"Yes, we need to know their financials for our permanent injunction. It totally won't help us in settlement negotiations or anything."AI-Generated, displayed with permission
This is another one where I saw a potentially useful order about an issue that comes up from time to time, and thought "I should write a blog post about that, so I can find it later." I hope this will be helpful for others as well.
Last week in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), the Court addressed the question of whether a plaintiff in a "competitor-competitor" patent case could compel production of the defendant's corporate-level financials. It held that no, it could not, …
Over 10 years ago, the District of Delaware adopted its "Default Standard" for discovery, which sets forth several basic rules for discovery, particularly in patent actions.
One of the rules is the requirement to produce "core technical documents" early in the case:
Within 30 days after receipt of the [list of accused products and asserted patents], each defendant shall produce to the plaintiff the core technical documents related to the accused product(s), including but not limited to operation manuals, product literature, schematics, and specifications.
Pretty quickly after its adoption, the Court held that this includes non-public documents, after parties started trying to skirt the rule by dumping user manuals on the patentee.
If there is one thing that tends to kill discovery motions, it's delay. If you want to have the best chance of winning your motion to compel, supplement, strike, etc., you need to bring the motion early. Don't wait.
We got a good example of that last week in CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-JLH, D.I. 163 (D. Del. Apr. 9, 2024). There, a defendant sought to compel a deposition of an inventor before a Markman hearing, arguing that the testimony was important for claim construction. The Court denied the request, in part because they waited too long:
ORAL ORDER: The Court has reviewed the discovery …
On Wednesday, Judge Fallon issued a memorandum order in Kurt Morales II v. Sunpath Ltd., C.A. No. 20-1376-JLH-SRF (D. Del.), a class action suit alleging that various defendants are telemarketers who made robocalls violating the Telephone Consumer Protection Act.
More than three years into the litigation, counsel for one of the defendants, Sunpath Ltd., withdrew, and the Court ordered Sunpath Ltd. to retain new counsel. D.I. 232. When it failed to do so, the clerk entered a default against it. Id.
Plaintiff argued that Sunpath defaulted specifically to avoid having to face discovery. D.I. 265 at 1. Plaintiff therefore served a subpoena on Sunpath's e-discovery vendor Everest Discovery, LLC who, unsurprisingly, pushed back. …
This is a dispute I've seen come up in a few cases. The D. Del. Default Standard for Discovery includes a provision about search terms, setting forth that if a party uses search terms to locate responsive documents, it must disclose the search terms and allow the opposing party to request up to 10 additional terms.
This provision can cause some confusion. Sometimes parties read the Court's Default Standard, see the search term provision, and think that's the only way to collect ESI. Or, sometimes, a party really wants to dictate search terms to the other side, and argues that the Default Standard requires the use of search terms.
It's not uncommon to see discovery requests and 30(b)(6) topics asking about the location of documents. In fact, up until 2015, Rule 26 specifically provided for this kind of discovery:
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense--including the existence, description, nature, custody, condition, and location of any documents or other tangible things . . . .
In 2015, in a (highly commendable) effort to shorten Rule 26, that example was dropped. Now it just reads:
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case . . …
Stipulations to extend time are a popular, both as a topic on this blog and in how routinely they are filed. Usually, stipulations to extend time are granted without incident, so we highlight the outliers as reminders that sometimes there’s more to it than mere agreement between the parties.
Don’t forget! If you’re stipulating to extend the:
Deadline for discovery completion, or
Postponement of trial
You must include the reasons for the request in your stipulation or motion. And the local rules require you to include either a supporting affidavit by the requesting counsel’s client or a certification that counsel has sent a copy of the request to the client.
This latter requirement reminds me of pre-college: in which students who received sub-optimal test scores needed to get a parental signature to prove to the teacher that the parent had seen the score and reviewed the offending test.
The parties in The Trustees of the University of Pennsylvania v. Genentech, Inc., C.A. 22-145-MN-JLH demonstrated how to correct deficiencies. Earlier this month, Judge Noreika issued an oral order denying their prior ...
Judge Fallon made an opinion public today that deals with whether a plaintiff can get discovery on unlaunched, abandoned, and future products in the lead up to a preliminary injunction hearing. The Court held that discovery on those products was not proportional to the needs of the case:
Zwift has shown that the document discovery requested by Wahoo is not proportional to the needs of the case at this stage of the proceedings. (D.I. 72) The complaint establishes that Wahoo was aware of Zwift’s unlaunched and abandoned hardware products, yet it did not raise these products in its motion for a preliminary injunction, indicating that the relevance of the requested discovery to the preliminary injunction inquiry …
Although we have a "default standard" for discovery in DE, there's a lot of leeway for deviation based on the facts of the case. More (or fewer) custodians, more (or less) metadata, search terms that call eldritch horrors from their squalid caches -- pretty much anything is on the table.
Pretty much.
There's always a line somewhere, and I think we found it last week in Acceleration Bay, LLC v. Amazon Web Services, Inc. C.A. No. 22-904-RGA-MPT (D. Del. Nov. 22, 2022). The defendant, AWS, wanted to include the following passage in the ESI Order:
Acceleration Bay shall not seek email discovery relating to infringement or damages, except that Acceleration Bay …
I thought I'd share an old transcript that has come in handy a number of times since it issued back in2013, where Judge Andrews made a helpful ruling about how and when patentees must respond to conception date interrogatories—an issue that comes up frequently.
In Vehicle Interface Techs., LLC v. Jaguar Land Rover N. Am., LLC, C.A. No. 12-1285-RGA (D. Del.), the defendant filed a discovery dispute to compel a full response to an interrogatory asking for the date of conception and reduction to practice.
The patentee had responded, but the answer was not very helpful. According to the discovery dispute letter:
[The patentee] stated that the sole inventor . . …
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