Delaware’s Default Standard for Discovery requires that plaintiff “specifically identify the accused products and the asserted patent(s) they allegedly infringe” within 30 days of the Rule 16 Scheduling Conference. So, if the accused products were not identified in the complaint itself, they must be identified early in discovery. But what is the scope of discovery on products that were not specifically identified in the complaint or accused before the Default Standard deadline?
Can plaintiffs seek information regarding “substantially similar” models? Generally, this question is answered on a case-by-case basis using three factors found in in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 282 (D. Del. 2012):
(1) [A]s to relevance, the specificity with which the plaintiff has articulated how the unaccused products are relevant to its existing claims of infringement (and how they are thus “reasonably similar” to the accused products at issue in those claims);
(2) [W]hether the plaintiff had the ability to identify such products via publicly available information prior to the request; and
(3) [T]he nature of the burden on defendant(s) to produce the type of discovery sought.
In an order last week, Judge Fallon denied plaintiff’s motions to compel defendant to supplement discovery, answer interrogatories, and produce documents as to additional accused products by analyzing these three factors, though Invensas was not cited.
First, the Court found that supplying a link to a Specifications Guide—coupled with an assertion that the same or substantially the same products are accused—is not sufficient to disclose the accused products with sufficient particularity. Second, the Court found that details regarding the products had been publicly available, and plaintiff was not dependent on defendant to identify similar products. Third, the Court found that the link to the Specifications Guide provided insufficient notice to the defendant, given that defendant would be obligated to provide technical and financial discovery for each of the hundreds of additional products that plaintiff sought to accuse.
This seems like a clear-cut example in which all three factors weighed against the Court granting plaintiff's motions to compel discovery, but there are other examples in which motions to compel have been granted when only one factor appeared to be missing. See JSDQ Mesh Techs. LLC v. Peabody Energy Corp., JSDQ Mesh Techs. LLC v. Rio Tinto Am. Inc., C.A. Nos. 14-1338-GMS & 14-1341-GMS (2015 Transcript) (showing plaintiff was successful in a motion to compel the defendants to respond to an interrogatory asking them to “identify other systems that are within the scope as the system” that the plaintiff accused in the complaint; defendants claimed that plaintiff could review the products themselves since they were “all commercially available”, but the motion might have been granted because plaintiff was only seeking to identify of the products rather than detailed discovery about those products).
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