Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA278763
`ESTTA Tracking number:
`04/17/2009
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180212
`Defendant
`IDEA AG
`Eric J. Sidebotham
`Eric J. Sidbotham, APC
`2033 Gateway Place, 5th Floor
`Santa Clara, CA 95110
`UNITED STATES
`eric.sidebotham@ejs-law.com
`Opposition/Response to Motion
`Eric Sidebotham
`eric.sidebotham@ejs-law.com
`/EJS/
`04/17/2009
`Opp to Motion to Compel.pdf ( 26 pages )(398612 bytes )
`Exh A -- TTAB-Rules Doc.pdf ( 14 pages )(100083 bytes )
`Exh B -- Decl of Grund ISO Opp to MTC.pdf ( 21 pages )(2033558 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No.: 91/180,212
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`App’n Serial No. 77/070,074
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`Mark: DIRACTIN
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`SCHERING CORPORATION,
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`Opposer,
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`v.
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`IDEA AG,
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`Applicant.
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`
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`The Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`APPLICANT’S BRIEF IN OPPOSITION TO OPPOSER’S SECOND MOTION
`TO COMPEL DISCOVERY RESPONSES AND TO TEST SUFFICIENCY OF
`RESPONSES
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`AND
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`APPLICANT’S SECOND MOTION FOR MODIFICATION OF THE BOARD’S
`STANDARD PROTECTIVE ORDER (TBMP § 412.02(a))
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`
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`I.
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`INTRODUCTION
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`Applicant IDEA AG (“Applicant”) hereby respectfully opposes the second
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`motion of Opposer Schering Corporation (“Opposer”) to compel Applicant to provide
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`additional responses to certain interrogatories and requests for production, and to test the
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`sufficiency of Applicant’s responses to certain requests for admission (the “Second
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`Motion”).
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 1 of 26
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`Opposer’s first motion to compel and to test the sufficiency of discovery
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`responses (the “First Motion”) was denied by the Board, on February 4, 2009, on grounds
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`that Opposer had failed to adequately confer with Applicant prior to filing the motion.
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`(Board Order, page 5, attached as Exhibit 18 to Opposer’s Second Motion.) Opposer’s
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`Second Motion has the exact same defect: apparently viewing the pre-motion conferral
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`requirement as a bare technical requirement rather than a substantive one, Opposer went
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`through the slightest motions of appearing to invite conferral, but did this on a pro-forma
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`basis only, while refusing to actually engage in any the kind of good faith substantive
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`communications that the Board specifically called for. (Id.)
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`Despite numerous requests by Applicant, and thorough communication by
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`Applicant of the factual and legal bases for its objections to the discovery requests in
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`question, Opposer in turn failed and refused to offer any explanation for its positions,
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`instead limiting its “conferral” to (1) purely conclusory and unsupported statements on
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`what is discoverable, and (2) repeated demands that Applicant further explain itself to
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`Opposer, even thought Applicant had already done so extensively, and even though
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`Opposer refused to offer any substantive explanations or arguments on its side that would
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`allow Applicant to intelligently assess Opposer’s reasons for disagreeing with the legal
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`positions that Applicant had already fully articulated. Despite it being Opposer’s burden
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`to show good cause why its own motion should be granted, Opposer’s “conferral”
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`consisted of a series of bare demands only, with no effort to communicate the substantive
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`basis for any good cause it purports to have. For this reason, Applicant’s Second Motion
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`is as lacking as its First Motion, and should likewise be denied.
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`Moreover, to the extent the Board may reach the substance of the Second Motion,
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`Applicant has already provided adequate responses to the discovery in question, in
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`compliance with the requirements of the Trademark Rules and the Federal Rules of Civil
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`Procedure. Much of Opposer’s requested discovery is, however, plainly overreaching
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 2 of 26
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`and even harassing in nature, and designed to garner information that is plainly irrelevant,
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`privileged, and/or otherwise not susceptible to discovery in this action. Applicant
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`considers that the scope of the present opposition should be properly restricted to
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`examining whether the mark “DIRACTIN” (“Mark”) should be refused registration, and
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`should not extend to matters that have no bearing on that question. Much of Opposer’s
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`discovery has improperly focused on the latter category, and to that extent, Applicant has
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`rightfully interposed objections and declined to respond further.
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`Unfortunately, the scope of Opposer’s requests far exceeds the scope of the issues
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`presented in these proceedings; Applicant firmly believes that Opposer’s overbroad—and
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`at times completely irrelevant—discovery inquiries improperly aim to obtain confidential
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`and/or privileged information about Applicant’s business activities, with the specific aim
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`of hindering Applicant’s ability to lawfully market its products in the United States.1
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`Whatever Opposer’s motivations may be, Applicant’s discovery responses set forth valid
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`objections that clearly demarcate the limits of permissible discovery in this action.
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`Opposer’s Second Motion must therefore be denied.
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`1 Applicant finds Opposer’s improper discovery particularly troubling in light of the meritless nature
`of these opposition proceedings. Significantly, the PTO’s examining attorney in charge of
`the underlying 1(b) application never made any mention of Opposer’s marks as a possible
`barrier to registration for Applicant. This likely due in part to the total lack of similarity
`between Applicant’s and Opposer’s respective goods. Opposer’s TINACTIN mark is used in
`connection with over-the-counter anti-fungal skin creams used to treat athlete’s foot, jock-
`itch, ringworm and the like. In contrast, Applicant intends to use its DIRACTIN mark in
`connection with a prescription-only topical anti-inflammatory/analgesic gel used primarily to
`treat pain from osteoarthritis and other joint conditions. Notably, none of Opposer’s
`discovery relates to the critical inquiry into how there could ever be a likelihood of
`confusion between such vastly different products.
`In addition, there is no actionable similarity between the parties’ respective marks,
`since the “ACTIN” portion of each mark also appears in a large number of registered and
`pending U.S. trademarks that Opposer has never challenged, while the remaining “TIN” and
`“DIR” portions of the respective marks are not substantially similar. It is thus apparent that
`this opposition proceding—including the discovery at issue in the instant motion—is not
`bona fide, but is rather an improper attempt to obtain confidential/proprietary information
`about Applicant and/or to impair Applicant’s ability to lawfully market its products in the
`United States.
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 3 of 26
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`II.
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`LEGAL ARGUMENT
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`A.
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`Opposer Has Again Failed to Confer With Applicant Prior to Filing
`Its Second Motion
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`Opposer’s Second Motion correctly sets forth the timeline of its purported
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`“conferral” efforts (see Second Motion at 4-5), but not the substance of those efforts.
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`Opposer’s merely pro-forma approach to pre-motion conferral is amply evidenced by the
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`documents already filed by Opposer in support of its Second Motion. After Opposer’s
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`First Motion was denied on February 4, 2009 (see Board Order, Exhibit 18 to Opposer’s
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`Second Motion), counsel indeed exchanged a series of emails and a telephone call, as
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`explained in Opposer’s Second Motion (at 4-5). The actual content of those discussions
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`is plainly displayed in Exhibits 19-24 of Opposer’s Second Motion.
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`During an initial telephone conference on February 24, 2009, Opposer’s counsel
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`requested that Applicant review each disputed discovery item and indicate whether
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`Applicant intended to supplement its previous discovery responses. (See Second Motion,
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`Exh. 20.) Applicant did so, and replied through counsel on March 6, 2009, with a
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`detailed email indicating that Applicant had reviewed the disputed items; that such
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`review revealed several outstanding issues for which Opposer had not yet explained its
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`position; and that, in order to confer meaningfully, Applicant would at least need some
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`indication from Opposer of what legal theories and arguments support its motion. (Id.,
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`Exh. 21.) Specifically, Applicant pointed out that Opposer had not yet provided any
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`authority, or otherwise articulated any basis for its views, on the applicability of German
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`attorney-client privilege to certain categories of documents sought by Opposer; on the
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`applicability of the controlling authorities cited by Applicant regarding trademark use and
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`priority issues in this 1(b) (intent-to-use) opposition proceeding; or on the Board’s power
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`to enter a modified protective order upon motion of a party, pursuant to Trademark Rule
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 4 of 26
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`2.116(g).2 In addition, Applicant requested that Opposer clarify exactly which discovery
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`requests would be at issue in the Second Motion, since Opposer had not yet told
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`Applicant whether the Second Motion would cover the exact same requests as the First
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`Motion. Applicant concluded that it could not yet agree to modify its discovery
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`responses based on the merely conclusory positions that Opposer had taken up to that
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`point, but that, in order to facilitate meaningful discussion, Opposer was invited to finally
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`explain the basis of its positions on these issues, to which Applicant would then gladly
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`give consideration.
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`At this point, Opposer shut down completely in terms of any effort to actually
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`communicate substantively, apparently finding it too bothersome to actually engage with
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`Applicant prior to filing its motion. Opposer’s counsel’s email of March 9, 2009, merely
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`repeats its short and conclusory statements on what it thinks is and isn’t discoverable,
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`with no accompanying authority or argument that would permit Applicant to
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`meaningfully assess Opposer’s positions, and then declares an “impasse.” (See Second
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`Motion, Exh. 22). Applicant’s counsel replied on March 12, 2009, explaining again that
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`“[Applicant] would like to hear and consider [Opposer’s] arguments ... [but that Opposer]
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`had not yet seen fit to communicate [them], either in the briefing on the previously-
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`denied motion, during the recently-initiated conferral process, or at any time….
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`[Opposer] has refused to provide any basis or support for its … views, and has instead
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`made only conclusory assertions about what is and isn’t discoverable. Such pro forma,
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`non-substantive engagement is insufficient to create an ‘impasse.’” (See Second Motion,
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`Exh. 23.)
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`Finally, on March 20 and 23, 2009, counsel exchanged a final set of emails, in
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`which Applicant’s counsel again reiterated that “despite several requests, [Opposer] has
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`2 Incorporated herein is Applicant’s second motion to modify the Board’s Standard Protective Order
`in this case. (See section II.C., below.)
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 5 of 26
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`not yet given us even an inkling of the rationale for its position on these few key
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`issues…. If [Opposer] will finally do so … then we can likely narrow the discussion for
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`purposes of an informed and productive phone call.” (Second Motion, Exh. 24.)
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`Opposer again ignored Applicant’s entreaties, and thereafter filed its Second Motion
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`without attempting any further communication with Applicant.
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`For the second time, Opposer has improperly ignored the scope and spirit of
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`Trademark Rule 2.120(e)(1) and Fed. R. Civ. P. 37(a)(1), this time by attempting to
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`create the appearance of conferring with Applicant’s counsel, but actually repeatedly
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`refusing to engage substantively or make any good faith attempt to resolve any of the
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`outstanding issues. This is ample justification for the Board to deny Opposer’s Second
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`Motion.
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`B.
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`Opposer’s Second Motion Has No Substantive Merit
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`The instant discovery motion sharply criticizes Applicant’s valid objections as to
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`relevance and privilege, which are intertwined with an overarching issue involving the
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`proper scope of a protective order in this case.
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`Briefly summarized (with additional detail below), Applicant’s positions on the
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`primary issues are as follows:
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`‚ Discovery relating to “first use” is completely irrelevant to an opposition
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`proceeding such as the instant one, in which priority is not at issue. Similarly,
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`discovery regarding later “use” is necessarily irrelevant in an opposition to an
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`intent-to-use application under Section 1(b) of the Trademark Act, 15 U.S.C.
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`§ 1051(b), in which no actual use has been alleged in the application. In this
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`area, Opposer appears to have an ulterior motive of fishing for business
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`intelligence that has no probative value in this case.
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`‚ Regarding documents and communications subject to attorney-client privilege
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`and/or the work product doctrine, choice of law principles require the
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 6 of 26
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`application of the relevant German law to questions involving documents that,
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`if in existence, were created by Applicant’s German attorneys working in
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`Germany. Under German law, attorneys are strictly forbidden from disclosing
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`either the content or the existence of any communications between the
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`attorney and the client, extending to trademark search documents and/or
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`opinion letters relating thereto. Accordingly, should any such documents
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`exist, they cannot be produced or even identified in a privilege log, as such
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`identification would reveal the existence of the documents, and would further
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`subject the German attorneys involved to criminal sanctions under German
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`law for making this disclosure.
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`‚ As Opposer’s Second Motion faithfully indicates, the one, and only, subject of
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`the Second Motion that the parties have actually discussed in detail is the
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`appropriate scope and language of a protective order covering the substantial
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`amount of highly sensitive and proprietary business information that Opposer
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`seeks from Applicant. Because Opposer is now demanding unreasonable
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`concessions from Applicant in exchange for agreeing to a stipulation to
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`modify the Board’s Standard Protective Order, Applicant is compelled to seek
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`the Board’s intervention, which is required to vigorously protect the
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`confidential business activities of Applicant from being unnecessarily
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`exposed. To ensure protection, Applicant hereby makes its own motion to
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`modify the Standard Protective Order.
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`///
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`///
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`///
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`///
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 7 of 26
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`C.
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`A Modified Version of the Standard Protective Order is Completely
`Warranted (TBMP § 412.02(a))3
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`In response to the numerous requests propounded by Opposer relating to sensitive
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`commercial information of Applicant (which would not be available to Opposer through
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`any other means), Applicant’s counsel reviewed the Board’s Standard Protective Order
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`(“SPO”), and is concerned that there are virtually no protections in the form of post-
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`proceeding confidentiality obligations. (See further discussion in Exhs. 8-11 of
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`Opposer’s Second Motion.) Specifically, there is nothing in the SPO that imposes a duty
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`of confidentiality on Opposer for any of the information it has requested of Applicant
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`after conclusion of this proceeding. This problem is exacerbated by the fact that Opposer
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`has already gamed the system in such a way as to frustrate any attempt by Applicant to
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`obtain discovery from Opposer. Thus, the risks associated with the SPO are, in this
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`situation, completely one-sided.
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`In what may be viewed as irony, Opposer’s law firm has gone on record as being
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`opposed to the Board’s SPO, especially where the parties are competitors. Opposer’s law
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`firm, in a letter it has posted on its own website, states that “the automatic entry of the
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`Board’s standard protective order will not provide adequate protection to confidential
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`information in a significant percentage of cases.” (See Exhibit A hereto.) This case clearly
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`involves competitors, and, as mentioned in other areas of this opposition, Opposer has
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`probed quite deeply into sensitive confidential information of Opposer, including a
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`3 Applicant’s previous motion for modification of the Board’s Standard Protective Order was denied
`without prejudice. Having now made further efforts to reach a meeting of the minds on this
`issue (see communications evidenced in Second Motion, Exhs. 21, 22), Applicant hereby
`renews its motion.
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 8 of 26
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`significant number of requests that probe areas completely unrelated to any of the issues
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`in the present proceeding.
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`Counsel for Applicant contacted counsel for Opposer to address these issues, in
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`an attempt to reach an amicable resolution. Opposer requested specific reasons for
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`changes being implemented, as well as red-line copies of all the changes made by
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`Applicant to the SPO. (See Opposer’s Second Motion, Exhs. 8-10.) Opposer largely
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`conceded to the changes made by Applicant, and even made a few additional corrections
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`to help improve the clarity of the standard protective order. (Id.) However, Opposer also
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`added a section entitled “Court Jurisdiction, Venue,” in which Applicant was to agree to
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`both jurisdiction in the district court of New Jersey for certain disputes between the
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`parties, and venue in New Jersey for virtually any dispute between the parties. Since
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`Applicant has no relationship with the forum unilaterally selected by Opposer, and more
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`importantly because that change was completely unrelated to the basic deficiencies in the
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`Board’s SPO, Applicant, understandably, rejected the counter-offer. Opposer, however,
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`then indicated that it would not agree to any modification of the SPO unless Applicant
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`agreed to Opposer’s onerous “Court Jurisdiction, Venue” provision. 4 (Id.) Because that
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`provision would be patently unfair, and because Opposer expressly stated that it was
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`4 Applicant further takes note of the Board’s comment, in its order on Opposer’s First Motion, that
`“the Board’s jurisdiction over the parties and their attorneys terminates when the proceeding
`is terminated, thereby limiting the Board’s authority to determine or oversee what choice of
`laws or forum would be proper in the event of any post-termination disputes between the
`parties.” (Board Order, attached as Exh. 18 to the Second Motion.) Since the Board would
`thus be unable to enforce the venue provision that Opposer is demanding, Applicant does
`not understand why Opposer continues to insist on it, unless such insistence is merely a
`pretextual reason for refusing to agree to an otherwise fair and agreeable modification to the
`SPO.
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`unwilling to budge, Applicant has been unable to resolve this issue, which has necessarily
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`delayed Applicant’s ability to produce materials to Opposer.5
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`To resolve this issue, Applicant respectfully requests, pursuant to TBMP §
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`412.02(a), that the Board enter as an order the revised stipulated protective order attached
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`as Exhibit 8 to Opposer’s Second Motion.
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`D.
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`Applicable German Law on Attorney-Client Privilege Absolutely
`Precludes Discovery of the Content or Existence of Any Attorney-
`Client Communications
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`Applicant’s objections of attorney-client privilege and/or work product protection
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`require particular attention in this case, as the objections concern documents, advice and
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`information that, if in existence, are/were embodied in communications in Germany
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`between German attorneys and Applicant. These documents, advice and information are
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`subject to the strict German laws governing attorney-client privilege, under which the
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`privilege extends to both the content and the existence of the entirety of attorney-client
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`communications, including but not limited to trademark search documents (if any) and
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`search-related communications and opinions. Furthermore, as discussed below, a
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`German Patent and Trademark Attorney (“Patentanwalt”) is also subject to a strict
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`obligation to zealously maintain all client communications as secret, and risks criminal
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`sanctions by doing otherwise. Accordingly, Applicant cannot be compelled to disclose
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`the content or existence of any documents and/or communications that occurred or may
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`have passed between the Patentanwalt and their client.
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`5 Prior to making the instant Second Motion for Modification of the Board’s SPO, Applicant
`discussed these issues yet again with Opposer, by telephone on February 24, 2009, and again
`by email on March 6, 2009. (See Second Motion, Exh. 21.) Again, no resolution was
`reached.
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Rule 501 of the Federal Rules of Evidence provides that questions of privilege are
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`decided under the common law. Astra Aktiebolag v. Andrx Pharms., Inc., 208 F.R.D. 92,
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`97 (S.D.N.Y. 2002) (applying German law to sustain claims of attorney-client privilege in
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`U.S. court). The “common law” applied under Rule 501 includes “choice of law”
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`principles. Id. Where, as here, alleged privileged communications take place in a foreign
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`country or involve foreign attorneys, the Federal Circuit defers to the law of the
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`jurisdiction “where the allegedly privileged relationship was entered into” (in this case,
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`Germany) or “the place in which that relationship was centered at the time the
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`communication was sent” (again, Germany). Id. at 98. Thus, letters between a party’s in-
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`house counsel and outside counsel, all German, containing legal opinions and advice, are
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`subject to German laws of privilege and confidentiality. See id.
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`Another powerful holding in support of deference to German law on privilege in
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`the present case is McCook Metals L.L.C. v. Alcoa, Inc., 192 F.R.D. 242, 257 (N.D. Ill.
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`2000), where the court stated that ‘[u]nder German law, attorney-client privilege protects
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`“all communications between a German patent attorney and his client which occur in the
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`rendition of legal services for the client, the client and the attorney may refuse to disclose
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`such communications in a court proceeding”’ (citation omitted; emphasis added). See
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`also Santrade, Ltd. v. General Electric Co., 150 F.R.D. 539, 547 (E.D.N.C. 1993); John
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`E. McCabe, Jr., “Attorney-Client Privilege And Work Product Immunity In Patent
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`Litigation” in 2001 Intellectual Property Law Update, edited by Anthony B. Askew and
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`Elizabeth C. Jacobs, Aspen Law & Business, §3.01[C][2][b][3].
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`For definitional purposes, a Patentanwalt is entitled to represent clients in
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`litigation matters before various German Federal Courts in matters arising from the
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`German Patent Act, German trademark law, and in other proceedings where the case
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`involves a question involving an industrial property right.6 For the avoidance of any
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`doubt, the recognized protections of German law extending to attorney-client
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`communications involving a Patentanwalt are not restricted to matters involving only a
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`German patent (or application therefor). Section 3, paragraph 2 of the
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`Patentanwaltsordung (“Regulations Governing the Conduct of German Patent Attorneys”
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`or PatAnwO) concerns “Legal Advice and Representation” and explicitly recognizes that
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`a Patentanwalt is empowered to “advise others or to represent them against third parties”
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`(“zu beraten und Dritten gegenüber zu vertreten”) in matters concerning the acquisition,
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`maintenance, defense, and challenging of “a trademark or another symbol protectable
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`under the German trademark laws….” (“…einer Marke oder eines anderen nach dem
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`Markengesetz geschützten Kennzeichens....”). The above-quoted German text can be
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`found in the relevant section of the PatAnwO (Exhibit B.1 hereto) and in the
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`accompanying English translation included therein. Accordingly, any privilege or other
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`legal provisions pertaining to the governance of Patentanwalt conduct covers the entirety
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`of a Patentanwalt’s scope of recognized professional practice, including activities relating
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`to trademark protection and related advice given to the client in the context of the
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`attorney-client relationship. (See Declaration of Dr. Martin Grund [“Grund Decl.”], ¶ 4,
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`attached hereto as Exhibit B).
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`The rules of professional ethics, privilege, and discipline governing the conduct of
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`a Patentanwalt are administered by the German Patent Attorney Chamber
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`6 See: PatAnwO §4(1), Exhibit B.1 hereto. A Patentanwalt may act in litigation
`(“Rechtsstreitigkeiten”), where the claim arises out of the German Patent laws
`(“Patentgesetz”) or trademark laws (“Markengestz”) before the German Patent Courts.
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`(“Patentanwaltskammer”) and are enforceable by the German courts. Such rules are
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`similar to those governing the conduct of a German attorney at law (“Rechtsanwalt”), and
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`dictate that a Patentanwalt: (i) is bound to strict secrecy regarding client information,
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`extending to everything that has come to his knowledge while performing in his
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`professional capacity7 (see Exhibit B, Grund Decl., ¶ 4); and (ii) has the right to exercise
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`a testimonial privilege by refusing testimony for “personal reasons” during civil
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`proceedings (§383 ZPO)8 and in criminal proceedings (§53 StPO)9 (see Grund Decl., ¶
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`7). Breach of this strict rule of secrecy by a Patentanwalt, in particular where the secret
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`concerns business or operations information which is disclosed in confidence to the
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`Patentanwalt, or otherwise became known during the course of the attorney-client
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`relationship, is treated harshly under German law, and is considered to be a criminal
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`offense punishable by a fine or a prison sentence not exceeding one year (§203 StGB).10
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`(See Exhibit B, Grund Decl.. ¶ 8.) Similar to public policies underlying parallel U.S.
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`practices, it is self-evident that these provisions are in place to encourage a free and
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`forthright exchange of information between the German Patentanwalt and the client.
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`7 See PatAnwO, §39a (Exhibit B.1). The English translation provided with the exhibit was generously
`provided by the Patentanwaltskammer (German Patent Attorney Bar Association, Munich,
`Germany) to Dr. Martin Grund on October 6, 2008.
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` See ZPO (German Code of Civil Procedure) §383, governing a person that has been entrusted with
`information where secrecy is mandatory in view of their “appointment, status, or trade,”
`which governs confidential client information received by a person having a status as a
`Patentanwalt. (Exhibit B.1.)
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` See StPO (German Code of Criminal Procedure) §53, which specifies that patent attorneys may
`refuse to give evidence during criminal proceedings for “professional reasons.” (Exhibit
`B.1.)
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` 8
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` 9
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`10 See StGB (German Criminal Code) §203. (Exhibit B.1.)
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 13 of 26
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`To summarize, under the German law that is applicable to this proceeding by way
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`of the Federal Circuit’s choice of law principles, the production or disclosure of
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`Patentanwalt communications, whether written or oral, cannot be compelled. Astra
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`Aktiebolag, supra, at 98. Under German law11, attorney-client privilege protects “all
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`communications between a German patent attorney and his client which occur in the
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`rendition of legal services for the client, [and] the client and the attorney may refuse to
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`disclose such communications in a court proceeding.” McCook Metals L.L.C. v. Alcoa,
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`Inc., 192 F.R.D. 242, 257 (N.D. Ill. 2000) (emphasis added); see also Santrade, Ltd. v.
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`General Electric Co., 150 F.R.D. 539, 547 (E.D.N.C. 1993). Applicant’s objections to
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`discovery requests in this area, and its declination to produce a privilege log that would
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`reveal the existence of such protected communications, are therefore valid and justified.
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`E.
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`Applicant has Properly Responded to all Discovery Requests
`Propounded by Opposer
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`At the level of each individual discovery request, Opposer’s Second Motion is
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`very difficult to understand, to the point of near-unintelligibility, because it presents
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`arguments only in general fashion, without bothering to state which arguments apply to
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`each discovery request. While Applicant and the Board are therefore left guessing on this
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`point, Applicant will attempt to address the issues that Opposer may have in mind for
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`11 “Under Fed. R. Civ. P. 44.1, although the parties may present evidence as to the substance of
`foreign law, the court may conduct its own research on foreign law, and its ruling on what
`foreign law requires is deemed a ruling of law. See 5 James Wm. Moore, et al., Moore’s Federal
`Practice, P 44.1.01[2] at 44.1-3 to -4 (2d ed. 1992). Thus, it is not necessarily the case that the
`plaintiffs here bear a burden of proof on this issue….” Golden Trade v. Lee Apparel Co., 143
`F.R.D. 514, 524 n. 5 (S.D.N.Y. 1992).
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`Opposition No. 91180212
`Application Serial. No. 77/070,074
`Atty. Docket No. 108-007TUS
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`Page 14 of 26
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`each individual discovery request12 in issue. To that end, Applicant further opposes
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`Opposer’s Second Motion on the following specific grounds:
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`1.
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`INTERROGATORIES
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`Interrogatory No. 4
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`Applicant’s substantive response to this interrogatory is already complete,
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`indicating simply that there are no non-privileged documents in IDEA’s custody,
`possession and control that are responsive to this interrogatory. To the extent that
`Opposer demands a privilege log, Fed. R. Civ. P. 26(b)(5) includes an important carve-
`out: a responding party need not, in making a privilege log, reveal information that is
`itself privileged. German law, which is controlling in this instance under applicable
`comity and choice of law principles, dictates that both the content and the existence of
`any such document is strictly privileged and subject to stringent secrecy obligations. (See
`Section II.D., above.)
`In addition, this Interrogatory clearly requests sensitive and proprietary business
`information of Applicant. Even if the Board were to disregard the significant privilege
`issue, identification of these kinds of documents would have to occur under the protection
`of a suitable protective order. There is no such suitable protective order in place, as the
`SPO (as discussed above) is completely insufficient in adequately safeguarding
`Applicant’s interests, especially since Applicant is located outside the United States.
`Accordingly, Applicant respectfully moves the Board to approve Applicant’s proposed
`modification of the Standard Protective Order (“SPO”), as requested in Section II.C.,
`above, and for the reasons set forth therein.
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`Interrogatory No. 10
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`Applicant’s substantive response speaks for itself: if no “sales, marketing,
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`advertising [or] promotion” under Applicant’s Mark have occurred in