The issue presented in this case was to what extent parties can use proceedings in a district court “as a mere tool to better posture their positions” with regard to other proceedings, for example in proceedings before the PTAB. The answer was pretty emphatic.
Fair warning – my January 2019 celebrity crushes are Jaylon Smith and Marie Kondo, so you may be seeing somewhat strained metaphorical references to both. I think that Marie Kondo would be terribly frustrated by civil litigation because orders often spark joy only in part. In cases like this one, it may be because the court is addressing both a substantive issue – do I get what I’m asking for – and a procedural one – did I ask for it correctly? So let’s see if the request for overseas depositions sparked joy for the Court.
This is an order resolving a motion to compel on damages issues in a patent case. At issue was whether the Defendants, a parent and a subsidiary, were required to provide financial data on infringing sales made by the parent to entities other than the named sub, and whether Defendants were required to provide financial data for certain additional products. The Court granted one but denied the other, citing the “p” word and providing a useful list of things not to do to preserve a claim for discovery.
Let’s say you defeat an adversary in litigation, and you’re looking for assets from which a judgment can be satisfied. Can you get discovery into your former opponent’s disposition of assets? The answer is yes, but not prior to when you made your claim. Why? Because it would not be proportional to the needs of the case. This order makes that finding, but then defines what discovery would be “proportional” under the circumstances.
Protective orders sometimes have provisions allowing only certain in house persons to see some types of confidential information. When these provisions aren’t followed, bad things can happen, as the allegations in this case show.
One of the unique characteristics of the Eastern District’s 1991 CJRA Plan was the creation of a discovery hotline which allows litigants to get a ruling from a judge in real time on a discovery dispute. This latest ruling arises, as most do, from a dispute over whether a specific set of questions during a deposition was admissible.
Spoiler alert: they’re both granted in part.
But it’s always worth laying out the facts in motions to compel to see what the court found justified relief and what didn’t. In addition, this is the rare order that even mentions the new “proportionality” standard in amended Rule 26.
Come to think of it, with general jurisdiction rare, and specific jurisdiction also hard to come by – maybe there is a romance novel in there someplace. When you can get jurisdictional discovery and what you can get are beyond the scope of this order in a case where the existence of personal jurisdiction was challenged. But it does tell you what the timing would be and how it affects your briefing schedule.
This recent order resolves a motion to compel and for discovery sanctions in a patent case dealing with issues of (1) which products were actually in the case; and (2) whether a late disclosure was curable.
Several weeks ago I posted on Judge Payne’s order on inadequate infringement contentions, which culminated in an order that the plaintiff pay Defendants’ reasonable expenses, including attorneys’ fees, incurred as a result of several motions seeking to compel it to comply with the Local Patent Rules governing infringement contentions. The parties were unable to reach agreement on the amount of costs, and earlier this week Judge Payne issued his order resolving the issue.
