Yesteday, Judge Stark issued an opinion on various discovery disputes and objections in Natera, Inc. v. ArcherDX, Inc., C.A. No. 20-125-LPS (D. Del. Sept. 21, 2021). Here are a few helpful nuggets from the opinion:
He declined to order defendants to respond to 30(b)(6) topics like the following, except for identifying "all persons substantively involved" because that language is "vague and overbroad":
The research, development, design, testing and validation of each of Your Accused Products, including when they were developed and identity of all persons substantively involved in their design and development.
He ordered defendants to produce a corporate witness on the following topic, including an order to describe contemplated and future filings with the FDA, because the defendant had asserted a safe harbor defense:
The circumstances and communications relating to regulatory status of any of Your Accused Products.
He denied plaintiff's request for a 30(b)(6) witness relating to valuation of one of the defendants before it was acquired, as irrelevant.
While contention 30(b)(6) topics are generally impermissible in Delaware, Judge Stark rejected the idea that the following was a contention topic:
Your knowledge of facts relating to whether Natera filed its patent applications only after one of its senior executives left Natera, began working for ArcherDX, gained access to confidential information relating to ArcherDX’s Accused Products and then returned to Natera and that Natera did not invent the method of amplifying DNA employed in the AMP process.
Judge Stark also held that "deposing a corporate witness (or witnesses) on an unbounded set of documents . . . would be unduly burdensome," but nonetheless ordered the party to produce a witness on the topic after they meet and confer on its scope.
Finally, just the fact that a number of 30(b)(6) requests were denied also shows that you can—and should—object to improper 30(b)(6) topics, even if there is no formal process for doing so.
Even Short Discovery Opinions Are Less Common Than You Might Think
While resolving 30(b)(6) objections may seem mundane, these kinds of opinions can be surprisingly helpful. Why? Because—at least from the perspective of Delaware counsel—some of the same kinds of disputes recur over and over in Delaware patent cases.
But even though these kinds of disputes come up a lot, we see relatively few written opinions. Instead, most discovery issues in Delaware are resolved using the Court's very efficient discovery dispute procedures, which are great, but which do not typically result in lengthy written opinions (although the judges do at times resolve them in short written "oral orders" on the docket).
And, while court reporters are present for discovery dispute teleconferences, the transcripts are often omitted from the docket even if a party purchases a copy. In that case, the Court's rulings may be totally unavailable unless you want to pay the reporter's rate—potentially hundreds of dollars—and wait for them to send you the transcript. That can be a tough sell if you aren't absolutely sure that the transcript has something that you need.
One benefit of Delaware counsel is that we tend to collect (and sometimes blog about!) these sorts of rulings, and may well have useful answers from prior cases, even to surprisingly obscure questions. But no firm is in every case, and it would be nice to have a system where court transcripts end up on PACER more often.
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