An increasing number of district courts have issued orders in patent cases exhibiting an effort to continue the progression of depositions while balancing the need to avoid in-person gatherings by attempting to complete whatever possible via videoconferencing.
District of Arizona (Phoenix)
District Judge Rodney Smith
Coolpo Licensing LLC v. Festa et al. – The U.S. District Court for the District of Arizona in Phoenix granted defendant’s motion to dismiss for lack of personal jurisdiction, and denied a request by plaintiff for jurisdictional discovery suggesting that “most of the evidence, supporting the Plaintiff’s position that the Defendants allude to, could be in China” and difficult to obtain due to the COVID-19 pandemic. Although sympathetic to and cognizant of “the obstacles to litigation posed by the ongoing COVID-19 pandemic”, the Court found the “request is based on nothing more than a hunch that it might, if allowed to pursue discovery in China, locate information relevant to the question of jurisdiction.” Further characterizing it as “a particularly speculative hunch” because defendant failed to identify “any reason to believe this hypothetical information would concern enforcement activities by Defendants directed at the state of Arizona or would otherwise be relevant to the question of specific personal jurisdiction.” (Case No. 2:19-cv-05473; June 15, 2020).
Central District of California (Los Angeles)
Magistrate Judge Paul L. Abrams
SkyHawke Techs., LLC v. DECA Int'l Corp., et al. – The U.S. District Court for the Central District of California in Los Angeles granted in part the plaintiff’s Motion to Compel Inspection of Source Code in a Safe Manner, ordering the defendants to allow plaintiff access to the code in a clean room in accordance with certain conditions to ensure the health and safety of the individuals participating in the source code review in light of the COVID-19 pandemic. In particular, to protect the health and safety of the building’s occupants, “access would be subject to certain conditions, including: only one representative of plaintiff (e.g., one lawyer or one expert) would be allowed into defendants’ counsel’s office at a time; plaintiff would be required to provide defendants three business days’ notice of the date(s) for the inspection; the individual entering the office to conduct the inspection would be required to provide contact information, wear a face mask, take his or her temperature, and answer questions about his or her health (e.g., whether the individual had a fever, sore throat, etc.); only one person would be allowed into the clean room to comply with social distancing guidelines; and defendants’ counsel would monitor the inspection by remote camera.” (Case No. 2:18-cv-01234, presiding before District Judge George W. Hu; June 1, 2020).
District Judge John A. Kronstadt
Valentino SpA v. Mario Valentino SpA et al. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles denied defendants' Amended Joint Motion for a Protective Order to Stay the Parties' Discovery Obligations for Sixty Days, stating that “[a]lthough the COVID-19 pandemic may warrant continuances of discovery deadlines, it does not justify a complete stay of discovery at this time.” On August 10, 2020, the Court granted plaintiff’s Motions to Compels Discovery Responses from defendants, finding good cause and overruling defendants prior objections, except for those based on privileges. Included among the objections specifically overruled was one seeking “[t]hat discovery should be stayed pending resolution of the COVID-19 crises.” (Case No. 2:19-cv-06306; July 9, 2020 and August 10, 2020).
Magistrate Judge Karen L. Stevenson
Lexington Luminance LLC v. Feit Electric Company, Inc. – The U.S. District Court for the Central District of California in Los Angeles granted plaintiff's motion to compel a further contention interrogatory response ordering the defendant to serve a verified supplemental response that fully responds to the interrogatory. The Court noted that “while [defendant] invokes the specter of the ongoing Covid-19 pandemic, [it] offers no evidence whatsoever to show how the public health crisis has impeded its ability to provide a complete response to Interrogatory No.7.” (Case No. 2:18-cv-10513, presiding before District Judge Philip S. Gutierrez; July 21, 2020).
Central District of California (Southern Division—Santa Ana)
Magistrate Judge John D. Early
Pinn, Inc. v. Apple Inc. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana ruled on a number of discovery issues, including a request that the defendant be ordered to verify all its answers to Interrogatories pursuant to Rule 33(b)(3) and (5), and indicated that “[t]he COVID-19 pandemic does not excuse [defendant’s] delay in verifying its interrogatory responses.” The Court ordered that, if it has not already done so, defendant shall serve verifications to its previously served answers to interrogatory within 10 days. (Case No. 8:19-cv-01805, presiding before District Judge David O. Carter; June 11, 2020).
Magistrate Judge Douglas F. McCormick
Panasonic Corporation v. Getac Technology Corporation et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana granted defendant’s motion to compel plaintiff to make available for deposition its employee witnesses from Japan, with the Court ordering that the depositions shall take place on or before September 25, 2020 in the Central District of California, the District of Hawaii, or such other location as agreed upon by the parties. The Court was “at least agnostic” as to whether the depositions must occur in the District, noting that a “deposition from Hawaii – either conducted remotely or in-person – would diminish the witnesses’ burdens, especially if the Japanese government includes Hawaii in a ‘travel bubble’ before the depositions take place.” However, with the current October 5, 2020 discovery cutoff, it was directed that “the depositions need to be on a track to go forward.” The Court further rejected plaintiff’s suggestion of “written depositions”, agreeing with defendant that “won’t satisfy the needs of this complex patent case.” The deadline may be “automatically extended commensurate with any extension of the discovery cutoff date ordered by [the presiding Judge].” (Case No. 8:19-cv-01118, presiding before District Judge David O. Carter; August 6, 2020).
Magistrate Judge Karen E. Scott
Intellectual Pixels Limited v. Sony Interactive Entertainment LLC – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana granted the parties' motion to modify the protective order by entering the Stipulated Covid-19 Addendum To Protective Order to address source code production during the COVID-19 pandemic. In particular, since certain COVID-19 public health orders and advisories make it not possible to permit the parties to inspect source code pursuant to the in-person review procedures of the existing Protective Order the parties agreed to certain alternative provisions that will “continue in effect until the in-person inspection regime of the Protective Order can be reinstated or August 1, 2020, whichever is sooner.” Among other things, the parties agreed that the source code will be shipped by the producing Party to a single agreed upon location, which may include the primary residence of the receiving Party’s Outside Consultant. The parties also acknowledged that depositions may be scheduled during the scope of the COVID-19 Addendum, and they provided for procedures for requesting and using code during a deposition. (Case No. 8:19-cv-01432, presiding before District Judge James V. Selna; May 21, 2020).
Senior District Judge Ronald S.W. Lew
UPL NA, Inc. f/k/a United Phospherus, Inc. v. Tide Int’l (USA), Inc. et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana granted in part the parties’ motion to stay due to discovery efforts impacted by the COVID-19 outbreak. The court acknowledged the obstacles outlined by the parties, which included obtaining materials and testimony from witnesses outside of the U.S., including in China, and granted their request to vacate multiple discovery deadlines. However, the court denied the parties’ request to stay the Markman hearing scheduled for March 10, 2020, noting that all briefs and supporting documents had already been submitted to the court and that the parties had previously agreed not to present live expert testimony. (Case No. 8:19-cv-01201; March 6, 2020).
Northern District Of California (Oakland Division)
Magistrate Judge Donna M. Ryu
Semicaps Pte Ltd. v. Hamamatsu Corp., et al. – The U.S. District Court for the Northern District of California in Oakland deferred processing two unopposed motions made by defendants for issuance of letters of request for international judicial assistance due to the closure of the courthouse in response to the COVID-19 public emergency. The requested process requires “a deputy clerk to physically accompany an attorney or designated person to the post office to witness the mailing of the relevant documents and then execute a declaration.” The court noted that “[d]ue to the continuing COVID-19 public health emergency, the Oakland Courthouse remains closed to the public and essential courthouse operations have been relocated to the San Francisco Courthouse. Accordingly, the court will wait to process the two motions for issuance of letters of request until the Clerk's Office is fully operational.” (Case No. 4:17-cv-03440; April 17, 2020).
Magistrate Judge Alex G. Tse
Simplehuman, LLC v. iTouchless Housewares and Products, Inc. – The U.S. District Court for the Northern District of California in Oakland issued a Discovery Order requiring defendant to submit a declaration before issuing a ruling regarding the timing of its production of emails for four custodians.The Court was not persuaded based on the existing record that the defendant cannot access and search the remaining custodian email files due to its COVID-19-related office closure, and therefore it requested information regarding the operations and accessibility by employees of its San Mateo office operations, whether the relevant files can be accessed remotely, how long it would take to download the files if they are not remotely accessible, and “any other information pertinent to [defendant’s] ability to access, search, and produce the remaining custodian emails in a safe and timely manner.” (Case No. 4:19-cv-02701, presiding before District Judge Haywood S. Gilliam, Jr; August 25, 2020).
Magistrate Judge Kandis A. Westmore
Droplets, Inc. v. Yahoo, et al. – The U.S. District Court for the Northern District of California in Oakland granted defendants’ motions to strike plaintiff’s third amended infringement contentions and granted Plaintiff leave to amend its infringement contentions once it has reviewed Defendants’ source code and technical documents. On April 27, 2020, the Court had previously issued an order requiring the defendant to conduct an exhaustive search and produce certain missing documents and source code within 30 days, further stating that “[i]f the COVID-19 pandemic and resulting shelter-in-place orders continue, the parties shall meet and confer regarding whether a secure means exists to produce the source code remotely or if precautions may be taken to enable [plaintiff] to safely review the source code on a secure computer.” The Court found that leave to amend the contentions was warranted despite the prior three amendments, because plaintiff did not have access to all of the relevant source code and technical documents, and any deficiencies were relatively minor and curable by amendment. (Case No. 4:12-cv-03733, presiding before District Judge Jon S. Tigar; April 27, 2020 and May 6, 2020).
Northern District of California (San Francisco Division)
District Judge Susan Illston
Varian Medical Systems, Inc. v. ViewRay, Inc. – The U.S. District Court for the Northern District of California’s San Francisco Division entered the parties’ joint Proposed Order granting them leave to amend their respective infringement and invalidity contentions, due to defendant’s inability to conduct prior art searches because of COVID-19 related government restrictions making external sources inaccessible. (Case No. 3:19-cv-05697; April 2, 2020).
District Judge William H. Orrick
Intel Corp. v. Tela Innovations, Inc. – The U.S. District Court for the Northern District of California in San Francisco entered the parties’ stipulation and order extending deadlines for compliance with the court’s Order on Discovery (Dkt. 199) and the deadlines for opening and rebuttal expert reports (Dkt. 77), “in light of the recent escalations, social distancing, and health concerns related to COVID-19.” (Case No. 3:18-cv-02848; March 18, 2020).
Chief Magistrate Judge Joseph C. Spero
Canon, Inc., v. TCL Electronics Holdings, Ltd., – The U.S. District Court for the Northern District of California’s San Francisco Division denied a third party Motion to Modify and/or Quash plaintiff’s Subpoena and for Protective Order, finding that the parties had failed to meet and confer adequately in good faith and further noting that “[a]t a time when the country and the world is facing a health crisis, the court expects counsel and the parties to make extra efforts to resolve discovery issues amicably.” At issue was a request for production for remote review of proprietary source code by counsel and experts from anywhere, including from their own homes, as opposed to a secured environment that is more typical for source code review. The Court ordered the parties to meet and confer by video conference within ten days of the order and to report back any “unresolved issues”. (Case No. 3:20-cv-80079; May 8, 2020).
Southern District of California (San Diego)
District Judge Roger T. Benitez
Victaulic Company v. Allied Rubber & Gasket Co., Inc. d/b/a ARGCO et. al. – The U.S. District Court for the Southern District of California in San Diego granted plaintiff’s Motion For Sixth Extension Of Time to Serve Summons and Complaint on Defendant And Ordering Service By Electronic Means. In particular the Court ordered the Plaintiff “to publish notice of the suit, in the Wall Street Journal - Asia edition (electronic format), to run for four (4) consecutive weeks, in the region containing Defendant’s principal place of business . . . [and] to also serve the Defendant with copies of the summons, Complaint, and all other associated documents and Chinese translations via the email address located on the Defendant’s webpage under the “Contact Us” tab.” In granting the motion for an extension, the Court noted that “the delay is not attributable to Plaintiff, but rather stems from the Chinese Central Authority’s slow-walk in facilitating the request” and the COVID-19 pandemic “has likely complicated service efforts in China and will undoubtably result in additional service delays in the future.” The Court further found alternative service under Rule 4(f)(3) was necessary, because “we are in the midst of a massive global crisis. COVID-19 has radically altered life as we know it. . . . [and with] that comes changes to the way we must do business so that matters like this case keep moving, rather than sitting stagnant . . . .” (Case No. 3:17-cv-01006; May 8, 2020).
Magistrate Judge Bernard G. Skomal
Impact Engine, Inc. v. Google LLC – The U.S. District Court for the Southern District of California in San Diego issued an Order Re Tolling Of 30-Day Discovery Dispute Deadline, granting some requests to toll the deadline and supplement, while denying others for which a date certain was not known. With respect to the supplementation of interrogatory responses that were dependent on how the parties decide to accomplish source code inspection and when the Bay Area’s and California’s shelter-in-place orders are lifted, the Court ordered the parties to “meet and confer to propose an alternative method for parties to inspect source code, whether it involve remote access with a secure network or any other alternative method that would be compatible while following COVID-19 guidelines.” (Case No. 3:19-cv-01301, presiding before District Judge Cathy Ann Bencivengo; May 18, 2020).
District of Delaware (Wilmington)
District Judge Richard G. Andrews
Gracenote, Inc. v. Free Stream Media Corp. d/b/a Samba TV – The U.S. District Court for the District of Delaware in Wilmington granted the parties’ joint stipulation to stay the case for 90 days and to extend all deadlines in the Scheduling Order by approximately 90 days. The parties requested the stay because of the impact that the COVID-19 pandemic has had on the ability of plaintiff to access and review defendant’s source code and the unlikelihood of accessibility occurring in the near future. Specifically,
- (1) reviewing the source code requires in-person inspection at a secure terminal pursuant to the parties’ Source Code Access Agreement;
- (2) the source code is located in California which is subject to Executive Order N-33-20 requiring all California residents to stay at home;
- (3) plaintiff’s counsel are located in Illinois and New York, both of which are subject to stay-at-home orders; and
- (4) both plaintiff’s technical experts capable of conducting the in-person review reside in foreign countries, one of whom is from the Netherlands and barred from entry into the U.S. pursuant to the entry ban on travelers from Europe, and one of whom is subject to a substantial risk that he would be prohibited from returning to his home in Chile if he traveled to the U.S.
The Court granted a Joint Stipulation to further stay the case for an additional 80 days and to extend all deadlines in the Scheduling Order by approximately 80 days. The extension was required due to the lack of access to defendant’s source code because of the on-going effects of the COVID-19 pandemic, including “the current spike in the number of COVID-19 cases in California, where the source code can be made available,” and the inability of the technical experts to travel from their international locations to the code. (Case No. 1:18-cv-01608; April 14, 2020 and July 15, 2020).
IPA Technologies Inc. v. Amazon.com, Inc. – The U.S. District Court for the District of Delaware in Wilmington granted the parties’ Joint Stipulation and Order requesting the extension of discovery due to the impact of the COVID-19 pandemic. The Order moved the Fact Discovery deadline from October 2, 2020 to December 4, 2020, as well as extending the dates for other discovery proceedings. (Case No. 1:16-cv-01266; August 18, 2020).
Circuit Judge William C. Bryson
British Telecommunications PLC v. IAC/InteractiveCorp., et al. – The U.S. District Court for the District of Delaware postponed three Rule 30(b)(6) depositions due to Dallas County stay-at-home directives and a lack of access to relevant documents physically located in an office currently closed on account of the COVID-19 pandemic. While the court reasoned that civil discovery depositions are likely not "essential" business, it held that a Rule 30(b)(1) deposition may still occur via videoconference if it can be conducted lawfully under Dallas County directives regarding “essential services.” (Case No. 1:18-cv-00366; March 26, 2020).
Magistrate Judge Christopher J. Burke
Pharmacyclics LLC et al v. Fresenius Kabi USA, LLC et al. – The U.S. District Court for the District of Delaware in Wilmington granted plaintiffs' motion to compel two defendants to produce their communications with another defendant regarding testing of certain API samples. As part of its analysis regarding the proper scope of the discovery, the Court indicated it was mindful that the trial is scheduled to begin in October 2020, and “that obtaining discovery from witnesses located abroad during the COVID-19 pandemic may be challenging.” (Case No. 1:18-cv-00192, presiding before District Judge Colm F. Connolly; May 19, 2020).
District Judge Maryellen Noreika
Chugai Pharma. Co., Ltd. a/k/a Chugai Seiyaku Kabushiki Kaisha v. Alexion Pharma., Inc. – The U.S. District Court for the District of Delaware in Wilmington granted an additional extension to the case schedule after the parties agreed that the extensions were warranted in light of the impact of the COVID-19 pandemic. The deadline for the Final Infringement Contentions was moved from August 26, 2020 to October 21, 2020. Other major dates were likewise extended with the Pretrial Conference moved from July 12, 2021 to September 27, 2021. (Case No. 1:18-cv-01802; August 18, 2020).
Finjan, Inc. v. Rapid7, Inc., et al. – The U.S. District Court for the District of Delaware in Wilmington granted the parties’ stipulation and proposed order staying certain deadlines in the case related to expert reports, dispositive motions, and Daubert motions. As part of the justification for the request, the stipulation and order stated that “[t]he COVID-19 pandemic and resulting shelter in place laws have created substantial impediments to the Parties and their experts’ ability to complete expert reports on the current schedule. This includes the inability for experts to travel to and access Defendants’ source code, as Defendants’ facilities are currently closed through June 1, 2020.” (Case No. 1:18-cv-01519; April 16, 2020).
Chief District Judge Leonard P. Stark
IPA Technologies, Inc. v. Amazon.com, Inc., et al. – The U.S. District Court for the District of Delaware granted the parties' motion for temporary modifications to the terms of their protective order governing review of Source Code, in light of the COVID-19 pandemic, and the resulting Federal, State, and local travel restrictions and shelter-in-place orders. The Addendum provides for Source Code inspection, on two computers capable of remotely accessing the producing party Source Code, sent by the producing party to either the receiving party’s outside counsel or instead directly to one or two of the receiving party’s source code reviewers authorized to review source code under the Protective Order. The terms of the Addendum will only remain in effect so long as COVID-19 pandemic restrictions are in effect at the locations of respective relevant parties. (Case No. 1:16-cv-01266; June 22, 2020).
Pfizer, Inc., et al. v. Teva Pharmaceuticals USA, Inc. – The U.S. District Court for the District of Delaware in Wilmington entered the parties’ Stipulation and Order to Stay the Case due to circumstances surrounding the COVID-19 pandemic. The order stays the case for two (2) months until June 30, 2020 and cancels the April 26, 2020 teleconference. Further, the parties are to “file a Joint Status Report requesting either a new case schedule, or further extension of the stay, depending on the circumstances surrounding the COVID-19 pandemic at that time.” (Case No. 1:18-cv-01940; April 23, 2020).
Special Master David A. White
TQ Delta LLC v. ADTRAN Inc. – The U.S. District Court for the District of Delaware in Wilmington, in a Special Master’s Opinion, granted Plaintiff’s Motion to Compel Inspection of Defendant’s Source Code. The Special Master ruled that the plaintiff shall be provided access to defendant’s source code, but further found that the current proposal would appear to violate both the letter and spirit of the Protective Order. Noting that the COVID-19 pandemic presents numerous challenges, the parties were ordered to meet and confer regarding the conditions under which plaintiff may view the source code. (Case No. 1:14-cv-00954, presiding before District Judge Richard G. Andrews; May 15, 2020).
Middle District of Florida (Jacksonville)
Magistrate Judge Patricia D. Barksdale
Depuy Synthes Products, Inc. et al v. Veterinary Orthopedic Implants, Inc. – The U.S. District Court for the Middle District of Florida in Jacksonville granted defendant's motion to compel the production of documents regarding plaintiff's products finding the information relevant and non-cumulative. The Court indicated that it presumed “counsel will work cooperatively and creatively in addressing barriers” based on the pandemic to “the extent that certain of the requested documents are only maintained in paper form at [defendant’s] premises, [and] are currently inaccessible because of stay-at-home orders in place as a result of the COVID-19 pandemic.” (Case No. 3:18-cv-01342, presiding before Senior Judge Harvey E. Schlesinger; June 30, 2020).
Southern District of Florida (Ft. Lauderdale)
District Judge Rodney Smith
BPI Sports, LLC v. ThermoLife Int’l, LLC, et al. – The U.S. District Court for the Southern District of Florida in Ft. Lauderdale denied the parties’ joint request for an extension of time, holding that “COVID-19 alone is not a sufficient basis for extension of pretrial deadlines or the trial date. In today’s highly technological world, restrictions on movement and in-person interactions do not automatically preclude the parties from litigating their case.” The court ordered the parties to conduct depositions via video or other remote means, and further ordered that, if so unable, the parties may file a motion seeking relief provided that the motion:
- is signed by both parties;
- outlines the obstacles faced by counsel; and
- details the diligent efforts undertaken to comply with the order or the reasons why compliance is difficult.
(Case No. 0:19-cv-60505; March 18, 2020).
Northern District of Georgia (Atlanta)
District Judge Steven D. Grimberg
Sanho Corp. v. Kaijet Tech. Int’l Ltd., Inc. d/b/a j5create – The U.S. District Court for the District of Georgia in Atlanta denied plaintiff’s request to compel the appearance of a resident of Taiwan for an in-person deposition in Atlanta, “[p]articularly in light of recent developments concerning the spread of COVID-19 in the United States and across the world.” The court further ordered that said deposition be held via videoconference or teleconference and completed by May 29, 2020. (Case No. 1:18-cv-05385; March 30, 2020).
District Judge Leigh Martin May
LBH Engineers, LLC v. Archer Western Contractors, LLC, et al. – The U.S. District Court for the Northern District of Georgia in Atlanta granted Defendants Georgia Department of Transportation and State Road and Tollway Authority’s motion to dismiss, lifted the court’s stay of discovery, and directed counsel for the remaining parties to conduct a telephone conference and prepare a proposed joint scheduling order. The court “is mindful that additional time for discovery may be needed given the current pandemic.” (Case No. 1:19-cv-04477; March 31, 2020).
Northern District of Illinois (Eastern Division—Chicago)
District Judge Sara L. Ellis
Beijing Choice Electronic Tech. Co., Ltd. v. Contec Medical Systems USA, Inc., et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago granted-in-part plaintiff’s motion to compel multiple requests for discovery and granted plaintiff’s motion for leave to file its reply brief under seal. Though neither party asserted the impacts of the COVID-19 pandemic as a basis for its arguments, in multiple places throughout the 31-page Opinion and Order, the court expressed its expectation that “the parties  work together to account for and accommodate any disruptions, restrictions, and delays that may be caused by the ongoing global coronavirus pandemic.” It is worth noting, however, that the deadline for completion of discovery was extended in this case by 49-days from May 11, 2020 to June 29, 2020, pursuant to the District Court’s Amended General Order 20-0012 and Second Amended General Order 20-0012 regarding the coronavirus public emergency. The Court granted the parties' Joint Motion To Extend Discovery Due To Pandemic-Related Restrictions On Travel From China, ruling that fact discovery closes on August 26, 2020. (Case No. 1:18-cv-00825; April 8, 2020 and August 3, 2020).
Magistrate Judge Gabriel A. Fuentes
Wi-LAN, Inc., et al. v. Motorola Mobility LLC, et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago sua sponte extended the deadline for submitting a Rule 26(f) report by 28-days to April 21, 2020, and further extending all discovery deadlines in the case by 21-days. This order was issued pursuant to the court’s Amended General Order 20-0012, dated March 16, 2020, and in response to the COVID-19 public health emergency. (Case No. 1:19-cv-00941, presiding before District Judge John F. Kness; March 16, 2020).
District Judge Charles R. Norgle
GlobalTap, LLC v. Petersen Manufacturing Co. Inc. et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago granted defendant’s motion to compel plaintiff to produce certain documents, reproduce other documents in legible form and supplement its initial disclosures. The Court further ordered, that [i]n light of the COVID-19 pandemic, plaintiffs must comply no later than September 8, 2020.” (Case No. 1:18-cv-05383; July 16, 2020).
District Judge Martha M. Pacold
Medline Industries, Inc. v. CR Bard, Inc. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago found good cause, after reviewing the parties’ status report, to revoke the further 28-day extension of the expert discovery deadline as provided in the Third Amended General Order No. 20-0012. The parties had completed only one of the seven necessary expert depositions in early 2020, and defendant's opposition to plaintiff's request to revoke the further 28-day extension, from August 25, 2020 to July 28, 2020, is based largely on a desire to conduct the remaining six expert depositions in person. The Court indicated that it “sees no reason to postpone the conclusion of this long-pending discovery for another month in the hope that depositions can safely be conducted in person, when there is a strong possibility that conditions surrounding the COVID-19 public health emergency will not have changed significantly.” Arguments for conducting an in-person deposition of an expert (in lieu of a remote video deposition) in a patent case were found to be not compelling. The use of remote video technology was encouraged as it “exists to reduce the cost of litigation and now to enhance its safety during a pandemic, the likes of which have not been seen in this country since World War I.” (Case No. 1:16-cv-03529; May 20, 2020).
Magistrate Judge Sidney I. Schenkier
RTC Industries, Inc. v. Fasteners for Retail, Inc. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago denied a motion to preclude without prejudice pending the required meet and confer process. Noting that it did not “wish to impose any undue burden on the parties in light of the pandemic,” the court set a briefing schedule and indicated that the parties shall meet and confer by May 15, 2020 “in the presence of a court reporter (electronically, and not in person).” The court further indicated that if the proposed dates “present a problem for the parties in light of the pandemic, they shall meet and confer and propose revised dates.” (Case No. 1:17-cv-03595, presiding before District Judge Martha M. Pacold; April 16, 2020).
Southern District of Indiana (Indianapolis)
District Judge Tanya Walton Pratt
Knauf Insulation, LLC, et al. v. Johns Manville Corp., et al. – On March 20, 2020, the U.S. District Court for the Southern District of Indiana’s Indianapolis Division denied defendants’ motion for oral argument in light of General Orders of the Court and closure of the building due to the COVID-19 pandemic. On March 24, 2020, Magistrate Judge Mark J. Dinsmore denied the parties’ joint stipulation regarding a stay in light of the coronavirus pandemic and sua sponte amended the Case Management Order to incorporate extensions to various deadlines. On March 26, 2020, Magistrate Judge Dinsmore granted the defendants’ unopposed motion to extend the deadline for invalidity contentions by two weeks. On June 23, 2020 the Magistrate Judge granted the parties' Joint Motion for Two Week Extension of Deadline for Liability Expert Reports requesting an extension, in part, due to the COVID-19 pandemic and related restrictions that slowed the rate at which laboratories can perform and complete testing. (Case No. 1:15-cv-00111 March 20, 2020, March 24, 2020 & March 26, 2020 and June 23, 2020).
Southern District of Iowa (Central Division—Des Moines)
Chief Magistrate Judge Helen C. Adams
Vermeer Mfg. Co. v. The Toro Co. – The U.S. District Court for the Southern District of Iowa’s Central Division in Des Moines granted plaintiff’s emergency motion to quash subpoenas for the depositions of three (3) undisclosed non-party individuals “in direct contravention of the [c]ourt’s March 20, 2020 Order extending the discovery deadline for the limited purpose of completing outstanding discovery and rescheduling depositions.” The court held that to allow the three depositions at issue to take place would be especially prejudicial to plaintiff. The original extension was premised on the parties inability to timely complete discovery “because of the emerging complications resulting from COVID-19.” (Case No. 4:17-cv-00076, presiding before Senior District Judge Charles R. Wolle; April 20, 2020).
District of Kansas (Kansas City)
Magistrate Judge James P. O'Hara
Sudenga Industries, Inc. v. Global Industries, Inc. – The U.S. District Court for the District of Kansas in Kansas City granted defendant's unopposed motion to stay discovery pending its summary judgment motion, agreeing "that proceeding with expert discovery while dual case-dispositive motions are pending is unduly burdensome at this stage, especially given the demands imposed by the COVID-19 pandemic.” The court stayed all pretrial proceedings in the case until both parties’ motions for summary judgments are filed, briefed, and decided by the presiding U.S. District Judge. (Case No. 2:18-cv-02498, presiding before District Judge Daniel D. Crabtree; April 20, 2020).
Western District of Louisiana (Lafayette)
Magistrate Judge Carol B. Whitehurst
Swivel Rental & Supply, LLC v. Petro Pull, LLC, et al. – The U.S. District Court for the Western District of Louisiana in Lafayette conducted a telephone conference with the parties on August 18, 2020 to consider the Plaintiff’s Motion For Protective Order For Remote Depositions Only. Following discussions by both parties, the Court denied Plaintiff’s Motion, stating that it “expects the parties to cooperate with each other and the third party witnesses to apply a COVID protocol that meets the needs of those involved in the depositions.” (Case No. 6:18-cv-01141, presiding before District Judge Michael J. Juneau; August 19, 2020).
District of Massachusetts (Boston)
District Judge Richard G. Stearns
Uniloc 2017 LLC v. Paychex, Inc. – The U.S. District Court for the District of Massachusetts in Boston granted in part and denied in part defendant’s Emergency Motion For Remote Depositions filed because plaintiff “insists on attending in-person depositions of non-parties and [defendant’s] personnel, despite the current circumstances surrounding COVID-19 and the availability of remote technologies.” The Court ruled that plaintiff may attend a deposition in person provided it takes its “proposed precautions” and the witness does not object. The Court further noted that “[u]nder current pandemic circumstances the court will not require a witness to occupy an enclosed room with those other than his/her own attorney for an extended period of time.” (Case No. 1:19-cv-11272; July 16, 2020).
District Judge William G. Young
Bio-Rad Lab., Inc., et al. v. Stilla Tech., Inc., et al. – The U.S. District Court for the District of Massachusetts in Boston entered an order for a Commission to Take Foreign Deposition. The order is addressed to “Any Consular Officer of the United States Assigned to Paris, France” and requests that oral depositions be taken at the United States Embassy in Paris or remotely by videoconference on or about October 6, 2020 to October 9, 2020. However, the order goes on to specify that, “[i]n view of any current or potential COVID-19 related restrictions at the time of depositions, the parties and witnesses have consented and request to conduct the depositions remotely by videoconference at Stilla FR’s principal place of business or other location to be agreed upon by the parties.” (Case No. 1:19-cv-11587; August 20, 2020).
District of Minnesota (Minneapolis)
Magistrate Judge Elizabeth Cowan Wright
ARP Wave, LLC, et al. v. Salpeter, et al. – The U.S. District Court for the District of Minnesota in Minneapolis issued an order addressing various discovery issues, including granting defendants’ request to compel responding parties to conduct proper searches and produce all responsive documents to specific RFPs, “only to the extent that plaintiff will make good faith attempts to arrange for securing identified boxes of documents located at the ARP Wave facility in Centennial, Colorado to the extent it is reasonably possible to safely and legally do so in light of Colorado’s stay-at-home order as a result of the COVID-19 pandemic” (emphasis in original). The court further ordered that depositions take place remotely via videoconference in light of the COVID-19 pandemic. (Case No. 0:18-cv-02046, presiding before District Judge Patrick J. Schiltz; April 10, 2020).
District of Minnesota (St. Paul)
Magistrate Judge Hildy Bowbeer
Grupo Petrotemex, SA DE CV, et al. v. Polymetrix AG – The U.S. District Court for the District of Minnesota in St. Paul issued an application requesting authorization from the Swiss Federal Department of Justice and Police to take evidence and conduct remote depositions pursuant to the Hague Convention, based on a joint motion for Appointment of Commissioners with respect to depositions of witnesses in Switzerland which had been postponed due to restrictions on travel associated with the COVID- 19 pandemic. In an effort to complete the depositions before the filing of summary judgment motions, the Court had instructed the parties to initiate the Hague Convention process required to conduct the depositions by videoconference, while also monitoring “travel restrictions and public health guidance that could permit the depositions to be taken legally and reasonably safely outside of Switzerland, either in person or by videoconferencing means, sooner than they could be arranged through the Hague Convention process.” The Court granted defendant’s Expedited Motion Pursuant to Fed. R. Civ. P. 30(b)(4) ordering that the previously noticed depositions of its witnesses, that are scheduled for the week of August 3, 2020, be taken remotely using videoconferencing technology. While the Court recognized “the advantages of in-person depositions under ordinary circumstances”, it noted that “these are not ordinary circumstances” and the necessary restrictions related to the COVID-19 pandemic will likely continue for an indeterminate and potentially lengthy amount of time. With respect to a proposal by plaintiffs for a possible location option for in-person depositions that might be permissible from a legal or regulatory standpoint, the Court indicated that it “is not satisfied that travel to and from [that location] would not require a period of self-quarantine at least upon the return home for one or more of the participants, nor is the Court satisfied that the travel and in-person proceedings would not expose the participants to a substantially greater risk of contracting COVID-19 beyond what they might otherwise choose to encounter at home.” The Court further indicated it “is not willing to continue to allow the parties to take a wait-and-see approach”, ruling that the depositions must go forward because the technology is available and the parties have already secured the necessary authorization through the Hague Convention to proceed with the depositions by videoconferencing means. Finally, the parties were directed to meet and confer as to the remaining elements of a remote deposition protocol, and file a proposed remote deposition protocol. The Court issued an Order For Remote Deposition Protocol, with input from the parties, providing a protocol that “will govern the conduct of remote depositions in [the case].” The parties agreed that “the court reporter can administer the oath to each deponent remotely and such oaths shall have full legal effect under Fed. R. Civ. P. 28,” and that, pursuant to Fed. R. Civ. P. 29(a), “the recorded video may be used as if it were a recording prepared by a certified videographer and each side waives any objections based on authenticity.” The protocol indicates that the “witness shall not wear a mask or face covering of any kind during his/her deposition testimony . . . [and to the extent practicable the] head, shoulders, arms, and hands of the witness should be displayed on the screen at all times, as should any and all documents and/or other items that are on the table or in front of the witness.” In addition, “[n]o person may be physically located in the same room as the witness during the taking of a remote deposition except for a non-attorney who may be present solely for the purpose of providing technical assistance as needed.” On August 21, 2020, the Court ordered a hearings motion set for September 14, 2020 to address multiple motions filed by plaintiffs, including a motion for leave to amend the complaint and motions regarding alleged deficiencies in discovery and a motion for contempt. The hearing will be conducted via ZOOMGOV technology. (Case No. 0:16-cv-02401, presiding before District Judge Susan Richard Nelson; May 6, 2020, July 20, 2020, August 1, 2020, and August 21, 2020).
District Judge Wilhelmina M. Wright
Willis Electric Co., Ltd. v. Polygroup Limited (Macao Commercial Offshore) et al. – The U.S. District Court for the District of Minnesota in St. Paul overruled plaintiff's objections to a magistrate judge's order denying in part plaintiff's motion to compel depositions to take place in the United States. The Court found the denial of plaintiff’s motion to compel depositions to occur in the United States “was neither clearly erroneous nor contrary to law on the basis of the COVID-19 pandemic.” In particular, the plaintiff did not demonstrate that the magistrate judge abused her discretion in considering the impact of the COVID-19 pandemic, in February and March, in light of the information available at the time and given a district court’s broad discretion in determining the location for depositions to occur. The Court granted the parties’ Joint Motion To Extend Fact Discovery Deadline In Light Of Exigent Circumstances, extending the fact discovery deadline to December 8, 2020, in part because “the Covid-19 pandemic has disrupted and continues to disrupt the parties’ ability to schedule and take international depositions in a convenient, safe, and efficient manner.” (Case No. 0:15-cv-03443; June 19, 2020 and July 30, 2020).
District of New Jersey (Newark)
Magistrate Judge Mark Falk
Allergan Sales, LLC, et al. v. Sandoz, Inc., et al. – The U.S. District Court for the District of New Jersey in Newark granted the parties’ Stipulation and Order Amending Pretrial Scheduling Order and to Bifurcate and Stay Discovery and Trial of Defendants’ Antitrust Counterclaims, agreeing that “an extension of certain deadlines is appropriate, particularly in light of COVID-19, to permit the parties to complete discovery.” Further, to promote efficiency for both the parties and the court, the parties agreed that the “[a]ntitrust [c]ounterclaims should be bifurcated and stayed from the other claims and defenses at issue , and depending on the resolution of those other claims and defenses, one or more or all of the [a]ntitrust [c]ounterclaims shall be dismissed or remain subject to additional renewed motion practice before the stay is lifted” as set forth in the stipulation. (Case No. 2:17-cv-10129, presiding before District Judge Claire C. Cecchi; May 4, 2020).
District Judge Esther Salas
Celgene Corp. v. Breckenridge Pharmaceutical, Inc., et al. – The U.S. District Court for the District of New Jersey in Newark granted the parties’ Stipulation Dismissing [Defendant] Natco Pharma Limited, in which Natco, in addition to agreeing to be “bound by any Judgment, Order, or decision rendered against Breckenridge[,]” agrees to provide discovery, including producing fact witnesses for deposition in the United States. Notably, the stipulation provides the following footnote on this point:
Breckenridge and Natco note that, with the exception of the language in this paragraph 4 relating to the location for depositions of Natco fact witnesses, this stipulation tracks the stipulations previously filed in Civil Action Nos. 17-3387, 18-14715 and 19-5804. Breckenridge and Natco do not agree that, as a general matter, all fact witnesses located outside the United States should be subject to production for deposition in the United States. Nevertheless, given the Court’s ruling on the issue of the location of depositions of fact witnesses in Civil Action No. 17-3387, and to avoid burdening the Court with this issue in the context of the present pandemic, Breckenridge and Natco consent to this provision in paragraph 4, albeit solely for purposes of this action. Breckenridge and Natco’s consent solely for purposes of this particular action is also supported by the fact that limited, if any, discovery in this action was agreed to in the Joint Proposed Discovery Plan submitted by the parties on April 13, 2020 (ECF No. 17). As such, Breckenridge and Natco expressly reserve the right in any action other than the present action to object to any proposal that would require the production of any foreign national for deposition in the United States.
(emphasis added). (Case No. 2:20-cv-02597; May 4, 2020).
District of New Jersey (Trenton)
Magistrate Judge Douglas E. Arpert
Amgen, Inc. v. Sandoz, Inc., et. al. – The U.S. District Court for the District of New Jersey in Trenton granted the parties’ Stipulation and Proposed Order Regarding Foreign Depositions, which permits corporate representatives under Rule 30(b)(6) as well as fact witnesses under Rule 30(b)(1) to appear for depositions by way of video, in light of travel restrictions resulting from “government orders and health concerns concerning the global COVID-19 pandemic.” A telephonic Status Conference is set for May 28, 2020 at 11:30 a.m. (EDT). (Case No. 3:18-cv-11026, presiding before District Judge Michael A. Shipp; April 23, 2020 and May 22, 2020).
Amgen, Inc. v. Sandoz, Inc., et al. – The U.S. District Court for the District of New Jersey in Newark granted the parties’ Stipulation and Proposed Order Regarding Foreign Depositions, which permits corporate representatives under Rule 30(b)(6) as well as fact witnesses under Rule 30(b)(1) to appear for depositions by way of video, in light of travel restrictions resulting from “government orders and health concerns concerning the global COVID-19 pandemic.” On September 2, 2020 the Court entered a similar Stipulation related to another third party once again indicating that any such foreign deposition “will be deemed to be useable to the same extent as if the deposition had been conducted in person in the United States.” In addition, the Order stated that “to the extent possible, the Court Reporter will be present in the room with the attorney or attorneys taking the deposition.” (Case No. 3:18-cv-11026, presiding before District Judge Michael A. Shipp; August 20, 2020 and September 2, 2020).
Magistrate Judge Tonianne J. Bongiovanni
Takeda Pharmaceutical Company Limited et al v. Zydus Pharmaceuticals (USA) Inc. et al. – The U.S. District Court for the District of New Jersey in Trenton entered a Stipulated Order Concerning Remote Depositions, providing the protocol that shall apply in the case for conducting remote depositions. The parties indicated that is presumed that all remaining depositions in the case shall be conducted remotely due to the COVID-19 pandemic. According to the protocol “any platform must allow for . . . participating attorneys and the court reporter to hear and see, and Witness, Deposing Counsel, Defending Counsel, and Attending Counsel.” It was also agreed that “[n]o person may be physically located in the same room as the witness” during the deposition except the defending attorney and a non-attorney “present solely for the purpose of providing technical assistance to the witness in using the platform.” In addition, during the deposition, “the witness may not communicate with any person, except through the platform, by any means, including through gestures, handwritten communications, email, chat, instant messaging, or text messaging.” (Case No. 3:18-cv-01994, presiding before Chief District Judge Freda L. Wolfson; August 12, 2020).
Eastern District of New York (Brooklyn)
Chief Magistrate Judge Cheryl L. Pollak
Uni-Systems, LLC v. United States Tennis Association, Inc. et al. – The U.S. District Court for the Eastern District of New York in Brooklyn granted defendant’s motion for a protective order requesting that the Rule 30(b)(6) depositions occur at the same time as the Rule 30(b)(1) depositions of two fact witnesses. Finding that “it is more efficient for the fact and 30(b)(6) depositions to proceed simultaneously,” the Court also Ordered “the parties to meet and confer regarding the deposition schedule and [urged] the parties to take all precautions pursuant to the ongoing COVID pandemic, including exploring the possibility of taking depositions remotely using videoconferencing technology.” (Case No. 1:17-cv-00147, presiding before District Judge Kiyo A. Matsumoto; July 6, 2020).
Eastern District of New York (Central Islip)
Magistrate Judge Steven I. Locke
Signify North America Corp. f/k/a Philips Lighting North America Corp., et al., v. Satco Products, Inc. – The U.S. District Court for the Eastern District of New York in Central Islip granted defendant’s motion to compel, holding that “(1) [plaintiff] will compile the summaries at issue containing the information it reasonably believes will be relevant to the upcoming mediation, and confer with [defendant] as part of this process; and (2) [plaintiff] will start sending notice to the Category 2 licensees and is practical under the circumstances given the present COVID-19 pandemic.” (Case No. 2:19-cv-06125, presiding before District Judge Joan J. Azrack; April 13, 2020).
Northern District of New York (Syracuse)
Magistrate Judge Andrew T. Baxter
ICM Controls Corp., et al. v. Honeywell Int’l, Inc. – On April 14, 2020, the U.S. District Court for the Northern District of New York in Syracuse granted the parties’ stipulation and order regarding the deposition of a Rule 30(b)(6) deponent who suffered a traumatic injury in early March, necessitating the deposition’s postponement, the rescheduling of which is now also impacted by the COVID-19 pandemic. The parties agreed to communicate with a view of producing the deponent for deposition reasonably in advance of June 1, 2020, as well as endeavor to produce a corporate representative on financial topics for deposition by the same time. The parties also agreed the depositions could take place virtually if in-person depositions are not possible due to the COVID-19 pandemic. On April 16, 2020, the court granted the parties’ stipulation and order permitting plaintiffs to supplement their opening expert report on infringement after the April 16, 2020 deadline due to the expert’s equipment and test boards being delayed in France as a result of the COVID-19 pandemic. According to the stipulation, the expert had been living and working in France where he had sent his equipment and materials needed to complete his expert analysis and report before he “was forced to quickly evacuate out of France back to the United States.” The stipulation allows plaintiffs to timely supplement their expert’s opening report to include oscilloscope data (which is dependent on the expert’s equipment) and “shall not extend to the substance of the report.” The stipulation also provides additional time for defendant’s technical expert to supplement his or her responsive report on infringement to address the supplemented oscilloscope data. (Case No. 5:12-cv-01766, presiding before Senior District Judge Lawrence E. Kahn; April 14, 2020 & April 16, 2020).
ICM Controls Corp., et al. v. Honeywell Int’l, Inc. – The U.S. District Court for the Northern District of New York in Syracuse denied defendants’ request to amend their invalidity contentions. Specifically, the “court recognizes that the current schedule for completion of discovery will likely need to be extended because of the COVID-19 epidemic. However, allowing defendants to pursue their new invalidity theory would further complicate and prolong discovery and the completion of pretrial proceedings. A continuance would not eliminate the prejudice to plaintiffs, who have been litigating this case for more than seven years.” The court further ordered that “pending the resolution of any appeal of this order, discovery shall continue, subject to likely modification.” (Case No. 5:12-cv-01766, presiding before Senior District Judge Lawrence E. Kahn; April 3, 2020).
Southern District of New York (Manhattan)
Magistrate Judge Ona T. Wang
Wongab Corp. v. Urban Outfitters, Inc., et al. – The U.S. District Court for the Southern District of New York in Manhattan sua sponte ordered:
- counsel to work remotely;
- that no in-person depositions shall take before May of 2020 absent a showing of “exceptionally good cause;” and
- that parties planning to conduct depositions on or after May 1st shall submit a joint status letter stating their deposition plans 14 days before the planned depositions.
Notably, the order also permits counsel to email the court ex parte with private, personal, familial, or medical concerns that would necessitate further orders, provided that they advise the other parties that they will be contacting the court ex parte. On August 11, 2020, the Court granted plaintiff’s Motion for Extension of Time to Complete Discovery, extending the time to complete expert discovery because counsel was “working remotely since early March, and  had a small number of unfortunate calendaring and logistical issues arise”, such as failing to “include a number of the dates that were included in the parties’ initial planning report, including the expert deadlines.” (Case No. 1:19-cv-01660, presiding before District Judge Andrew L. Carter, Jr.; March 19, 2020 and August 11, 2020).