The opinion of the court was delivered by: Mc,Verry, J.
MEMORANDUM OPINION AND ORDER OF COURT
Presently before the Court for disposition is the EXPEDITED MOTION TO COMPEL PRODUCTION OF MATERIAL AND TESTIMONY PERTAINING TO DEFENDANT‟S TEXTURE COEFFICIENT TESTS AND MEASUREMENTS, with brief in support filed by Plaintiff, Sandvik Intellectual Property AB ("Sandvik") (Document Nos. 131 and 132), the brief in OPPOSITION filed by Defendant, Kennametal, Inc. ("Kennametal") (Document No. 138), the REPLY BRIEF filed by Sandvik (Document No. 143), and the SUR-REPLY IN OPPOSITION filed by Kennametal (Document No. 147). Additionally, the requested claw-back documents in question were submitted to the Court for an in camera review. Upon consideration of the arguments of the parties, the applicable case law, and the Court‟s examination of the documents, the Court will grant the Motion to Compel.
On April 27, 2009,*fn1 Sandvik filed a one-count Complaint against Kennametal in which it alleged that Kennametal infringed two patents, namely U.S. Patent Nos. 5,487,625 ("the "625 patent") and 5,654,035 ("the "035 Patent") patent.*fn2 Sandvik is the owner by assignee of both United States patents. The "625 Patent issued on January 30, 1996, from Application No. 159,217, filed on November 30, 1993. The "035 Patent issued on August 5, 1997, from Application No. 532,359, filed on September 22, 1995.
The "625 Patent is a product patent for a cutting tool with a specified coating with characteristics that the inventors claim make it suitable for cutting metals at high temperatures. The "035 Patent is a method patent for coating a cutting tool with at least one layer of such specified substance that involves the use of certain gases in a specified order.
Sandvik has alleged that Kennametal is infringing both patents by making and/or selling certain grades of coated cutting tools. The coatings on the products, rather than the underlying structures, are at issue.
On July 16, 2009, Sandvik filed its First Amended Complaint in which it specifically identified the following Kennametal alleged infringing products: coated cutting tools marketed under the following names and/or grades: KC9110, KC9310, KC9315, KC9320, KC9325, and KC5515 (a/k/a TN5515).
Kennametal filed an Answer to the Amended Complaint and Counterclaim and asserts the affirmative defenses of unenforceability and invalidity of both patents. Specifically, Kennametal argues that the patents-in-suit are invalid because the texture coefficient ("TC") claim term is "insolubly ambiguous," which renders the patent indefinite.
Sandvik disputes that there are "critical details" missing from the patents-in-suit and in support of its position intends to rely upon certain documents produced by Kennametal in this case. Among its rolling document productions in response to Sandvik‟s requests, Kennametal has produced several hundred pages of documents which pertain to its internal TC testing.
On December 17, 2010, Sandvik issued to Kennametal a notice of deposition under Rule 30(b)(6) on several topics, including Kennametal‟s internal TC testing. On December 28, 2010, Kennametal informed Sandvik that the 30(b)(6) deposition would not be going forward.
On January 3, 2011, counsel for the parties met whereupon Kennametal informed Sandvik that inquiry into Kennametal‟s internal TC testing was protected by the attorney-client privilege and/or work product doctrine. Kennametal asserted a claim of privilege on all documents pertaining to its internal TC testing of relevant product since February 2001, on the ground that such testing was done in anticipation of litigation.*fn3
Sandvik disagreed strongly with Kennametal‟s broad assertion of privilege and work product, especially in light of Kennametal‟s previous production of hundreds of pages of TC-related documents.*fn4
On January 7, 2011, Kennametal informed Sandvik that the TC-related documents previously produced had been inadvertently produced and requested the return or destruction of these "protected" documents pursuant to the "claw back" provision agreed upon by the parties.
Presently before the Court is a Motion to Compel in which Sandvik requests that (1) Kennametal be required to produce all internal TC testing of cutting inserts and (2) Kennametal not be permitted to "claw back" documents related to TC testing which already have been produced. Kennametal claims that the materials presently at ...