For decades, judges in D. Del. have enforced a general rule that you can’t serve 30(b)(6) topics on a party’s contentions. The rationale is simple: it just isn’t fair to burden a single witness with that much information. Contention interrogatories can achieve the same the same goal, without forcing a 30(b)(6) witness to sit for the most stressful memory test of their life.
In a discovery order on Friday, Judge Andrews highlighted an important corollary to this rule: you can’t get around it by framing your contention topic as a request for “all facts” about a party’s contentions. The judge found that all four of these examples were improper contention topics:
- Investigations, tests, studies, surveys, interviews, reviews, analyses and documents related to, and all facts supporting any contention that Nomadix infringes the Asserted Claims of the Asserted Patents.
- Any infringement by any person or entity of any of the Asserted Patents, any awareness by Guest Tek of such infringement, and any belief that such infringement has occurred—including the basis for such infringement, awareness, or belief, the identities of the persons knowledgeable about such basis, the identities of the alleged infringers, the dates of the alleged infringement, and all other facts relating to such alleged infringement, awareness, or belief.
- Guest Tek’s factual basis for alleging willful infringement or that Nomadix intends others to infringe the Asserted Patents.
- Prior art to any of the Asserted Patents, including any prior art search, analysis of the validity of any of the Asserted Claims in any of the Asserted Patents, and analysis of the scope and content of prior art to any of the Asserted Patents.
Bonus pointer: don’t wait to bring your motion to compel until depositions are almost over. After lamenting “the sorry history of their dispute on this issue[,]” Judge Andrews concluded that the defendant waived any request for relief by waiting too long to raise it:
When last I was discussing issues with the parties, on December 1, 2020, no one brought this issue up. (D.I. 197 at 12-13). Under the circumstances, I think it is too late for Defendant to bring this up, and I consider Defendant’s request for relief to be waived.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
