Discovery

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. 

Northern District of Alabama (Birmingham)

Senior Judge Karon Owen Bowdre

Karl Storz Endoscopy-America, Inc. v. Integrated Medical Systems International, Inc. – The U.S. District Court for the Northern District of Alabama in Birmingham denied defendant’s Motion for Limited Extension of Fact Discovery Deadline to Depose the Inventors of the Patents in Suit and its Motion for Letter of Request Pursuant to the Hague Convention on the Taking of Evidence Abroad in Civil and Commercial Matters, finding that defendant failed to show diligence. The named inventors are two German citizens, and defendant asserted that it has not been able to take the depositions due to the COVID-19 pandemic, “which has caused the U.S. Consulate General in Frankfurt, Germany—the only place at which depositions of German citizens for use in U.S. civil litigation may take place—to pause all scheduling of depositions.” The Court noted that defendant made no mention of deposing the inventors until approximately six weeks before the first extended deadline for completion of fact discovery, and the Consulate in Frankfurt requires eight weeks advanced notice to schedule depositions. The Court acknowledged that “the Consulate has not been scheduling depositions during COVID”, but further stated if defendant wanted to depose the inventors, “it should have started the process of scheduling these depositions months ago, so that it would be ‘in line’ when the Consulate again begins scheduling depositions.” The Court instead adopted plaintiff’s proposed resolution to the discovery dispute regarding the depositions by precluding the named inventors from testifying at trial. (Case No. 2:12-cv-02716; May 20, 2021).

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

Core Optical Technologies, LLC v. Nokia Corp. et al. – The U.S. District Court for the Central District of California in Los Angeles granted the parties Motion For Entry of Supplemental Protective Order Re Source Code. According to the supplemental order, access to the produced source code shall be provided on stand-alone computers located at the silicon valley offices of the producing party’s outside counsel. The producing party was required to make reasonable efforts to make the source code available during the COVID-19 pandemic, and if an office is otherwise closed or access restricted due to COVID-19 guidelines, or government health restrictions, then the parties must in good faith identify another mutually convenient California office of outside counsel for the stand-alone computers. (Case No. 8:19-cv-02190; February 17, 2021).

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' FDiscovery 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.” On February 1, 2021, the Court issued a Request For International Judicial Assistance (Letter of Request) Pursuant To The Hague Convention On The Taking Of Evidence Abroad, requesting assistance of the Courts of Italy to compel oral testimony and document evidence. It was requested that the defendant representatives be permitted to attend and possibly participate in the deposition examination, or participate by video if it is not possible to attend in person due to travel concerns or restrictions resulting from the COVID-19 pandemic. On July 15, 2021, the Court issued a Request For International Judicial Assistance in conformity with Article 3 or The Hague Convention On The Taking Of Evidence Abroad, requesting assistance of the Appropriate Judicial Authority of the Republic of Singapore to compel oral testimony and document evidence. It was requested that Counsel be permitted to attend and, if possible, also participate directly in the examination of the deponent, but if not possible due to the current travel concerns/restrictions resulting from the COVID-19 pandemic that they be allowed to attend by “real time” electronic video link from within the United States, via SKYPE or an equivalent platform. (Case No. 2:19-cv-06306; July 9, 2020, August 10, 2020, February 1, 2021 and July 15, 2021).

District Judge Mark C. Scarsi

Voltstar Technologies, Inc. v. Superior Communications, Inc. et al. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles granted plaintiff’s motion to amend its Initial Infringement Contentions, finding that plaintiff had not demonstrated reasonable diligence but defendants would not be prejudiced if plaintiff was allowed to amend. In finding that plaintiff had not been diligent, the Court rejected plaintiff’s argument that its inadvertent omission of two dependent claims from its contentions was not discovered earlier because the plaintiff’s review of the defendant’s invalidity contentions was delayed due to COVID-19 related issues. The Court noted that defendants served plaintiff with their invalidity contentions on March 9, 2020, yet Plaintiff did not serve its amended infringement contentions until September 16, over six months later, but independent of when counsel conducted the review of the invalidity contentions, the concession that plaintiff inadvertently omitted the claims reflects a lack of diligence in discovering that it omitted them. In addition, the Court continued the date of the Claim Construction Hearing to March 22, 2021 at 9:00 a.m., and set the final pretrial conference date for November 1, 2021 at 2:00 p.m. and the trial date for November 16, 2021 at 8:30 a.m. (Case No. 2:19-cv-07355; February 23, 2021).

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

American River Nutrition, LLC v. Beijing Gingko Group Biological Technology Co., Ltd et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana denied plaintiff’s ex parte application to schedule depositions of defendant’s employees to be scheduled over two to three days in Macau or in the alternative, to be conducted in the United States once travel restrictions allow. The Court found that plaintiff had failed to show the “’crisis’ upon which it seeks to ‘go to the head of the line’ by way an ex parte application”, or how it is not a crisis of its own making. The depositions of senior executives and Rule 30(b)(6) representatives could have and should have been scheduled before travel restrictions were imposed in 2020, and even after the restrictions were in place plaintiff had nine months to attempt to make such arrangements. (Case No. 8:18-cv-02201, case presiding before District Judge Josephine L. Staton; October 29, 2020).

Linksmart Wireless Technology, LLC v. Gogo Inc. et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana denied plaintiff’s Motion To Compel Deposition of defendant’s expert. The parties had not been able to agree to a date before the close of expert discovery for the deposition and agreed he would sit for deposition on January 22, 2021. The expert contracted a “severe case” of COVID-19 and developed pneumonia and could not sit for the deposition and would require a one month extension of the expert discovery schedule. The Court found plaintiff did not establish that it was diligent, including not timely notifying the Court the deposition had been scheduled after the discovery cut-off, with full knowledge that it was “out of time”, and it had a second opportunity prior to the expert discovery cut-off to seek relief from the Court after being notified on January 12, 2021 that the deposition could not proceed. (Case No. 8:18-cv-00654, case presiding before District Judge John A. Kronstadt; March 25, 2021).

Masimo Corporation v. Apple Inc. – The U.S. District Court for the Central District of California in Santa Ana granted in part and denied in part defendant’s Ex Parte Application for an Order Directing Depositions to Proceed Remotely, seeking that 11 depositions of employees of defendant noticed by plaintiffs to proceed in May and June 2021, in-person, in San Francisco, instead proceed remotely by videoconference under Rule 30(b)(4) of the Federal Rules of Civil Procedure due to the continuing COVID-19 pandemic and defendant’s assertion that “due to [defendant’s] COVID-19 precautions, the noticed deponents were working remotely for the foreseeable future, likely at least until September 2021.” The Court noted a number of evidentiary deficiencies including a failure to provide declarations from the deponents, counsel did not attest that it personally spoke to the deponents, and defendant did not provide evidence that the deponents have not recently attended in-person work meetings “as part of their regular job duties” and are not expected to do in the immediate future. Despite these deficiencies, the application was not denied outright, due to the seriousness of the issues raised, with the defendant being given an opportunity to make a proper showing in an appropriate timeframe. In particular, defendant was required to provide a declaration by counsel by 5:00 p.m. on May 12, 2021 that “identifies by name each of the 11 []employee-deponents who are the subject of the Application, and, for each deponent, attests that counsel has either spoken with or received an electronic communication directly from each such deponent, and answers, for each such deponent based on such communication: (a) whether the deponent states the deponent uncomfortable proceeding with an in-person deposition due to COVID-19; (b) whether the deponent has, for the preceding 30 days, worked for [defendant] remotely-only; (c) whether the deponent has attended any in-person work-related meeting during the preceding 30 days; and (d) whether the deponent has been advised that [defendant] requires the deponent to work remotely for the next 60 days.” The Court ruled that good cause will be shown and the application is granted for each employee deponent “referenced in a timely declaration by counsel who has advised counsel that the deponent is not comfortable proceeding with an in-person deposition due to COVID-19, has only worked remotely for [defendant] in the preceding 30 days, has not attended any in-person work meetings in the preceding 30 days, and has been advised by [defendant] that the deponent-employee will be required by Apple to continue to work remotely for the next 60 days.” (Case No. 8:20-cv-00048, presiding before District Judge James V. Selna; May 11, 2021).

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).

Special Master Judge  Stephen G. Larson (Ret.)

Preservation Technologies LLC v. MindGeek USA Inc. et al. – The Special Master recommended that the U.S. District Court for the Central District of California in Santa Ana grant plaintiff’s request to amend the case schedule to require defendant to produce its 30(b)(6) witness to testify about source code before plaintiff must disclose its infringement contentions. The Special Master found that the offer to conduct the deposition remotely “assuages” the defendant’s concerns related to COVID-19 travel and quarantine restrictions.  (Case No. 2:17-cv-08906, presiding before District David O. Carter; November 2, 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).

District Judge Josephine L. Staton

Evolusion Concepts, Inc. d/b/a AR Maglock v. Juggernaut Tactical, Inc. et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana granted defendant’s Motion for Leave to Supplement Invalidity Contentions and Expert Report on Invalidity, finding “good cause” after considering defendant’s diligence, any potential prejudice to the plaintiff and other relevant considerations. In finding that any potential prejudice to the plaintiff is “minimal”, the Court noted that the final pretrial conference has already been delayed until September 4, 2020 because of the COVID-19 pandemic and that due to the “effects on both in-person proceedings in this District as well as the Court’s calendar, further delays of that conference and an eventual jury trial date are likely unavoidable.” As such, the Court found that there will be “ample time for [plaintiff] to fully investigate the single prior art reference at issue in [the] Motion.” On November 16, 2020, the Court issued an Order Granting Joint Stipulation To Extend Discovery Deadlines, requested in part because of the unavailability of the defendant’s technical expert to be deposed due to the COVID-19 pandemic, as well as other circumstances. (Case No. 8:18-cv-01378; July 9, 2020 and November 16, 2020).

MicroVention, Inc. v. Balt USA, LLC. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana denied plaintiff’s motion to compel defendant to complete its document production prior to January 15, 2021.  As part of its analysis, the Court found that plaintiff failed to demonstrate prejudice, saying “there is not much difference in receiving the last remaining documents right around the Christmas holidays (by succeeding on this motion) versus in mid-January (a date to which Defendant already committed).” In addition, the Court was “hard-pressed to see how plaintiff thought it was better to spend $30,000 on this motion rather than asking Defendant to stipulate to a 2-week extension of the discovery cutoff date to ameliorate the feared prejudice (particularly given the reality that the COVID-19 pandemic precludes the Court from conducting civil jury trials).”  (Case No. 8:19-cv-01335; December 4, 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. On October 9, 2020, the Court denied plaintiff’s Motion For Sanctions And Other Relief For Violation Of The April 2020 Order based on incomplete code production, because plaintiff failed to meet and confer in good faith prior to filing the motion. The Court found that sending an email or letter is not sufficient, indicating that “a telephonic meet and confer could have, at the very least, resulted in scheduling the very deposition plaintiff is now seeking to compel.”  The parties were reminded that “the Court’s resources are even more limited” because we are in the middle of the COVID-19 pandemic, so they are encouraged to resolve all disputes informally and that “the Court will not look kindly on further unnecessary motion practice.” (Case No. 4:12-cv-03733, presiding before District Judge Jon S. Tigar; April 27, 2020, May 6, 2020 and October 7, 2020).

Attachment:
Droplets, Inc. v. Amazon.com, Inc., et al. - April 26, 2020 

Northern District of California (San Francisco Division)

Magistrate Judge Laurel Beeler

Synopsys, Inc. v. Siemens Industry Software Inc. - The U.S. District Court for the Northern District of California in San Francisco issued a Discovery Order ruling on a number of discovery disputes, including ruling that plaintiff had complied with Patent Local Rule 3-2 even though it admitted that “it did only an electronic search (and did not search onsite due to the pandemic).”  The Court accepted plaintiff’s representations that its offices are closed, it interviewed key witnesses regarding sources of documents, it gathered documents from electronic sources, and it believes that the documents do not exist exclusively in hard-copy form. (Case No. 3:20-cv-04151, presiding before William H. Orrick; December 30, 2020). 

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.” The Court further rescheduled the hearing on summary judgment motions, motions to strike, Daubert motions, and case management conference from October 28, 2020 until December 2, 2020, and extended certain other dates in the case schedule. The final pretrial conference is scheduled for February 1, 2021 and the jury trial is scheduled to begin on March 1, 2021. The Motion Hearing and Case Management Conference, scheduled to held on December 2, 2020 at 2 p.m., was set to be held via Zoom webinar. (Case No. 3:18-cv-02848; March 18, 2020, May 14, 2020, October 9, 2020 and November 25, 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).

Northern District of California (San Jose)

Magistrate Judge Susan and Keulen

CertainTeed Gypsum, Inc. v. Pacific Coast Building Products, Inc. et al. – The U.S. District Court for the Northern District of California in San Jose issued an Order Regarding Discovery Dispute ordering the parties to meet and confer, either in person in accordance with prevailing COVID-19 restrictions or by video conference, regarding a dispute over language in a covenant not to sue. (Case No. 5:19-cv-00802, presiding before District Judge Lucy H. Koh; March 19, 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

Finjan, Inc. v. ESET, LLC et al.– The U.S. District Court for the Southern District of California in San Diego granted defendant’s renewed motion to issue a Request For International Judicial Assistance To The Administration of Courts in Jerusalem to take oral testimony of an individual.  The parties consented to the depositions taking place in Israel, or via remote means, to permit the witness to remain in Israel and the attorneys to refrain from traveling to Israel in light of the global COVID-19 pandemic. On January 28, 2021, the Court granted in part the parties’ Joint Motion To Amend Case Schedule, seeking to extend the fact and expert discovery deadlines because the plaintiff’s expert is unable to work because the expert is suffering from illness caused by Covid-19 and the conditions related to the pandemic in Slovakia have “deteriorated significantly” over the past several weeks impacting the defendants witness’s ability to participate in the case. The Court found the declaration provided good cause for an extension, but granted shorter than requested extensions stating that “the lengthy extensions requested are not justified.” The Court further advised the parties that they were not precluded from seeking further extensions if circumstances warrant, however, any future joint motions should provide more specificity as to what activities the parties are precluded from conducting based on the COVID-19 pandemic or other circumstances. On March 16, 2021, the Court issued an Order Issuing Tentative Decision On Dispute Regarding Extension Of Expert Discovery And Requiring Parties To Meet and Confer, in response to a request by defendant seeking to extend the expert discovery deadlines to allow its expert to review third-party source code. The source code must be reviewed on-site and in coordination with the third party, and the expert has not been able to travel as a result of the COVID-19 pandemic, but is anticipated to be able to do so by mid-April. The Court tentatively ruled that the Scheduling Order may be amended to allow the expert to review the third-party source code, but was inclined to limit any extension of the remaining deadlines to 30 days. (Case No. 3:17-cv-00183, presiding before District Judge Cathy Ann Bencivengo; December 31, 2020, January 28, 2021 and March 16, 2021).

Impact Engine, Inc. v. Google LLC – The U.S. District Court for tFhe 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 South Carolina (Rock Hill)

District Judge J. Michelle Childs

Wonderland Switzerland AG v. Britax Child Safety, Inc. The U.S. District Court for the District of South Carolina in Rock Hill granted in part and denied in part plaintiff’s Motion To Compel certain interrogatory responses. With respect to one of the interrogatories, the Court noted that it “understands the difficulty of producing documents during a global pandemic that has challenged the ‘normal’ way of doing business . . . [but] there is no excuse for Defendant’s failure to respond to Interrogatory No. 14’s request for a description of ‘any suspension or modification of [Defendant’s] document destruction or retention policies related to the Accused Products.’”  (Case No. 1:19-cv-02475; October 29, 2020).

District of Colorado (Denver)

Magistrate Judge Michael E. Hegarty

Fresenius Kabi USA, LLC v. Custopharm, Inc. – The U.S. District Court for the District of Colorado in Denver denied defendant’s Motion To Stay Discovery pending resolution of a motion to dismiss for improper venue. As part its analysis, the Court noted that the process of engaging in discovery likely will be done mostly remotely due to the COVID-19 pandemic, therefore “the fact that discovery will begin in the Colorado lawsuit should not, in the Court’s perception, cause Defendant any additional cost or burden if the case ultimately is transferred to Texas.”  (Case No. 1:20-cv-03254, presiding before District Judge Raymond P. Moore; January 21, 2021).

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. On September 22, 2020, the Court granted the parties Joint Stipulation To Stay The Case For 95 Days sought by the parties “because the conditions imposed by the COVID-19 pandemic continue to make review of [defendant’s] source code impossible.” The Markman hearing is now set for June 30, 2021, the pretrial conference is set for September 2, 2022 and the jury trial is set for September 19, 2022 at 9:00 a.m. On December 29, 2020, the Court granted the parties Joint Stipulation To Stay The Case For 90 Days requesting another extension because the conditions imposed by the COVID-19 pandemic continue to make review of defendant’s source code impossible, and plaintiff’s technical experts reside in foreign countries from which travel to the United States would be difficult or impossible. The Markman hearing is now set for September 29, 2021, the pretrial conference is set for December 2, 2022 and the jury trial is set for December12, 2022 at 9:30 a.m. On March 31, 2021, the Court granted the parties Joint Stipulation To Stay The Case For 70 Days due the COVID-19 pandemic, because plaintiff still has not been able to access defendant’s source code and travel for its technical expert would be difficult or impossible from Chile, which “despite its success in distributing COVID vaccines, is imposing new lockdowns due to a recent spike in infections.” The Markman hearing is now set for December 14, 2021, the pretrial conference is set for February 10, 2023 and the jury trial is set for February 21, 2023. On June 16, 2021, the Court granted the parties Joint Stipulation To Stay The Case For 6 Weeks, due to the COVID-19 pandemic and the continued delays in reviewing the source code. The Markman hearing is now set for January 25, 2022 and the jury trial is set for April 3, 2023. (Case No. 1:18-cv-01608; April 14, 2020, July 15, 2020, September 22, 2020, December 29, 2020 and March 31, 2021 and June 16, 2021).

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).

Nichia Corporation v. Global Value Lighting, LLC. The U.S. District Court for the District of Delaware in Wilmington denied plaintiff’s request for a protective order prohibiting defendant from taking the deposition of a witness in Japan, finding the apex doctrine not particularly relevant. The Court stated that it is clearly burdensome for the witness to be deposed, but that is a consequence of Japanese law and the COVID-19 pandemic, which applies equally to any employee of plaintiff who lives in Japan. The Court also noted that plaintiff did not argue that the deposition would be disproportionate to the needs of the case, and the Court was not convinced that the storehouse of relevant knowledge of the witness had been rendered unnecessary by the Rule 30(b)(6) witnesses plaintiff had provided. (Case No. 1:19-cv-01388; July 26, 2021).

Sprint Communications Company L.P. v. Charter Communications, Inc. et al. – The U.S. District Court for the District of Delaware in Wilmington denied defendants’ Motion To Strike Plaintiff’s Amended Infringement Contentions, finding that the disclosures were timely served and defendants had adequate notice of plaintiff’s infringement contentions and the evidentiary bases. To the degree defendants argued they need to learn how the accused switches work from third party suppliers, the Court noted that there is time because, due to the CIVID-19 pandemic, there is no currently scheduled trial and there is quite a backlog of other trials to resolve. (Case No. 1:17-cv-01734; March 17, 2021).

TQ Delta LLC v. Comcast Cable Communications LLC – The U.S. District Court for the District of Delaware in Wilmington issued a Letter of Request For International Judicial Assistance to the appropriate judicial authority of France requesting assistance to obtain evidence, including documentary and testimonial evidence, to be used in a civil proceeding. In the Letter, the Court noted that “should Covid-related restrictions on travel and/or indoor gatherings prevent the examination from being performed in person, the examination can be conducted via videoconference.” (Case No. 1:15-cv-00612; September 8, 2021).

ViaTech Technologies, Inc. v. Microsoft Corporation  – The U.S. District Court for the District of Delaware in Wilmington granted defendant's motion to strike plaintiff’s new Doctrine of Equivalents (DOE) theories that were first raised in opening expert reports. As part of its analysis, the Court found that plaintiff did not give a convincing explanation for its failure to timely disclose its new DOE infringement theories. Plaintiff argued, in part, that it was only able to collect evidence to support its new DOE theories upon completing examination of source code provided by defendant, “a process that was delayed to October-November 2020 due to COVID-related challenges.”  (Case No. 1:17-cv-00570; February 19, 2021).

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).

IOENGINE, LLC v. PayPal Holdings, Inc. – The U.S. District Court for the District of Delaware issued an Order regarding the deposition of an employee of the plaintiff who is located in France and has been designated as a Rule 30(b)(6) witness on several topics. The Court indicated that, in light of the COVID-19 pandemic, it is preferable to conduct the deposition in a manner that will not require international travel. Relying on plaintiff’s representations that the process of authorizing a French deposition under the Hague Convention can be expedited, the Court ordered that the deposition be conducted by video with the witness in France if plaintiff can arrange for the deposition to take place by September 20, 2021. The Court further ruled that if plaintiff cannot arrange for the deposition to be taken by that date, it will be given the choice of either conducting the deposition by October 10, 2021 in a third country near France (presumably either Belgium or the United Kingdom) or in the United States. (Case No. 1:18-cv-00452; August 19, 2021).

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).

Steuben Foods, Inc. v. Shibuya Hoppmann Corporation et al. – The U.S. District Court for the District of Delaware in Wilmington denied plaintiffs' motion for post-discovery inspection by its expert of the accused products, finding in part that the COVID-19 pandemic does not excuse the failure to seek the discovery earlier. The Court indicated that plaintiff did not demonstrate good cause to amend the Scheduling Order, “as it could have (but did not) diligently [seek] to inspect the machines during the relevant discovery period . . . [and] while the fact of COVID-19 might have delayed such an inspection for a time, or might have required that some conditions be placed on the inspection, it would not have made such an inspection impossible.”  (Case No. 1:19-cv-02181, presiding before District Judge Colm F. Connolly; June 3, 2021).

Sysmex Corporation et al v. Beckman Coulter, Inc. – The U.S. District Court for the District of Delaware in Wilmington granted defendant’s motion to stay the case pending completion of the deposition of one of the four inventors of the two patents-in-suit, vacating the remaining dates in the current Scheduling Order. As part of its analysis the Court noted that “[d]ue at least in significant part to COVID-related issues,” defendant has not been able to depose the witness and the deposition (if it does not get further postponed) is now scheduled to go forward on September 26-27, 2021, while fact discovery is long closed, the deadline for submitting summary judgment motions is a few days away, and trial is currently scheduled to begin on February 14, 2022. In acknowledging the potential prejudice, the Court stated what “reasonable patent attorney or client representative” would not say “I am unduly prejudiced!” if told “at the beginning of the case that you would only be able to take the deposition testimony of a key inventor (who works for the opposing party, and who should know quite a lot about the issues at play in the case), until long after discovery closes, at a time when the summary judgment process is nearly over and just a few months before trial is to start.” (Case No. 1:19-cv-01642, presiding before District Judge Richard G. Andrews; August 25, 2021).

District Judge Colm F. Connolly

Taiho Pharmaceutical Co., Ltd. et al v. MSN Laboratories Private Ltd. et al. – The U.S. District Court for the District of Delaware entered a Stipulated Order extending the deadline for the completion of fact discovery for the limited purpose of allowing fact depositions of defendants to be completed. The parties had indicated that they are working to confirm these fact depositions that have been delayed as a result of the COVID-19 pandemic. (Case No. 1:19-cv-02342; April 19, 2021).

Magistrate Judge Sherry R. Fallon

Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio Inc.  – The U.S. District Court for the District of Delaware in Wilmington issued an Order denying plaintiff’s Application for the Issuance of Letter of Request for International Judicial Assistance in the Appointment of Commissioners Pursuant to The Hague Convention, finding that plaintiff did not adequately establish that the depositions of the German witnesses would be permitted to proceed to the full extent permitted under the Federal Rules of Civil Procedure. As part of its analysis, the Court considered that the U.S. Consulate in Germany, where the depositions might have to proceed, is currently closed due to the COVID-19 pandemic. The Court found that “[b]ecause the use of video recording will be available once depositions can go forward at the U.S. Consulate, and because these depositions will require translation, the better course in this particular case is to proceed with the depositions in a manner consistent with the options available under the Federal Rules of Civil Procedure.” (Case No. 1-17-cv-00184, presiding before Senior District Judge Joseph F. Bataillon; March 8, 2021). 

District Judge Maryellen Noreika

Aqua Connect, Inc. et al v. TeamViewer US, LLC – The U.S. District Court for the District of Delaware in Wilmington issued an Oral Order, after reviewing the parties Joint Statement Regarding European Depositions, providing that plaintiff may request a written deposition of the witnesses pursuant to Federal Rule of Civil Procedure 31 due to the COVID-19 pandemic. The Court further instructed the parties to continue to monitor the quarantine and travel restrictions over the next 30 days and provide a status report to the Court no later than November 20, 2020.  In addition, the Court ruled that “[o]btaining a deposition under Rule 31 will [not] be grounds for Defendants to oppose another deposition live should conducting a deposition live become feasible.” On December 2, 2020, the Court entered the parties Stipulation And Order To Extend Time, to move the current schedule back approximately 90 days to accommodate the discovery needed and subsequent deadlines. The request was made because the COVID-19 pandemic “has continued to impact the ability of the parties to undertake in-person depositions and otherwise meet the current deadlines . . . [and] counsel for the parties are continuing to consider how to move the case forward during this period of continued closures and international travel limitations.” The jury trial date has been reset from September 13, 2021 to January 31, 2022. On March 22, 2021, the Court entered the parties Stipulation and Order To Extend Time to again move the current schedule back approximately 90 days to accommodate discovery and subsequent deadlines, due to the COVID-19 pandemic, because the parties were not able to undertake in-person depositions and the U.S Consulate General in Frankfurt was unable to schedule depositions. The jury trial date was reset to May 9, 2022. On June 22, 2021, the Court entered the parties Stipulation and Order To Extend Time to again move the current schedule back approximately 90 days to accommodate discovery and subsequent deadlines, because the COVID-19 pandemic “has continued to impact the ability of the parties to undertake in-person depositions in Germany and otherwise meet the current deadlines. The jury trial date was reset to August 8, 2022. (Case No. 1:18-cv-01572; October 21, 2020, December 2, 2020, March 22, 2021 and June 22, 2021). 

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. On November 9, 2020, the Court entered a Joint Stipulation and Order to Continue Case Schedule, providing an additional extension of the case schedule “in light of the unexpected impact of the COVID-19 pandemic on travel internationally, and the delay caused by those travel restrictions on depositions in [the] matter.” On the November 16, 2020, the Court stayed the case in its entirety, other than allowing defendant to take already noticed depositions of available witnesses, until plaintiff “is able to make its currently unavailable witnesses available (1) for deposition or (2) to respond to questions without assistance or input from others.” (Case No. 1:18-cv-01802; August 18, 2020, November 9, 2020 and November 16, 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).

Sentient Sensors, LLC v. Cypress Semiconductor Corporation – The U.S. District Court for the District of Delaware issued an Order providing a Source Code Addendum To Protective Order, in light of the COVID-19 pandemic, with agreed upon “additional terms governing review of software code, firmware code, and circuit layout files.” The Addendum provides for source code inspection using a remote review computer, which shall be sent to receiving party’s outside counsel or directly to a different authorized receiving party representative. The terms in the Addendum “shall remain in effect only so long as COVID-19 restrictions are in effect at the locations of respective relevant parties, such as the location of the parties’ respective counsel and source code review consultants and experts.” Once the COVID-19 pandemic restrictions are lifted, the producing party may, at its sole discretion, provide source code pursuant to the terms of the Addendum or pursuant to the relevant provisions of the Protective Order. (Case No. 1:19-cv-01868; April 6, 2021).

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