It's a tough scenario: you think your opponent might have assigned away their patent rights, but you aren't exactly sure. And the only way you could know for sure is with information you don't have.
Most of the time in D. Del., disputes like this are addressed in a hearing transcript or an oral order. They don't make headlines, and they never hit Lexis or Westlaw, but they often provide helpful guidance for the future.
Yesterday, Judge Burke issued an oral order denying a request to compel a plaintiff to turn over its litigation funding documents. The defendants knew that the plaintiff had third-party litigation funding (and suspected that there might have been some assignment of patent rights), but the plaintiff refused to produce the underlying agreement and communications.
Judge Burke denied the request, taking the plaintiff at its word that the agreement didn't have any sort of assignment provision:
Yet Defendants acknowledge that they have no facts or evidence to suggest that the agreement does or might have such a provision (and Plaintiff's counsel has stated to the Court, on the record, that the agreement, in fact, does not). The Court agrees with Plaintiff that this amounts to seeking discovery based on pure speculation (and not on a baseline showing of relevance), which is prohibited
Was there a way to win this motion without seeing the agreement? Maybe not. But this order highlights the importance of having something to hang your relevance argument on. Otherwise your motion to compel is probably DOA.
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