.C. § 284. The court must consider the Read factors, such as whether the infringer formed a good-faith belief of non-infringement, and the timing of that belief is critical to this analysis. Garmin's attempt to 'streamline' the willfulness issue does not render the facts irrelevant to the potential enhanced damages analysis. Second, regarding the deposition of in-house counsel Sam Korte, the Shelton test for deposing opposing counsel is met. The engineer involved, Kent Bolton, testified that Korte was the sole source of direction and information for the design-around process, meaning Visteon has no other means to obtain crucial, non-privileged facts about Garmin's ability, resources, and desire to design-around the patent at the time of infringement. Factual information relating to redesign efforts is not immune from discovery simply because an attorney was involved in the process.
Analysis:
This opinion clarifies the scope of discovery in patent infringement litigation, underscoring that a defendant's strategic concessions on one legal issue (willfulness) cannot be used to shield fact discovery relevant to another (enhanced damages). It reinforces the distinction between the Seagate willfulness test and the Read factors for enhancing damages, establishing that discovery for the latter can proceed independently. The decision also affirms a key limit on attorney-client privilege, preventing its use as a shield when an attorney steps out of a purely advisory role and becomes a key factual witness, particularly when they are the only person with knowledge of discoverable information.
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