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. 

Central District of California (Southern Division—Santa Ana)

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 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).

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

(Case No. 1:18-cv-01608; April 14, 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).

District Judge Maryellen Noreika

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

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).

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. (Case No. 1:18-cv-00825; April 8, 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 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. (Case No. 1:15-cv-00111, presiding before District Judge Tanya Walton Pratt; March 20, 2020, March 24, 2020 & March 26, 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).

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.” (Case No. 0:16-cv-02401, presiding before District Judge Susan Richard Nelson; May 6, 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).

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. (Case No. 1:19-cv-01660, presiding before District Judge Andrew L. Carter, Jr.; March 19, 2020).

Northern District of Ohio (Eastern Division—Cleveland)

Senior District Judge Donald C. Nugent

Monode Marking Products, Inc. v. Columbia Marking Tools, Inc. – The U.S. District Court for the Northern District of Ohio’s Eastern Division granted defendant’s motion to compel plaintiff to produce a records custodian for deposition. In a handwritten note granting the motion, the Court stated that “[t]he requested deposition may be conducted remotely to ensure the safety of all participants.” (Case No. 1:18-cv-00016; April 27, 2020).

Eastern District of Texas (Marshall Division)

Chief District Judge J. Rodney Gilstrap

Saint Lawrence Comms. LLC v. Amazon.com, Inc., et al. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted the parties’ renewed joint motion for a 30-day continuance on the basis of newly imposed government and public health restrictions. Notably, the court denied the parties’ original joint motion for a 30-day continuance on March 12, 2020, noting that “there are no current official travel restrictions or advisories from government health agencies.” Specifically, the court advised that while it “is sensitive to the Parties’ concerns and the hazards associated with the Coronavirus, [it] is not inclined to implement delays or grant continuances unless a party can put forward specific concerns backed by firm restrictions from a governmental/public health level of actual exposure.” (Case No. 2:19-cv-00027; March 19, 2020).

Magistrate Judge Roy S. Payne

GREE, INC v. Supercell Oy – The U.S. District Court for the Eastern District of Texas’s Marshall Division denied defendant's Motion for Relief in View of Governmental/Public Health Restrictions in Response to COVID-19 Virus Impact and Motion to Compel Discovery and Depositions -- seeking a 3-month trial extension due to the COVID-19 pandemic in order to take additional depositions of plaintiff's employees -- because the defendant failed to establish that the depositions were necessary. In addition, the Court noted that the request “to compel these depositions to promptly proceed . . . is asking for an impossibility—one also contrary to this Court’s standing orders.” Moreover, the Court felt it not clear that even if the request for a 3-month continuance was granted, it would be enough to take the depositions since “[n]o one knows for sure when this pandemic will end and countries will begin to ease restrictions” and taking a deposition in Japan is a complicated and long process. Thus, even if the deadlines were delayed, the defendant may still be then in the same position as now.  (Case No. 2:19-cv-00071, presiding before Chief District Judge J. Rodney Gilstrap; May 12, 2020).

District Judge Robert W. Schroeder, III

Uniloc USA, Inc., et. al. v. Big Fish Games, Inc. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted in part defendant's motion for an extension of deadlines for expert discovery, dispositive motions, and Daubert motions due to the COVID-19 pandemic,  only agreeing to extend the expert discovery deadline three weeks from May 6 to May 27 in  view of the approaching deadline. The Court acknowledged that “[t]he country is undoubtedly in the throes of a public health crisis”, however it indicated that motions like these “require something more than [defendant's] generalized concerns about COVID-19 to establish good cause.”  In this case, the Court found “the defendant had not demonstrated good cause for its requested extension because its motion lacks specificity about “how the crisis has affected its deposition preparations or why it has encountered difficulty in complying with current deadlines.” (Case No. 2:16-cv-00741; April 30, 2020).

Southern District of Texas (Houston Division)

Senior District Judge Nancy F. Atlas

Enventure Global Tech., Inc. v. Weatherford U.S., L.P. – The U.S. District Court for the Southern District of Texas’s Houston Division cancelled the parties’ March 25th discovery conference after the parties suggested the court decide the outstanding discovery issues on the arguments set forth in their letters and without oral argument, in light of the public health issues caused by COVID-19 and the Stay-At-Home orders issued for Houston and Harris County. (Case No. 4:19-cv-02397; March 24, 2020).

District of Utah (Central Division)

Magistrate Judge Dustin B. Pead

Definitive Holdings LLC v. Powerteq LLC – The U.S. District Court for the District of Utah’s Central Division denied the Plaintiff’s Short Form Discovery Motion seeking a copy of the source code files to review without opposing counsel present, finding the requested “sweeping changes to the review or production of source code” not supported or warranted under the circumstances. The court acknowledged “the trying and challenging circumstances created by the COVID-19 pandemic, which impact the parties and the review of source code,” but the court encouraged the parties “to find a workable solution.” (Case No. 2:18-cv-00844, presiding before District Judge David B. Barlow; May 22, 2020).

Magistrate Judge Cecilia M. Romero

Vivint, Inc. v. Alarm.com – The U.S. District Court for the District of Utah’s Central Division granted the parties’ Stipulated Motion for Partial Stay and For Extension of Discovery Deadlines, “[b]ased on the stipulation of the parties, and in light of global health concerns of the current COVID-19 pandemic, to allow sufficient time to complete expert discovery in view of the uncertainty caused by the pandemic.” The court set certain deadlines in the case related to expert reports and dispositive motions and stayed all other litigation activity before the court, with the exception of a motion for reconsideration and objections to an earlier ruling. (Case No. 2:15-cv-00392, presiding before Senior District Judge Clark Waddoups; April 16, 2020).

The United States Court of Federal Claims

Court of Federal Claims Judge Lydia Kay Griggsby

Geospatial Technology Associates, LLC v. United States of America – The U.S. Court of Federal Claims denied the defendant’s Motion To Stay Certain Discovery in which it was argued that the ongoing COVID-19 pandemic prevented defendant from conducting in-person searches for responsive information and documents. Although sympathetic to the challenges due to the ongoing pandemic, the Court observed that the defendant had agreed to the current schedule for supplementing its discovery responses during a telephonic discovery hearing held on March 25, 2020. In addition, the defendant failed to explain why the required searches for responsive documents and information could not be performed electronically or address what efforts it has undertaken to date to search for responsive information and documents. (Case No. 1:16-cv-00346; May 7, 2020).

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