Judge Andrews Amends Discovery Order to Include Production of Documents from Plaintiff’s Previous Related Patent Infringement Case

July 11, 2017

Publication| Intellectual Property

In Sonos Inc. v. D&M Holdings, Inc., C.A. No. 14-1330-RGA (D. Del. June 2, 2017) (the “14-1330 Case”), and related case D&M Holdings, Inc., et al. v. Sonos Inc., C.A. No. 16-141-RGA (D. Del. June 2, 2017) (the “16-141 Case”), Judge Andrews issued an amended discovery order requiring plaintiff Sonos, Inc. (“Sonos”) to produce materials from a previous 2014 patent infringement case to defendant D&M Holdings, Inc. (“D&M”). Specifically, D&M sought: (1) expert reports, declarations, and deposition testimony of three of Sonos’ experts, who were also experts in a 2014 patent infringement case brought against Sonos by a third party; and (2) deposition testimony and declarations of Sonos’ fact witnesses from the same litigation. In making the request, D&M claimed that Sonos’ wireless audio systems, which were accused of infringement in the prior 2014 litigation, were the same products accused of infringement in the 16-141 Case and were the commercial embodiments of the patents asserted in the 14-1330 Case. In response, Sonos argued that the production requested was relevant only to the 16-141 Case and not the 14-1330 Case.

The Court agreed with Sonos that the materials requested were more relevant to the 16-141 Case than the 14-1330 Case. However, because Sonos offered to produce the materials to D&M in the 16-141 Case, there was no extra burden on Sonos to produce the same materials in the 14-1330 Case. Even though the Court acknowledged that the decision may have been different if there had only been one case, the fact the Court found the materials relevant to one case influenced the decision to order production in both cases.

Key Points: This decision highlights that Judge Andrews may require the production of materials from related patent cases if there is minimal burden on the producing party and there is a marginal possibility that some of the material will be relevant to the present case.

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