I've heard certain kinds of orders from the Court be referred to as "blog bait"—things that you just know we are going to post about. A couple of topics fall into that category: Pennypack decisions, significant decisions on redactions, interesting § 101 opinions, and so on.
The common thread is that these are all things that come up a lot. They happen early in the case, before cases tend to settle or otherwise resolve. And they can have significant implications for the parties and the attorneys involved. You don't want to be the attorney who is forced to do line-by-line redactions of 6,778 pages of exhibits because you didn't follow the rules.
Taking the Bait
Today's oral order definitely falls into a similar category. Yes, we've written about many discovery disputes, but that's because it's really helpful when the Court lays out guidelines for how parties should be resolving disputes. That is not all that uncommon, but most often it happens in transcripts.
Those transcripts are often either inaccessible or difficult to access for attorneys who aren't in the case. Often, the transcript never makes it to the docket at all. Even if it make it to the docket, they are precluded from public release to encourage attorneys to buy them at the higher court reporter transcript rates. And even once they hit the docket, PACER charges much higher rates for transcripts than other documents—I've paid $40 for a transcript that I thought would make a good post, only to find that it was useless.
That's one reason why, when the Court gives some guidance on a frequently-litigated topic, we tend to post about it!
An Obviously Insufficient Response
Here, the Court addressed a motion to compel interrogatory responses. It denied the motion as moot, but also went out of its way to note that the relevant interrogatory response was "obviously insufficient" and the parties should have been able to work this out themselves:
ORAL ORDER: The Court, having reviewed Plaintiff’s discovery dispute motion . . . hereby ORDERS as follows: (1) Because the Motion seeks discovery regarding Plaintiff’s trade secret misappropriation claim, and because there is no such claim that is part of a currently operative complaint, . . . the Motion is DENIED as MOOT.; and (2) That said, the Court offers the parties the following guidance with respect to the Motion: (a) These disputes really never should have reached the Court. For example, Defendant’s bare bones response to Interrogatory (“ROG”) No. 17 was obviously insufficient, . . . and the parties should have been able to work out a date for supplementation of that ROG (mindful of the timing of relevant productions of trade secret misappropriation-related discovery) that was mutually acceptable, without requiring Court intervention.
Agilent Technologies, Inc. v. Axion BioSystems, Inc., C.A. No. 23-198-CJB, D.I. 311 (D. Del. Mar. 6, 2025).
What was the interrogatory response? The plaintiff had essentially asked a contention interrogatory for reasons that each of its own trade secrets were invalid, and the defendant responded with a rote recitation of various reasons that trade secrets can be invalid (unconnected to the facts of the case):
INTERROGATORY NO.17: For each trade secret identified in [plaintiff] Agilent's response to Axion's Interrogatory No. 13, state whether Axion contends that it does or does not constitute a trade secret, and state all facts supporting that contention.
. . .
[Defendant] Axion states that Agilent has failed to identify any information in response to Axion's Interrogatory No. 13 with sufficient particularity to constitute a trade secret. Further, the information identified in response to Axion's Interrogatory No. 13 constitutes information that has been made public, including in Agilent's public annual reports, investor reports, and scientific publications. The information identified in response to Axion's Interrogatory No. 13 also constitutes information that is readily ascertainable by proper means such as a general market analysis. In addition, Agilent has failed to establish that Agilent has taken reasonable measures to maintain the secrecy of the alleged trade secrets identified in response to Axion's Interrogatory No. 13. Further, Agilent has failed to establish that Agilent derives economic value from the alleged trade secrets identified in response to Axion's Interrogatory No. 13 not being generally known or that Axion has obtained economic value from the disclosure or use of any alleged trade secret identified in response to Axion's Interrogatory No. 13.
Id., D.I. 210-1 at 7-8. This response tracks the core requirements of what constitutes a trade secret, without anything specific to the case other than the fleeting reference to "Agilent's public annual reports, investor reports, and scientific publications." If this were a sufficient response, with nothing more, contention interrogatories would be pointless.
You may say "well, plaintiff has the burden, they should have to go first," and that's true. But it looks like they did—their letter says they offered 15 pages of explanation regarding their 43 trade secrets, plus 35 related pages describing measures to protect those secrets, their value, and so on.
Court Suggests Party Should Have Accepted Compromise Offer
The Court offered some more guidance related two RFP responses. Those requests sought "all valuations" and documents related to funding and investment. The defendant initially flat-out refused (via objections), but offered this compromise in its answering discovery dispute letter:
Axion is willing to produce (a) any valuations of the company that it has from 2020-present (RFP 133), and (b) documents pertaining to any funding rounds/investment in Axion that were related to actual or planned M&A activity from 2021-present (RFP 134). This proposed scope is more appropriate in view of [the alleged source of the trade secrets] Dr. Ferrick’s limited time (January 2022-July 2023) at Axion.
Id., D.I. 211. The Court held that the plaintiff should have built on this compromise or just accepted it:
(b) Additionally, after Defendant proposed a compromise as to the dispute over RFPs No. 133 and 134, (D.I. 200 at 2), the parties should have gotten on the phone and worked out a deal as to the right starting date (Plaintiff should have done its best to try to get Defendant to do a little better, and if it couldn’t, it should have taken Defendant’s 2020 proposal and moved on, because that proposal was reasonable—in light of the fact that Dr. Ferrick, whose arrival at Defendant is the triggering event for the trade secret misappropriation claim, didn’t start working at Defendant until January 2022).
Id., D.I. 311.
Potential Fee Award If There Are Future Disputes
Finally, the Court told the parties to work harder, and suggested consequences for a party who doesn't:
Mindful of the above, if the parties encounter further fact or expert discovery disputes in this case, they should work harder on the front end than they did here to see if they can resolve them, so as to avoid (for example) a fees and costs order pursuant to Fed. R. Civ. P. 37 when the Court ends up resolving any such dispute later on.
Id.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
