A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Default Standard

The Delaware Default Standard for Discovery, discussed on these pages before, contains both patent- and non-patent-specific discovery rules and limits. Among them are a six-year limit on certain discovery in patent cases and a 10-custodian limit for electronic discovery. When the Default Standard is incorporated into the scheduling order (as it often is), its provisions are no longer guidelines or default provisions, but instead are requirements the parties must abide by, and which cannot be changed absent a showing of good cause.

Default Standard
Default Standard Default Standard for Discovery, U.S. District Court for the District of Delaware

Last week, Judge Burke resolved a number of discovery disputes in U.S. v. Gilead Sciences, Inc., C.A. No. 19-2103-MN, using the Default Standard (incorporated by reference into Judge Noreika's scheduling order) to guide his analysis.

First, Judge Burke denied the government's request for documents regarding manufacturing costs and other factors considered by defendant Gilead in pricing decisions in 2004:

The Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI") (the "Default Standard") sets a presumption that discovery from six years or more before the case's filing will not be permitted. . . . Here, in the few sentences of argument on this point in its briefing, . . . the Government does not provide enough information to establish the requisite good cause. During the teleconference, the Government suggested that good cause was established because it was only in 2004, and at no time thereafter, that Defendants had extensive discussions relating to the factors contributing to Truvada pricing decisions. However, that assertion is merely attorney argument, as there is no record evidence before the Court supporting such a conclusion.

Judge Burke also limited document discovery regarding Board of Directors meetings where pricing or the patents-in-suit were discussed to six years prior to the complaint, but did permit some discovery on those topics within the six-year period. ...

New Tricks?
New Tricks? Go to Charles Deluvio's profile Charles Deluvio, Unsplash

The Delaware Default Standard for Discovery, which has been around in its present form for about a decade now, applies to some extent in every Delaware patent case. Given how frequently discovery issues are litigated in Delaware, I was somewhat surprised to see a new ruling from Judges Connolly and Hall clarifying a bit of the Default Standard that I don't believe has ever come up before.

In addition to describing the initial exchange of contentions and the format for ESI production, the Default Standard also sets a presumptive limit on the time period for discovery:

Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.

Default Standard Section 4(e)

The question that arose this month in LEO Pharma A/S et al v. Glenmark Pharmaceuticals Ltd., C.A No. 20-1359-CFC-JLH, D.I. 60 (D. Del. May 25, 2021), was what is "follow-up discovery"? ...

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here.