Scratch & Sniff
Contois had sued Apple in June 2005 for iPod infringing 5,864,868, which claims a user interface for a media playing device. Apple settled.
On Monday, Apple alleged (motion) that James Hempleman, Premier honcho, lied about the '868 Contois patent, which was '345 prior art, in a desperate, and successful, push to get '345 granted.
During prosecution of the '345 patent, the examiner rejected all the pending claims over the Contois patent in three separate office actions . In response to the third of these office actions, Premier submitted a sworn declaration that contained materially false statements about Contois's disclosure . The declaration was made by James Hempleman - one of the named inventors, and the CEO and sole owner of Premier. The Examiner then allowed twenty-nine of the pending claims in the next office action, and withdrew all his previous rejections based on the Contois patent.
In his deposition in this case, Mr. Hempleman admitted that Contois discloses features that he swore in his declaration were not disclosed. Mr. Hempleman further admitted in his deposition that his declaration was submitted in order to induce the Examiner's reliance. Moreover, Paul Vargo, the prosecuting attorney for the '345 patent, also admitted in his deposition that Contois discloses features that Mr . Hempleman swore in his declaration were not disclosed.
The Hempleman declaration states that Contois has no disclosure of downloading songs from a non-local computer, and it states that Contois does not disclosure the automatic creation of a list of songs that match a user-specified criteria, such as genre or composer. Mr. Hempleman, however, admitted in his deposition that Contois "refer[s] to media sources, media content on computers that are on the internet or worldwide web," and that "Contois allows the user to display a list of music . . . [a]nd to display it according to a characteristic like the selected composer." Exh. H [J. Hempleman depo . at 196 :3-8 and 207 :3-8] .
Apple is requesting "an in camera review [of privileged documents] to determine if the false declaration statements trigger the crime-fraud exception to the attorney-client privilege." If everyone involved are sniffed gamy, Apple wants "related follow-on discovery."
For the crime-fraud exception to apply, there must be a prima facie showing of actual, justifiable, and detrimental reliance on a materially false representation made in furtherance of a crime or fraud . In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 807 (Fed. Cir. 2000). The Federal Circuit has further stated that a "party seeking to overcome the attorney-client privilege need not conclusively prove fraud, or necessarily submit direct evidence in order to make the required prima facie showing." Id. at 808.
