There was an interesting discovery dispute order from Judge Burke yesterday. In Sysmex Corporation et al v. Beckman Coulter, Inc., C.A. No. 19-642-RGA-CJB (D. Del.) (a case we've previously discussed), due to COVID issues, defendant has been unable to depose the inventor—an employee of plaintiff—since the deposition was noticed over eight months ago.
Now, fact discovery is closed, summary judgment motions are due today, and the case is scheduled for trial in February 2022—but the plaintiff still hasn't provided the inventor for a deposition.
The defendant wisely moved to stay the case pending deposition of the inventor. In ruling on the motion, Judge Burke emphasized how important the inventor is to the case:
It is hard to deny that, in terms of his positioning relative to the issues in this case, Mr. Imazu is an important witness. He is a longtime employee of Plaintiff Sysmex Corp., he is one of four inventors on both of the two patents-in-suit (there are only four inventors total; the same four inventors are on both of the two patents) and he worked on the creation of (and at certain points, was a team leader with regard to) Sysmex products that are asserted prior art to the patents-in-suit or that are asserted to read on the claims of those patents. . . . It certainly seems possible that Mr. Imazu would have relevant information regarding certain currently pleaded defenses, including anticipation, obviousness and inequitable conduct.
He also pointed out how obvious the prejudice is here:
[W]ith regard to the undue prejudice factor, it also favors Defendant. It is not hard to see why the absence of a stay would cause Defendant real prejudice. Imagine that your company was being sued for patent infringement, and that you were told at the beginning of the case that you would only be able to take the deposition testimony of a key inventor (who works for the opposing party, and who should know quite a lot about the issues at play in the case), until long after discovery closes, at a time when the summary judgment process is nearly over and just a few months before trial is to start. What reasonable patent attorney or client representative in those shoes would not say: "I am unduly prejudiced!"
The Court granted the stay and vacated the remaining dates on the calendar.
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