The question of whether a defendant has to produce foreign sales information seems to come up more frequently these days in patent cases, with plaintiffs coming up with new ways to reach—or at least attempt to reach—those sales in U.S. patent cases.
Yesterday, Magistrate Judge Hall resolved a dispute about whether a plaintiff is entitled to discovery on foreign sales. She held that even though their foreign-sales damages theory appeared shaky, the foreign sales discovery was warranted:
ORAL ORDER: Having reviewed the parties' letters in connection with the motion for teleconference to resolve discovery dispute, and having heard oral argument via teleconference on March 7, 2022, IT IS HEREBY ORDERED that the second and third disputes are resolved in accordance with the Court's ruling during the teleconference. As to the first dispute, the Court is skeptical of Plaintiff's foreign-sales damages theory (as well as its liability theory); however, the Court is not inclined to rule in the context of this discovery dispute proceeding (and on this briefing) that such damages cannot (as a matter of law) ever be recoverable in this context. Accordingly, the Court finds that a limited production of foreign sales information is appropriate. Defendant represents that it has already produced summarized sales data for accused products to the extent Defendant "has knowledge of a U.S. importation." Defendant shall also produce summarized sales data for foreign sales to the extent it does not know (e.g., because it does not track) whether such products ultimately make their way into an end product that is imported into the United States.
ID Image Sensing LLC v. Omnivision Technologies, Inc., C.A. No. 20136-RGA-JLH, D.I. 90 (D. Del. Mar. 7, 2022).
According to Plaintiff's discovery dispute letter, its damages theory was that some amount of foreign sales are later imported into the US under the Carnegie Mellon case that Judge Noreika relied on last year:
IIS is entitled to have information for worldwide sales of the Accused Products which is relevant to at least its indirect infringement theory of inducement. Damages for inducement would encompass sales of all Accused Products sold worldwide that were incorporated into other products of Omnivision’s customers and that were imported back into the United States. See Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd., 807 F.3d 1283, 1308 (Fed. Cir. 2015).
That's something to keep in mind going forward—foreign sales data may be reachable more often than people tend to think.
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