We're back! It looks like a fair number of opinions and orders have accumulated during out hiatus, and we're looking forward to digging into them (seriously—the hardest part of writing the blog is finding things to write about).
Last week, Judge Williams issued a fairly lengthy opinion on a motion to compel production of documents from before the Default Standard's 6-year discovery provision.
For those who are not aware, the District of Delaware's Default Standard limits "follow-up" discovery in patent actions, with some exceptions, to a period of six years prior to the complaint (tracking the limitation on patent damages under § 286) absent a showing of good cause:
Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.
This can be a real limitation on discovery for cases in which the Default Standard applies (which is not all cases). And while parties occasionally reach the Court with a dispute where one party is trying to make the required showing of good cause to get around it, it's not as common as you might think.
But it is an issue that applies to just about every patent case, so it is great to see a detailed opinion from the Court about it. In Roche Diabetes Care, Inc. v. Trvidia Health, Inc., C.A. No. 24-668-GBW (D. Del. July 9, 2025), Judge Williams addressed a motion to compel production of various discovery prior to the six-year cutoff under the default standard.
The Court addressed four categories of documents and interrogatory responses, and ordered production of most of them. The Court ordered production of:
- Development documents
- First sale / demonstrate / manufacture / launch documents
- Documents regarding knowledge of the asserted patents, and the plaintiff's products and methods
The Court denied the motion to compel production as to:
- Damages and reasonable royalty documents
The Court's reasoning for each category provided some useful insights.
As to development information, the Court made some statements that would seem to apply in every case—but also relied on the fact that the defendant asserted a § 273 prior use defense, and had itself sought documents from before the six-year cutoff:
Roche seeks to compel Trividia to produce concern "research, development, design, functionality, and testing of the Trividia Accused Products and Methods" and also the "regulatory approval of the Trividia Accused Products." . . . . [T]he Court grants Roche's Request . . . in light of the following: (1) this category of documents and interrogatory responses are relevant to the infringement analysis; (2) this category of documents and interrogatory responses are relevant to Trividia's prior use defense under 35 U.S.C. § 273; (3) Trividia does not respond to Roche's assertion that this category of documents and interrogatory responses are relevant to Trividia's prior use defense under 35 U.S.C. § 273; (4) Trividia does not sufficiently support its assertion of undue burden; and (5) to ensure parity arising from Trividia's request, and Roche's agreement, for Roche to produce documents from before the six-year cutoff for discovery in the Delaware Default Standard.
Id. at 4.
As to first sale information, a lot of the Court's reasoning is going to apply to other cases:
Roche seeks to compel Trividia to produce concern "the first sale, use, demonstration, manufacture, and launch of the Trividia Accused Products and Methods." . . . [T]he Court grants Roche's Request . . . in light of the following: (1) this category of requested documents is relevant to the willful infringement analysis; (2) that Roche, at least according to Trividia, "already knows when the accused products were introduced" does not necessarily mean that Roche knows the date when the alleged infringement began since infringement can, as discussed in the previous paragraph, begin on dates other than when the accused products were introduced; (3) the date of first infringement appears to indisputably be well before the six-year cutoff for discovery from the Delaware Default Standard for Discovery; (4) that the alleged infringement apparently began before the statutory cut-off date for damages does not preclude the hypothetical negotiation date from taking place on the day infringement began; and (5) to ensure parity arising from Trividia's request, and Roche's agreement, for Roche to produce documents from before the six-year cutoff for discovery in the Delaware Default Standard for Discovery.
Id. at 4-6. In particular, many cases involve willful infringement and a hypothetical negotiation that took place more than six years prior to the case.
As to information regarding knowledge of the patents, the Court required only that the patentee had asserted willfulness, and that the accused infringer had itself sought documents from before the six-year cutoff:
Roche seeks to compel Trividia to produce concern "Trividia's knowledge and/or analysis of Roche's patents, products, and/or methods, of Trividia's infringement, and copying." . . . the Court grants Roche's Request to Compel, with respect to this category of documents and interrogatory responses, in light of the following: (1) this category of requested documents and information is relevant to the willful infringement analysis; (2) whether Roche, as Trividia contends, admitted that it did not provide actual or constructive notice of infringement to Trividia does not foreclose willful infringement; and (3) to ensure parity arising from Trividia's request, and Roche's agreement, for Roche to produce documents from before the six-year cutoff for discovery in the Delaware Default Standard for Discovery.
Id. at 6-7.
Finally the Court denied the motion to compel as to damages information for the period when damages could not be recovered, rejecting an argument that they are relevant to reasonable royalty.
All told, one factor that cut across all of the Court's analyses is that the accused infringer had itself sought documents from prior to the six-year cutoff, and compelling production would ensure "parity." I didn't catch any discussion of what those documents were, and whether they were "discovery related to asserted prior art or conception and reduction to practice" provided by the rule, or something else. Either way, this suggests that, at least in Judge Williams' cases, an accused infringer should think carefully before requesting documents from prior to the six-year cutoff.
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