Court Concludes Defendant’s Request was “precisely the kind of disproportionate discovery that Rule 26—old or new—was intended to preclude.”

Gilead Sciences, Inc. v. Merck & Co., Inc., No. 5:13-cv-04057-BLF, 2016 WL 146574 (N.D. Cal. Jan. 13, 2016)

In this case, the court addressed Defendant’s motion to compel production of additional discovery and, applying newly amended Fed. R. Civ. P. 26(b)(1), determined that Defendant’s request was “precisely the kind of disproportionate discovery that Rule 26—old or new—was intended to preclude.” Accordingly, the motion was denied.

In this patent infringement case, Defendant sought additional discovery regarding the contents of certain “tubes of compounds” pictured in a photograph produced by Plaintiff’s expert in related Canadian litigation, claiming it “should not have to take [Plaintiff’s] word as to what exactly [was] in those tubes.” Plaintiff claimed that the contents of the tubes were not the compound at issue in the case.

Taking up Defendant’s motion to compel, the court began with a discussion of proportionality:

Proportionality in discovery under the Federal Rules is nothing new. Old Rule 26(b)(2)(C)(iii) was clear that a court could limit discovery when burden outweighed benefit, and old Rule 26(g)(1)(B)(iii) was clear that a lawyer was obligated to certify that discovery served was not unduly burdensome. New Rule 26(b)(1), implemented by the December 1, 2015 amendments, simply takes the factors explicit or implicit in these old requirements to fix the scope of all discovery demands in the first instance.

What will change—hopefully—is mindset. No longer is it good enough to hope that the information sought might lead to the discovery of admissible evidence. In fact, the old language to that effect is gone. Instead, a party seeking discovery of relevant, non-privileged information must show, before anything else, that the discovery sought is proportional to the needs of the case. The present dispute offers a good example of the wisdom of the Advisory Committee on Civil Rules in elevating proportionality in defining the scope of permissible discovery.

Turning to the specific facts of the case, the court noted that Defendant “ha[d] long had information from [Plaintiff]” that confirmed the contents of the pictured tubes, including a laboratory notebook and a letter from the source of the photograph, and that Defendant offered “no real evidence” to contradict Plaintiff’s representations. Accordingly, the court concluded, “[Defendant’s] demands are exactly the type of disproportionate demands that Rule 26(b)(1) proscribes.”  The court went on to note that Defendant’s request would put Plaintiff “[i]n the position of having to produce discovery on all sorts of compounds that bear no indication of any nexus to the disputes in this case,” and analogized the request to “requiring GM to produce discovery on Buicks and Chevys in a patent case about Cadillacs simply because all three happen to be cars.”

Ultimately, the court concluded that “[i]n the absence of any reason to doubt the proof [Plaintiff] has tendered about the identity of the disputed compounds, and given the cost and potential delay introduced by the requested production, [Defendant’s] request is precisely the kind of disproportionate discovery that Rule 26—old or new—was intended to preclude.”  Defendant’s motion was therefore denied.

A full copy of the court’s short order is available here.

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