Bally Techs., Inc. v. Business Intelligence Sys. Solutions, Inc.

Bally Techs., Inc. v. Business Intelligence Sys. Solutions, Inc.

Opinion

ORDER

Motion to Compel (#77)

This matter is before the Court on Defendant Business Intelligence Systems Solutions, Inc.'s ("BIS2") Emergency Motion to Compel the Deposition of Richard Haddrill and the 30(b)(6) Depositions of Bally Technologies, Inc. ("Bally") (#77), filed on August 8, 2011; Plaintiff  [*2] Bally's Opposition to BIS2's Emergency Motion to Compel (#91); filed on August 15, 2011, and BIS2's Reply in Support of Motion to Compel (#96), filed on August 18, 2011.

The Court conducted a hearing on this matter on August 22, 2011, at which time it decided most of the issues raised in Defendant's motion to compel. The Court took under advisement whether Bally should be required to produce a Rule 30(b)(6) deponent to testify on "all facts and circumstances behind Bally's responses" to BIS2's Interrogatory No. 2 regarding ownership of the patents-in-suit. See Motion to Compel (#77), pp. 10-11, Exhibit 4. Bally objected to producing a witness to testify on this topic on the grounds that it is irrelevant. The circumstances relating to this topic and Bally's objection are as follows:

Bally's complaint alleges that BIS2 has infringed three patents, the '367 patent, the '194 patent and the '968 patent. (Bally has since abandoned its patent infringement claim with respect to the '194 patent.) Each of these patents was allegedly issued to Andrew J. Cardno. The Complaint alleges that all rights and interests in these patents were assigned to Compudigm International Limited ("Compudigm") and  [*3] that Compudigm thereafter assigned the full rights and interests in the patents to Bally. Complaint (#1), ¶¶6-11. In its amended answer to Bally's complaint, BIS2 states that "Bally's alleged ownership of each patent-in-suit is disputed by the sole named inventor of each patent-in-suit, Mr. Andrew Cardno, in a Nevada state court action, Cardno v. Compudigm International Ltd., Case No. A-09-605653-C, Dist.Ct., Clark County, Nevada." Amended Answer, Affirmative Defenses and Counterclaim of Business Intelligence Systems Solutions, Inc. (#22), ¶¶ 7,9, and 11. BIS2's second affirmative defense also alleged that Bally lacks standing to sue based on the disputed ownership of the patents-in-suit. BIS2 again cited Mr. Cardno's Nevada state court lawsuit as the basis for this defense. Mr. Cardno is BIS2's Chief Technology Officer.

Bally attached a copy of Mr. Cardno's Nevada District Court complaint as an exhibit to its opposition to the motion to compel. Opposition (#91), Exhibit A. Mr. Cardno's complaint alleged that Compudigm breached its employment agreement with him and made misrepresentations that induced him to assign his inventions and patent rights to Compudigm. As part of his claims  [*4] for relief, Mr. Cardno requested that he be declared the rightful owner of the intellectual property produced by him, including those aspects of the inventions he contributed in the patents or patent applications to which he was the named inventor. Bally also attached the Nevada District Court's order which permitted it to intervene in the action as a defendant, and the May 2, 2011 order granting Bally's motion to dismiss Mr. Cardno's first amended complaint. Opposition (#91), Exhibits B and C. The latter order states in pertinent part:

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