Chief Judge Stark Limits Access to Confidential Information to Legal Counsel

August 18, 2016

Publication| Intellectual Property

In Cosmo Technologies Ltd. v. Lupin Ltd., C.A. No. 15-669-LPS (D. Del. July 28, 2016), a protective order dispute, Chief Judge Stark adopted the plaintiffs’ definition of “legal personnel” and denied the defendants’ request to extend the default time period under which plaintiffs should search for responsive documents.

The defendants opposed the proposed definition of “legal personnel” because it would prevent defendant Lupin Limited’s (“Lupin”) designation of a particular non-attorney staff member of its intellectual property management group to serve as one of the two designees allowed to receive access to the plaintiffs’ confidential information under the protective order. The plaintiffs, Cosmo Technologies Ltd., Valeant Pharmaceuticals International, and Valeant Pharmaceuticals Luxembourg S.à r.l., proposed to define “legal personnel” as “attorney, lawyer, counsel, solicitor, or the equivalent title outside the United States,” although Lupin argued that the staff member (based in India) serves essentially the same role as in-house counsel would in the United States.

Chief Judge Stark ruled that Lupin would not be unfairly disadvantaged by adopting the plaintiffs’ definition, since Lupin could already designate one in-house attorney to receive confidential information; additionally, as a non-attorney, the staff member would not have the same professional obligations as in-house counsel and would be more likely to be involved in competitive decision making. Accordingly, Chief Judge Stark adopted the plaintiffs’ definition of “legal personnel.”

The Court also denied the defendants’ request to extend the period for locating responsive documents beyond the period provided for in the Delaware Default Standard for Discovery (i.e., six years before the filing of the lawsuit). The defendants argued that the period of the plaintiffs’ discovery efforts should extend to the plaintiffs’ decision to develop the product claimed in the patents-in-suit, but Chief Judge Stark noted that the Default Standard already expressly requires the production of documents related to conception or reduction to practice of the inventions. Moreover, the plaintiffs agreed to consider specific requests for additional older documents upon the articulation of a specific good faith need.

Key Points: The existence of discrete events relating to issues in litigation will not necessarily justify the duty to search for responsive documents over the entire period spanning backwards to such events.

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