Intellectual Property Law

Judge Joseph J. Farnan, Jr.: There Are Limits to Discovery

By Karen E. Keller, Andrew A. Lundgren et al.

Parties to litigation, and particularly high stakes patent litigation, spend a lot of time and money discovering facts that may prove their case or defense. Judge Farnan in a recent opinion has made clear, however, that there are limits to what a party can obtain under the rules. Purdue Pharma Products, L.P. v. Par Pharmaceuticals, Inc., C.A. No. 07-255-JJF, Memo. Order (D. Del. Aug. 26, 2008).

The Court in Purdue Pharma, granted a third party's motion to quash a subpoena which sought documents related to an opposition to the European counterpart of the patent-in-suit and documents related to the knowledge a non-party foreign individual that was working on similar technology. In deciding to grant the motion, the Court found that the foreign patents and printed publications sought from the subpoenaed party are available without the defendants burdening the courts, the parties or foreign individuals. Id. at 5. The information related to a foreign individual's potential "knowledge or use" of the patented product is not prior art and is "too peripherally relevant to the matter at issue to justify issuing a letter request under the Hague Convention." Id.

Lesson learned: Parties seeking to burden both the district courts, foreign tribunals and foreign individuals in the quest for documents and testimony should be able to demonstrate that the information is sufficiently relevant to the litigation to "justify the burden and expense." Id. at 6.

For a copy of the opinion see here.

Full post as published by Delaware IP Law Blog on September 03, 2008 (boomark / email).