Intellectual Property – Discovery

March 25, 2010

Publication| Intellectual Property

Judge Farnan Grants Plaintiff’s Motion to Compel Testimony
In WebXchange Inc. v. FedEx Corp., et al., C.A. No. 08-133-JJF (D. Del. Jan. 20, 2010), Judge Farnan granted plaintiff’s motion to compel testimony and denied defendants’ motion to strike a supplemental response to its interrogatory, for a protective order, and for leave to file a surreply in opposition to the plaintiff’s motion to compel.  Defendants sought a protective order to prevent plaintiff from taking deposition testimony about their shipping system, arguing that plaintiff did not allege that their shipping system infringed the patents-in-suit in its second supplemental interrogatory response.  The reference to the shipping system was allegedly new to the untimely third supplemental response, which defendants moved to strike.  Judge Farnan examined the Pennypack factors to determine whether the Rule 26(e) breach of the duty to supplement was harmless under Rule 37(c)(1).  The Court noted that the parties had extensively discussed the shipping topic, thereby eliminating any prejudice to defendants from surprise.  A related dispute between the parties explained the timing of plaintiff’s responses, and Judge Farnan did not find any bad faith.  Because he found any untimeliness in the third response to be harmless error, Judge Farnan did not consider whether the shipping allegation was sufficiently disclosed in the second supplemental response.  For these reasons, and because the Third Circuit disfavors exclusion of discovery, Judge Farnan denied the motion to strike and for a protective order.  He also denied plaintiff’s motion for leave to file a surreply as unnecessary and granted plaintiff’s motion to compel testimony on the subject of shipping.  Under Rule 37(a)(5), Judge Farnan concluded that plaintiff was not entitled to fees and costs incurred in making the motion because defendants were substantially justified in opposing plaintiff’s list of deposition topics.

Magistrate Judge Stark Rules on Various Discovery Disputes
In Teles AG Informationstechnologien v. Cisco Systems, Inc., C.A. No. 09-72-SLR-LPS (D. Del. Dec. 28, 2009), Magistrate Judge Stark denied Teles’s request to remove the “confidential” designation from Cisco’s discovery relating to commercial success, which Teles alleged was wrongfully withheld from the patent office.  The Court held that there was no evidence that such evidence was wrongfully withheld.  Magistrate Judge Stark found that Cisco had properly instructed its witness to refuse to answer questions outside the limited scope of damages-related discovery in this bifurcated case, and denied Teles’s request for an additional Rule 30(b)(6) deposition of one of Cisco’s witnesses.  Magistrate Judge Stark ordered Cisco to provide further responsive revenue data to Teles and to produce a witness for a deposition to explain how revenue data for a certain period was maintained.  Teles argued that one of Cisco’s witnesses was unprepared, but Magistrate Judge Stark found his testimony adequate and denied the request for an additional deposition.  Magistrate Judge Stark ordered Teles to produce a witness who could testify to the full scope of two of the topics in the deposition notice, since the previous witness was unable to do so for the relevant time period.     Cisco sought the production of a binder in which the order of documents could be relevant to Cisco’s case.  Teles claimed the binder could not be found, and Magistrate Judge Stark ordered Teles to make additional efforts to determine whether the binder could be located or recreated.  Finally, Cisco had requested that Teles allow six third-party depositions after the deadline for fact discovery.  Teles denied all but one; their reason for denying the sixth was that “enough is enough.”  Magistrate Judge Stark granted Cisco’s request for all six.

Magistrate Judge Thynge Issues Discovery Order Regarding Privilege
In Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR (D. Del. Dec. 23, 2009), Bosch moved to compel the production of certain documents in the possession of Pylon.  Specifically, Bosch sought documents detailing the communications between Pylon and a supplier.  In response, Pylon argued that the documents were subject to a common interest privilege.  Bosch maintained that such documents were discoverable because the opinions of counsel shared between the supplier and Pylon were not subject to any common interest or joint defense strategy, and that any privilege had been waived because Pylon voluntarily produced documents that reflected the advice of counsel.  In determining whether to grant Bosch’s motion to compel, the Court engaged in an extensive analysis regarding privilege, waiver, the crime/fraud exception and the joint defense privilege.  Ultimately, Magistrate Judge Thynge found that the documents were privileged under the joint defense doctrine, declined to find that the privilege had been waived, and denied Bosch’s motion to compel.

Magistrate Judge Thynge Issues Discovery Order Regarding the Production of Documents                                           
In Eurand, Inc., Cephalon, Inc. and Anesta AG v. Mylan Pharmaceuticals, et al., C.A. Nos. 08-899-SLR, 09-018-SLR (D. Del. Dec. 9, 2009), Mylan sought the production of plaintiffs’ confidential lab notebooks and other research and development documents that were related to plaintiffs’ NDA, Mylan’s ANDA and the patent-in-suit.  In support of its arguments, Mylan relied primarily on Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2003), In re Napier, 55 F. 3d 610 (Fed. Cir. 1995), and In re Grasselle, 713 F. 2d 731 (Fed. Cir. 1983).  The Court disagreed with Mylan’s reading of Schering, finding that Schering does not stand for the proposition that non-prior art data (or non-public data) is relevant to an objective inquiry.  As a result, Magistrate Judge Thynge denied Mylan’s request for certain documents and materials related to plaintiffs’ NDA, Mylan’s ANDA and the patent-in-suit, and granted Mylan’s request for disclosure of factual evidence upon which plaintiffs rely concerning the secondary considerations of the claimed formulation by ordering plaintiffs to supplement their responses to interrogatories and document requests. 

Magistrate Judge Stark Orders Parties to Comply with Discovery Agreement
In St. Clair Intellectual Property Consultants, Inc. v. Research in Motion, Ltd., et al., C.A. No. 08-371-JJF-LPS (D. Del. Nov. 24, 2009), Magistrate Judge Stark ordered the parties to comply with a voluntary agreement between them settling earlier discovery disputes, denied defendants’ request that plaintiff log certain documents and communications that were highly likely to be both privileged and irrelevant (and thus not likely to lead to the discovery of admissible evidence), and ordered defendants to pay an amount not to exceed $50,000 to reimburse plaintiff for its actual cost incurred in the restoration of electronically stored information.

Magistrate Judge Stark Issues Discovery Order
In B. Braun Melsungen AG, et al. v. Terumo Medical Corp., et al., C.A. No. 09-347-JJF-LPS (D. Del. Nov. 18, 2009), Magistrate Judge Stark granted in part and denied in part plaintiffs’ requested relief and denied defendants’ requested relief.  Magistrate Judge Stark granted plaintiffs’ request that defendants provide initial responses to plaintiffs’ infringement contentions, which they had failed to do within 30 days after service as required by Rule 33(b)(2).  Defendants were given 12 days to comply.  Plaintiffs sought supplemental responses to their interrogatories, but because they failed to identify which interrogatories, Magistrate Judge Stark denied the request.  Magistrate Judge Stark denied defendants’ request for supplemental infringement contentions, since plaintiffs had already adequately responded and defendants’ requests depended on unresolved claim construction disputes.  Magistrate Judge Stark denied defendants’ application with respect to their interrogatory and document requests relating to plaintiffs’ conception and reduction to practice of the claims because defendants’ invalidity contention did not rely on any prior art that required plaintiffs to form such contentions.  Finally, the Court denied as premature a motion to compel discovery relating to disputes that had not yet been the subject of a meet-and-confer.

Magistrate Judge Stark Rules on Provisional Damages Discovery and Extends Trial Date                                               
In Arendi Holding, Ltd. v. Microsoft Corp., et al., C.A. No. 09-119-JJF-LPS (D. Del. Nov. 4, 2009), Arendi sought discovery concerning provisional damages for sales of the accused products made after Microsoft learned of Arendi’s published patent application.  Arendi informed defendants of its provisional damages theory after the negotiation of the scheduling order, and Magistrate Judge Stark issued this discovery order to accommodate the new theory.  Magistrate Judge Stark allowed additional discovery on protocol license and other license agreements, and ordered the parties to come to a resolution of a dispute over source code production.  Because the introduction of the provisional damages theory would no longer allow the case to proceed on a fast-track basis, Magistrate Judge Stark allowed Arendi to amend its complaint to include a claim for willful infringement.  Partly because of this new claim and partly because the case was not bifurcated, Magistrate Judge Stark adopted defendants’ recommendation that fact discovery be extended by four months and that trial be pushed back to December 2010. 

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