A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: discovery

Yesteday, Judge Stark issued an opinion on various discovery disputes and objections in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del. Sept. 21, 2021). Here are a few helpful nuggets from the opinion:

He declined to order defendants to respond to 30(b)(6) topics like the following, except for identifying "all persons substantively involved" because that language is "vague and overbroad":

The research, development, design, testing and validation of each of Your Accused Products, including when they were developed and identity of all persons substantively involved in their design and development.

He ordered defendants to produce a corporate witness on the following topic, including an order to describe contemplated and future filings with the …

Patentees in federal court litigation are generally not required to identify every accused product in their complaint. Often, the complaint and early contentions identify an exemplary product or two, and the larger list of related accused products is hashed out during discovery. Simply identifying an exemplary product, however, does not entitle the patentee to demand that the defendant do all the work of identifying - and producing technical discovery on - similar products.

Judges in this District have historically limited patentees' ability to obtain discovery into unaccused products without articulating some basis for believing that those unaccused products infringe, or at least share some relevant characteristic with the products alleged to infringe in the complaint and/or contentions. Judge Burke regularly wades into these waters, applying a multi-factor test that acknowledges the relevant burdens but also leaves room for practical adjustments to those burdens where necessary.

That test was applied recently by Judge Burke in Fundamental Innovation Systems International LLC v. TCT Mobile (US) Inc., C.A. No. 20-552, and his analysis demonstrates...

PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails
PLEASE STAND BY . . . while we figure out why we only produced 13 e-mails RCA

Yesterday, Magistrate Judge Fallon granted a motion for sanctions against One World Technologies, Inc., a defendant in a patent action, for failing to produce the bulk of its e-mail until 13 months after the plaintiff's initial request.

Defendant One World initially produced only 13 e-mails in response to plaintiff's requests, served back in April 2020. According to a later declaration of counsel, One World's attorneys had received multiple gigabyte's worth of .pst files containing e-mail from the agreed-upon custodians. But they found those files to be corrupted, and they relied on their clients' determination that all but 134 of the e-mails were unrecoverable. …

Penny
Adam Nir, Unsplash

As we've discussed, parties sometimes treat the deadline for "substantial completion of document production" as a soft deadline, doing a "rolling production" afterwards that can be quite voluminous. An opinion from Judge Bibas today shows the risk of not taking that deadline seriously.

In the opinion, Judge Bibas excluded over 60,000 rows of spreadsheet sales data that were produced by a defendant in an Fair Labor Standards Act class action, after the defendant waited until six months after the deadline for substantial completion of document production to produce the data.

As usual for Judge Bibas, his opinion is an interesting read and a bit different from what we typically see from other judges in Delaware. …

Judge Andrew's In re Chanbond opinion an Friday focused primarily on reopening discovery, but it also addressed a second issue, which I thought merited a separate post.

Shortly before trial, in a reply brief, Defendants sought production of an "Advisory Services Agreement" between the plaintiff and third party IPNav. They had previously informally requested the document at a deposition, and renewed that request as part of their motion to reopen discovery after the document's importance became apparent in light of the standing dispute. Defendants request at the deposition was apparently on the record, and Plaintiff indicated it would look for the document, but Defendants did not follow up with a formal document request:

I agree with Plaintiff that Defendants …

Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger)
Le Duel a l'Épée et au Poignard (The Duel with the Sword and Dagger), Jacques Callot

After we talked last week about an unsuccessful effort to bypass the Court's discovery dispute procedures, I thought it might be interesting to talk about what those procedures are, for people who don't practice here day in and day out.

A discovery dispute is a special procedure that allows the parties to receive a (relatively) quick hearing to resolve issues that arise during discovery. Bringing a discovery dispute is the only way the Court allows the parties to address these kinds of discovery issues in a typical District of Delaware case (including both patent and non-patent cases).

Is This in the Rules or What?

Discovery disputes are not mentioned in the local rules, but all of the judges have discovery dispute procedures in their form scheduling orders. ...

Google tells me
Google tells me "hide the ball" is a football thing. Dave Adamson, Unsplash

In Guest Tek Interactive Entertainment, Ltd. v. Nomadix, Inc., C.A. No. 18-1394-RGA (D. Del.), plaintiff sent RFPs for various financial documents, but defendant produced only a single page profit and loss statement for each year, claiming no more was available.

Plaintiff brought a discovery dispute and asked Judge Andrews to order production of any further documents in defendant's possession.

Judge Andrews declined. Instead, he sua sponte suggested that the parties resolve this via a 30(b)(6) deposition about the kinds of financial information that defendant keeps:

[D]o a 30(b)(6) deposition and find out if there are any other documents. And you know, …

Stop Sign
Luke van Zyl, Unsplash

This week, Judge Burke issued an interesting oral order on a discovery dispute about the admissibility of "new" expert opinions in rebuttal reports.

In the order, he sets forth a simple baseline test for what a party has to show to strike purportedly "new" expert opinions in a rebuttal report. To succeed in striking a "new" theory, a party must show at least:

(a) how they clearly disclosed that theory well before final . . . contentions were due . . . ; (b) how the same theory was thereafter found in their opening expert reports . . . ; and (c) how [the opposing party] never provided any substantive response to that theory until …

Restricted Data Notice
"Restricted Data" stamp, RestrictedData, CC BY 2.0

In another part of the opinion mentioned earlier today, Judge Burke set forth his views on the scope of discovery in a trade secret action—an issue that comes up a lot, along with the related issue of the disclosure of the alleged trade secrets:

As to what is not relevant trade secret discovery: what [Plaintiff] is not entitled to do is to set out a claim in Count IX for trade secret misappropriation—i.e., a claim involving a certain set of alleged facts, occurring in a certain alleged time frame, involving a certain referenced set of persons and a certain type of purported misconduct—and then say to [Defendant], “Now that we have …

Judge Burke yesterday unsealed a lengthy opinion addressing a range of discovery disputes in a pending trade secret litigation.

In one instance, plaintiff sought to force a further response to a broad interrogatory, and complained that Defendant's broad answer omitted important time periods. The interrogatory asked:

[D]escribe in detail the stage of R&D, design, documentation, clinical work, marketing and/or sales of the [relevant product] at the time [Defendant] or anyone on behalf of [Defendant] was in first contact with any Former [Plaintiff] Employee . . . .

Judge Burke denied the request, noting that the time periods Plaintiff complained about were from before the alleged trade secret theft, and therefore it was not clear why they were relevant. He also …