Intellectual Property Law

Magistrate Judge Burke: Motion for Leave to Take Expedited Discovery Granted-in-Part

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

In Kone Corp. v. Thyssenkrupp USA, Inc., C.A. No. 11-465-LPS-CJB (D. Del. Sept. 26, 2011), Magistrate Judge Burke granted-in-part the plaintiff's motion for expedited discovery in connection with the plaintiff's motion for a preliminary injunction. Judge Burke stated that the appropriate test for evaluating a request for expedited discovery in the context of a preliminary injunction is the "good cause"/"reasonableness" standard, requiring "the party seeking discovery to show 'good cause' for its motion, such that the request is 'reasonable' in light of the relevant circumstances." Id. at 7, 12.

Applying this standard to the facts of the case, the court found that "[t]he circumstances of this case, including its procedural posture, weigh in favor of granting expedited discovery" with respect to the pending preliminary injunction motion. Id. at 12. First, the preliminary injunction motion had already been pending for approximately three months, and the defendants had already filed answers more than six weeks earlier. Id. Thus, "absent the pending preliminary injunction motion, the Court would already have scheduled a Rule 16 teleconference and the parties would otherwise have commenced the discovery process." Id. Second, "because much of the information at issue would likely have been turned over anyway by Defendants soon after a Rule 16 conference[,]" expedited discovery was likely to streamline the case. Id. at 13. Third, "expedited discovery is more likely to be an efficient use of the parties' resources when it relates to a pending preliminary injunction hearing, where it can help to ensure a clear and focused factual record." Id.

Although the plaintiff was able to show "a need for discovery relating to certain, circumscribed subject-matter that may illuminate issues at play at the preliminary injunction hearing[,]" Judge Burke found that the plaintiff's discovery requests were "not narrowly tailored." Id. at 14. Thus, the court granted the motion for expedited discovery, but only with respect to "the key disputed factual issue relevant to the P.I. motion hearing[.]" Id. at 15.

Kone Corp. v. Thyssenkrupp USA, Inc., C.A. No. 11-465-LPS-CJB (D. Del. Sept. 26, 2011)

Full post as published by Delaware IP Law Blog on September 29, 2011 (boomark / email).