Discovery agreements are a powerful tool. If you promise to produce to do or not do something during discovery, the Court will typically enforce that:
Litigating parties, represented by able patent counsel, are expected to uphold the agreements they make during a case, and the Court should ordinarily (absent extreme circumstances not present there) enforce such agreements.
The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057-CJB, D.I. 177 (D. Del. Mar. 8, 2024).
What are the kind of "extreme circumstances" that warrant not enforcing a discovery agreement? We got a hint of that last week in In re: Entresto (Sacubitril/Valsartan) Patent Litigation, C.A. No. 20-2930-RGA, D.I. 1683 (Dec. 5, 2024).
There, from what I can gather from the briefing and exhibits, one party agreed to produce redacted versions of some confidential FDA material shortly before an ANDA trial:
If MSN agrees to redact any MSN confidential information in the below, we’ll do the same for Novartis’s confidential information in the documents you identified.
We would propose that both parties exchange redacted versions of the identified documents by Wednesday, November 27 . . .
Id., D.I. 423-1 at 55 of 96. The other side agreed.
Almost a week later, one party started to waiver, suggesting it instead needed "client . . . review" before production:
As an update, we are still working in good faith toward completing the redactions in a way that ensures we are not disclosing Novartis’s confidential information. Because the client cannot review the documents or our proposed redactons [sic], however, that process is taking longer than we had hoped. We will be unable to exchange documents this evening but will provide an update as soon as we can.
Id. at 52 of 95.
Ultimately, the documents were seemingly never produced (at least at the time the parties contacted the Court), in redacted form or otherwise.
The first party moved to enforce the agreement, arguing that the second party should be forced to produce redacted versions of the material as agreed.
The Court recognized that the parties had an agreement to produce these materials—and that it reneged when the client overruled the attorneys:
Counsel for Novartis in the D.D.C. case appears to have agreed to produce the disputed documents, but then reneged when Novartis overruled its outside lawyers in that case. (D.I. 1680-1, Exh. D, at 52-55 of 95). Novartis's letter does not comment on this. (D.I. 1680).
But the Court found that the issue was not so simple, given the proximity of trial, the unclear relevance of the documents, and that the documents are subject to another Court's protective order (an issue neither party addressed):
The movant, MSN, has not submitted an order that would implement its request, if granted. This is not insignificant given the vagueness of the request. Neither side addresses the fact that the protective order at issue in this dispute was issued by the District Court for the District of Columbia. I am loathe to de-designate documents that are confidential pursuant to another court's order. Neither the letters nor the redacted D.D.C. brief (D.I. 1671-1) give much of a hint about what the significance of the two internal documents might be. Presumably, this is because neither side has seen the two documents, so there is only speculation about what the two documents might contain. In other words, this is just an extremely late discovery request. Trial starts in less than two business days. To the extent the documents contain any relevant information, the experts have not considered the information. . . . Based on the foregoing, and notwithstanding Novartis's lack of defense of its own actions [in reneging on its agreement], MSN's request is DENIED. Ordered by Judge Richard G. Andrews on 12/5/2024.
Id., D.I. 1683.
You could look at this as an example of why a stipulation is better than a simple written discovery agreement. But I'm not sure that the outcome would have been different had the parties filed a stipulation -- the form of the agreement didn't seem to be the fundamental issue in the Court's order. Instead, the moving party might have been better off seeking the discovery sooner, and addressing in their briefing the issue of why the Court should provide relief from the other court's protective order.
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