The Delaware Default Standard for Discovery, discussed on these pages before, contains both patent- and non-patent-specific discovery rules and limits. Among them are a six-year limit on certain discovery in patent cases and a 10-custodian limit for electronic discovery. When the Default Standard is incorporated into the scheduling order (as it often is), its provisions are no longer guidelines or default provisions, but instead are requirements the parties must abide by, and which cannot be changed absent a showing of good cause.
Last week, Judge Burke resolved a number of discovery disputes in U.S. v. Gilead Sciences, Inc., C.A. No. 19-2103-MN, using the Default Standard (incorporated by reference into Judge Noreika's scheduling order) to guide his analysis.
First, Judge Burke denied the government's request for documents regarding manufacturing costs and other factors considered by defendant Gilead in pricing decisions in 2004:
The Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI") (the "Default Standard") sets a presumption that discovery from six years or more before the case's filing will not be permitted. . . . Here, in the few sentences of argument on this point in its briefing, . . . the Government does not provide enough information to establish the requisite good cause. During the teleconference, the Government suggested that good cause was established because it was only in 2004, and at no time thereafter, that Defendants had extensive discussions relating to the factors contributing to Truvada pricing decisions. However, that assertion is merely attorney argument, as there is no record evidence before the Court supporting such a conclusion.
Judge Burke also limited document discovery regarding Board of Directors meetings where pricing or the patents-in-suit were discussed to six years prior to the complaint, but did permit some discovery on those topics within the six-year period.
Finally, Judge Burke denied-in-part the government's request for "targeted searches" for three additional ESI custodians:
[T]he Default Standard provides that a party must search the ESI of up to 10 custodians, . . . and Defendants have already done so, [s]o Plaintiff must show good cause as to why more should be required.
A for two of the custodians, the Judge found that they were unlikely to have sufficient responsive or relevant information to establish good cause for departing from the 10-custodian limit. For example, one of the custodians was an inventor on a piece of prior art that was not among the obviousness combinations in the final invalidity contentions, and was "just one of many pieces of prior art referenced in those contentions."
As to the third custodian, it was "undisputed that she is included on very relevant communications regarding, inter alia, certain material transfer agreements at issue in this case." Defendants asserted that responsive documents in her possession would be cumulative. But, just as he discounted attorney argument regarding the timing of pricing decisions, Judge Burke noted that the defendants bore the burden to establish cumulativeness, and failed to create a record for such a finding.
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