Intellectual Property – Discovery

June 6, 2012

Publication| Intellectual Property

Magistrate Judge Burke Denies Plaintiffs’ Motion to Compel and Requires Plaintiffs to Narrow Requests for Documents

In Medicis Pharmaceutical Corp., et al. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB (D. Del. Apr. 30, 2012), Magistrate Judge Burke denied plaintiffs’ motion to compel production of documents because plaintiffs’ requests were “substantially overbroad.” Plaintiffs argued that the documents were relevant to their claim of infringement under the doctrine of equivalents. Defendant argued that plaintiffs’ requests had minimal relevance and were well outweighed by the significant burden that defendant would face in producing them. The Court found in favor of defendant, holding that plaintiffs’ requests were not focused on the product or similar products at issue. Further, the Court noted that the document requests were substantially overbroad because the requests demanded “any documents referring or relating to the development, formulation and design of any product that happens to contain one of the ingredients.” The Court ordered that the document requests be “limited to certain narrow categories of [defendant’s] products” that are more closely related to the product at issue. The Court also noted that during the Court’s teleconference with the parties, even plaintiffs’ counsel appeared to acknowledge the overbreadth of such requests.

Magistrate Judge Burke Denies and Grants in Part Motions to Strike Expert Reports

In Wyeth Holdings Corp. et al. v. Sandoz, Inc., C.A. No. 09-955-CJB (D. Del. Mar. 14, 2012), Magistrate Judge Burke denied plaintiffs’ motion to strike and granted in part defendant’s motion to strike. Both motions related to expert reports on invalidity. Both plaintiffs and defendant challenged the timeliness of the opposing side’s final expert reports. Plaintiffs argued that it was improper for defendant to introduce the opinions of an expert at the reply stage. The Court disagreed, finding it permissible for an expert to serve his first report at the reply stage, so long as that report was properly and narrowly focused on responding to an opposition report.

The Court granted defendant’s motion to strike part of plaintiffs’ expert report because plaintiffs served it more than three weeks after the date the last expert reports were required to be served. The scheduling order prohibited service of reports beyond the reply stage absent leave of the Court or consent of all parties, neither of which plaintiffs had. After finding the report untimely, the Court analyzed the Pennypack factors to determine whether plaintiffs’ noncompliance was harmless or substantially justified. Ultimately, the Court allowed plaintiffs’ expert to testify to the information contained in the first half of the report, but struck the second half of the report because the opinions went beyond the legitimate scope of a rebuttal.

Magistrate Judge Thynge Orders Plaintiffs to Supplement Interrogatory Responses

In Quantum Loyalty Systems, Inc., et al. v. TPG Rewards, Inc., C.A. No. 09-022-SLR-MPT (D. Del. Mar. 6, 2012), Magistrate Judge Thynge ordered plaintiffs to supplement their responses to an interrogatory. Defendant’s interrogatory requested that plaintiffs provide a claim chart showing why defendant’s older prior art products would not infringe the patent at issue. Plaintiffs objected to providing such information because, according to plaintiffs, the interrogatory was seeking work product. Magistrate Judge Thynge disagreed and found that defendant was requesting information related to its invalidity defense and ordered plaintiffs to provide defendant the information requested in the interrogatory.

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