When a magistrate judge makes a ruling on a non-dispositive issue in a case, and a party objects, the ruling controls and remains effective until the objection is resolved:
8. Effect of Magistrate Judge Orders and Recommendations. Until a District Judge has completed his or her review of an objection to a Magistrate Judge's order or ruling on a nondispositive matter, such order or ruling shall govern further proceedings.
That means that, when you object to a notice of deposition of two of your own inventors on the basis of "burden" (and other grounds), and your burden objection unsurprisingly fails, the depositions have to go forward—even if you then file written objections to the magistrate judge's ruling.
That is, of course, unless the Court grants a motion to stay. That's what a patentee tried last week in Pierre Fabre Medicament SAS v. Rubicon Research Private Limited, C.A. No. 24-811-JLH-SRF (D. Del.).
After the Court ordered the patentee to make its inventors available for deposition by December 5, the patentee filed objections under FRCP 72, and simultaneously filed a motion to stay the order pending resolution of the objections.
However, all motions in the case were referred to Magistrate Judge Fallon, the judge to whom they were objecting. And the standard for a stay under these circumstances requires satisfying several factors, one of which is a likelyhood of success on the merits. The "merits" of the objections, here, require showing that the Judge's holding is "clearly erroneous or contrary to law."
As you have probably guessed, the judge did not hold that plaintiff had shown a likelihood of success in proving that the judge's own ruling was clearly erroneous or contrary to law—using the same arguments that the Court just ruled on in granting the motion:
ORAL ORDER- re 126 Motion to Stay Order (D.I. 116) Pending Plaintiffs' Objections. Having reviewed the parties' briefing on the motion to stay, . . . IT IS ORDERED that the motion to stay is DENIED. Granting a motion to stay a court's decision is an "extraordinary remedy," and the party requesting the stay bears the burden of justifying the request. . . .The court must consider (1) a likelihood of success on the merits of the objections; . . . . Here, Plaintiffs have not demonstrated a substantial likelihood that the District Judge will find the discovery ruling "clearly erroneous or contrary to law." . . . Instead, Plaintiffs repeat arguments already rejected by the court in a decision supported by applicable case authorities.
The Court likewise held that the mere fact that the party will effectively lose its objections to the Court's ruling is not "irreparable harm":
The balance of harms also weighs against the entry of a stay. Plaintiffs contend that they will be irreparably harmed if the depositions proceed before consideration of their objections. . . . Plaintiffs cite no case authority in support of this position, and the courts March 7, 2022 Standing Order for Objections Filed Under Fed. R. Civ. P. 72 expressly states that "[u]ntil a District Judge has completed his or her review of an objection to a Magistrate Judges order or ruling on a nondispositive matter, such order or ruling shall govern further proceedings."
Even worse, for the patentee, was that they themselves contributed to the timing crunch:
In addition, the delay caused by Plaintiffs' failure to respond to written discovery requests after offering such responses as a substitute for the inventors' deposition testimony contributed to the compressed time frame at the close of fact discovery and left the court with a choice between compelling discovery before resolution of objections or, alternatively, disrupting the balance of the case schedule. (See, e.g., D.I. 109, Ex. 5 at 2) ("Plaintiffs have or will soon respond to discovery requests from Rubicon that address the very same issues" the inventors would address in their depositions).
The Court also found that granting the stay would prejudice defendants, by preventing it from developing its improper inventorship defense. It denied the motion to stay.
What Happens Now?
I have to wonder, what happens now? The patentee objected to the magistrate judge's ruling compelling the depositions to take place but, by the time the Article III judge is able to address the objections, the depositions will have already taken place.
Does that mean that the the objections are moot? Or will the Court rule on them anyway, perhaps striking the transcripts if it sustains the objections?
It's hard to say, and we'll have to see. But I expect it may make for an interesting follow-up post regardless.
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