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. 

District of Arizona (Phoenix)

District Judge Rodney Smith

Coolpo Licensing LLC v. Festa et al. – The U.S. District Court for the District of Arizona in Phoenix granted defendant’s motion to dismiss for lack of personal jurisdiction, and denied a request by plaintiff for jurisdictional discovery suggesting that “most of the evidence, supporting the Plaintiff’s position that the Defendants allude to, could be in China” and difficult to obtain due to the COVID-19 pandemic. Although sympathetic to and cognizant of “the obstacles to litigation posed by the ongoing COVID-19 pandemic”, the Court found the “request is based on nothing more than a hunch that it might, if allowed to pursue discovery in China, locate information relevant to the question of jurisdiction.” Further characterizing it as “a particularly speculative hunch” because defendant failed to identify “any reason to believe this hypothetical information would concern enforcement activities by Defendants directed at the state of Arizona or would otherwise be relevant to the question of specific personal jurisdiction.” (Case No. 2:19-cv-05473; June 15, 2020).

Central District of California (Los Angeles)

Magistrate Judge Paul L. Abrams

SkyHawke Techs., LLC v. DECA Int'l Corp., et al. – The U.S. District Court for the Central District of California in Los Angeles granted in part the plaintiff’s Motion to Compel Inspection of Source Code in a Safe Manner, ordering the defendants to allow plaintiff access to the code in a clean room in accordance with certain conditions to ensure the health and safety of the individuals participating in the source code review in light of the COVID-19 pandemic. In particular, to protect the health and safety of the building’s occupants, “access would be subject to certain conditions, including: only one representative of plaintiff (e.g., one lawyer or one expert) would be allowed into defendants’ counsel’s office at a time; plaintiff would be required to provide defendants three business days’ notice of the date(s) for the inspection; the individual entering the office to conduct the inspection would be required to provide contact information, wear a face mask, take his or her temperature, and answer questions about his or her health (e.g., whether the individual had a fever, sore throat, etc.); only one person would be allowed into the clean room to comply with social distancing guidelines; and defendants’ counsel would monitor the inspection by remote camera.” (Case No. 2:18-cv-01234, presiding before District Judge George W. Hu; June 1, 2020).

District Judge John A. Kronstadt

Valentino SpA v. Mario Valentino SpA et al. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles denied defendants' Amended Joint Motion for a Protective Order to Stay the Parties' Discovery Obligations for Sixty Days, stating that “[a]lthough the COVID-19 pandemic may warrant continuances of discovery deadlines, it does not justify a complete stay of discovery at this time.” On August 10, 2020, the Court granted plaintiff’s Motions to Compels Discovery Responses from defendants, finding good cause and overruling defendants prior objections, except for those based on privileges.  Included among the objections specifically overruled was one seeking “[t]hat discovery should be stayed pending resolution of the COVID-19 crises.” (Case No. 2:19-cv-06306; July 9, 2020 and August 10, 2020).

Magistrate Judge Karen L. Stevenson

Lexington Luminance LLC v. Feit Electric Company, Inc. – The U.S. District Court for the Central District of California in Los Angeles granted plaintiff's motion to compel a further contention interrogatory response ordering the defendant to serve a verified supplemental response that fully responds to the interrogatory. The Court noted that “while [defendant] invokes the specter of the ongoing Covid-19 pandemic, [it] offers no evidence whatsoever to show how the public health crisis has impeded its ability to provide a complete response to Interrogatory No.7.”  (Case No. 2:18-cv-10513, presiding before District Judge Philip S. Gutierrez; July 21, 2020).

Central District of California (Southern Division—Santa Ana)

Magistrate Judge John D. Early

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).

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).

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)

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. (Case No. 3:18-cv-02848; March 18, 2020, May 14, 2020 and October 9, 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 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 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. (Case No. 1:18-cv-01608; April 14, 2020, July 15, 2020 and September 22, 2020). 

IPA Technologies Inc. v. Amazon.com, Inc. The U.S. District Court for the District of Delaware in Wilmington granted the parties’ Joint Stipulation and Order requesting the extension of discovery due to the impact of the COVID-19 pandemic. The Order moved the Fact Discovery deadline from October 2, 2020 to December 4, 2020, as well as extending the dates for other discovery proceedings. (Case No. 1:16-cv-01266; August 18, 2020).

Circuit Judge William C. Bryson

British Telecommunications PLC v. IAC/InteractiveCorp., et al. – The U.S. District Court for the District of Delaware postponed three Rule 30(b)(6) depositions due to Dallas County stay-at-home directives and a lack of access to relevant documents physically located in an office currently closed on account of the COVID-19 pandemic. While the court reasoned that civil discovery depositions are likely not "essential" business, it held that a Rule 30(b)(1) deposition may still occur via videoconference if it can be conducted lawfully under Dallas County directives regarding “essential services.” (Case No. 1:18-cv-00366; March 26, 2020).

Magistrate Judge Christopher J. Burke

Pharmacyclics LLC et al v. Fresenius Kabi USA, LLC et al. – The U.S. District Court for the District of Delaware in Wilmington granted plaintiffs' motion to compel two defendants to produce their communications with another defendant regarding testing of certain API samples. As part of its analysis regarding the proper scope of the discovery, the Court indicated it was mindful that the trial is scheduled to begin in October 2020, and “that obtaining discovery from witnesses located abroad during the COVID-19 pandemic may be challenging.” (Case No. 1:18-cv-00192, presiding before District Judge Colm F. Connolly; May 19, 2020).

District Judge Maryellen Noreika

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.” (Case No. 1:18-cv-01572; October 21, 2020). 

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).

Chief District Judge Leonard P. Stark

Cirba, Inc. d/b/a Densify, et al. v. VMware, Inc. – The U.S. District Court for the District of Delaware in Wilmington entered the Stipulation And Order Regarding Modification To The Protective Order reflecting the parties “special accommodation” providing a temporary modification to the inspection protocols set forth in the Protective Order to “reconcile the needs of this case with the exigencies” relating to the COVID-19 pandemic. In particular, the parties modified paragraph 48 of the Protective Order so that counsel for the producing party would provide four copies of original printouts to counsel for the receiving party within four business days of being notified that such original printouts have been made. On November 13, 2020, the Court entered the parties Stipulation Concerning Remote Depositions which recognized that the court reporter will not be physically present with the witness during any deposition due to the COVID-19 pandemic. The parties agreed the court reporter may administer the oath via videoconference. (Case No. 1:19-cv-00742; October 5, 2020 and November 13, 2020).

IPA Technologies, Inc. v. Amazon.com, Inc., et al. – The U.S. District Court for the District of Delaware granted the parties' motion for temporary modifications to the terms of their protective order governing review of Source Code, in light of the COVID-19 pandemic, and the resulting Federal, State, and local travel restrictions and shelter-in-place orders. The Addendum provides for Source Code inspection, on two computers capable of remotely accessing the producing party Source Code, sent by the producing party to either the receiving party’s outside counsel or instead directly to one or two of the receiving party’s source code reviewers authorized to review source code under the Protective Order. The terms of the Addendum will only remain in effect so long as COVID-19 pandemic restrictions are in effect at the locations of respective relevant parties. (Case No. 1:16-cv-01266; June 22, 2020).

Pfizer, Inc., et al. v. Teva Pharmaceuticals USA, Inc. – The U.S. District Court for the District of Delaware in Wilmington entered the parties’ Stipulation and Order to Stay the Case due to circumstances surrounding the COVID-19 pandemic. The order stays the case for two (2) months until June 30, 2020 and cancels the April 26, 2020 teleconference. Further, the parties are to “file a Joint Status Report requesting either a new case schedule, or further extension of the stay, depending on the circumstances surrounding the COVID-19 pandemic at that time.” (Case No. 1:18-cv-01940; April 23, 2020).

Special Master Chad S.C. Stover

First Quality Tissue, LLC v. Irving Consumer Prod. Ltd, et al. – The U.S. District Court for the District of Delaware in Wilmington denied plaintiff’s motion to strike portions of the third and fourth supplemental invalidity contentions of defendant. As part of its analysis of the relevant factors, the Court found that the supplementation was substantially justified because despite serving its subpoena three weeks before the close of fact discovery, the requested samples relevant to the contentions were not produced until just after the close of fact discovery. The Court noted that the defendant cannot control the producing party “especially during a pandemic.” (Case No. 19-cv-00428, presiding before District Judge Richard G. Andrews; October 19, 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).

Special Master Gregory B. Williams

Quest Diagnostics Investments LLC v. Laboratory Corporation of America Holdings et al. – The U.S. District Court for the District of Delaware in Wilmington, in a Special Master’s Opinion, denied plaintiff’s Motion to Preclude Theories and Evidence based on a failure to timely produce. The Special Master noted that the parties effort to schedule inspection of the files were impeded by the COVID-19 pandemic and the pandemic had an effect on both sides during discovery. After analyzing the relevant factors, the Special Master denied the request to preclude the files and also denied the request to preclude presentation of non-infringing alternatives based on a deficient interrogatory response. With respect to the interrogatory, the Special Master indicated that because of the stay of the case and its anticipated duration, there is sufficient time to conduct additional discovery to cure any prejudice, but further stated “under different circumstances than those present in this action (including, among other things, the absence of a global pandemic for some portion of the discovery period and/or several months of stay), [it] may conclude otherwise.”  In a further opinion, the Special Master issued an Order denying plaintiff’s Motion to Stay and extending deadlines for additional discovery. In part, the Special Master found that plaintiff will not suffer irreparable harm absent a stay, but as a reasonable accommodation to plaintiff’s experts under the circumstances, including the challenges of the COVID-19 pandemic, the Special Master did extend the deadlines for the additional discovery. (Case No. 1:18-cv-01436, presiding before District Judge Maryellen Noreika; October 19, 2020 and October 30, 2020).

Middle District of Florida (Jacksonville)

Magistrate Judge Patricia D. Barksdale

Depuy Synthes Products, Inc. et al v. Veterinary Orthopedic Implants, Inc. – The U.S. District Court for the Middle District of Florida in Jacksonville granted defendant's motion to compel the production of documents regarding plaintiff's products finding the information relevant and non-cumulative. The Court indicated that it presumed “counsel will work cooperatively and creatively in addressing barriers” based on the pandemic to “the extent that certain of the requested documents are only maintained in paper form at [defendant’s] premises, [and] are currently inaccessible because of stay-at-home orders in place as a result of the COVID-19 pandemic.” (Case No. 3:18-cv-01342, presiding before Senior Judge Harvey E. Schlesinger; June 30, 2020).

Southern District of Florida (Ft. Lauderdale)

District Judge Rodney Smith

BPI Sports, LLC v. ThermoLife Int’l, LLC, et al. – The U.S. District Court for the Southern District of Florida in Ft. Lauderdale denied the parties’ joint request for an extension of time, holding that “COVID-19 alone is not a sufficient basis for extension of pretrial deadlines or the trial date. In today’s highly technological world, restrictions on movement and in-person interactions do not automatically preclude the parties from litigating their case.” The court ordered the parties to conduct depositions via video or other remote means, and further ordered that, if so unable, the parties may file a motion seeking relief provided that the motion:

  • is signed by both parties;
  • outlines the obstacles faced by counsel; and
  • details the diligent efforts undertaken to comply with the order or the reasons why compliance is difficult.

(Case No. 0:19-cv-60505; March 18, 2020).

Northern District of Georgia (Atlanta)

District Judge Steven D. Grimberg

Sanho Corp. v. Kaijet Tech. Int’l Ltd., Inc. d/b/a j5create – The U.S. District Court for the District of Georgia in Atlanta denied plaintiff’s request to compel the appearance of a resident of Taiwan for an in-person deposition in Atlanta, “[p]articularly in light of recent developments concerning the spread of COVID-19 in the United States and across the world.” The court further ordered that said deposition be held via videoconference or teleconference and completed by May 29, 2020. (Case No. 1:18-cv-05385; March 30, 2020).

District Judge Leigh Martin May

LBH Engineers, LLC v. Archer Western Contractors, LLC, et al. – The U.S. District Court for the Northern District of Georgia in Atlanta granted Defendants Georgia Department of Transportation and State Road and Tollway Authority’s motion to dismiss, lifted the court’s stay of discovery, and directed counsel for the remaining parties to conduct a telephone conference and prepare a proposed joint scheduling order. The court “is mindful that additional time for discovery may be needed given the current pandemic.” (Case No. 1:19-cv-04477; March 31, 2020).

Central District of Illinois (Peoria)

Magistrate Judge Jonathan E. Hawley

DuraSystems Barriers Inc. v. Van-Packer Co. – The U.S. District Court for the Central District of Illinois in Peoria issued a Request For International Judicial Assistance (Letter Rogatory) To The Central Authority of Ontario to summon a witness, who is a resident of Toronto, Ontario, to produce documents and appear for a deposition. The Court further requested that the examination by deposition “be conducted by remote means in light of travel restrictions due to the current pandemic.” (Case No. 1:19-cv-01388, presiding before Chief District Court Judge Sara Darrow; October 13, 2020).

Northern District of Illinois (Eastern Division—Chicago)

Magistrate Judge Susan E. Cox

Beijing Choice Electronic Tech. Co., Ltd. v. Contec Medical Systems USA, Inc., et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago granted-in-part plaintiff’s motion to compel multiple requests for discovery and granted plaintiff’s motion for leave to file its reply brief under seal. Though neither party asserted the impacts of the COVID-19 pandemic as a basis for its arguments, in multiple places throughout the 31-page Opinion and Order, the court expressed its expectation that “the parties [] work together to account for and accommodate any disruptions, restrictions, and delays that may be caused by the ongoing global coronavirus pandemic.” It is worth noting, however, that the deadline for completion of discovery was extended in this case by 49-days from May 11, 2020 to June 29, 2020, pursuant to the District Court’s Amended General Order 20-0012 and Second Amended General Order 20-0012 regarding the coronavirus public emergency. The Court granted the parties' Joint Motion To Extend Discovery Due To Pandemic-Related Restrictions On Travel From China, ruling that fact discovery closes on August 26, 2020. On October 22, 2020, the Court denied plaintiff’s Motion to compel defendant to comply with court ordered depositions, instead extending the fact discovery deadline to March 31, 2021 to allow additional time to complete the previously ordered depositions. The Court noted that defendants’ company policy forbids travel outside mainland China due to the COVID−19 pandemic and Chinese Law prohibits depositions by remote means. The Court indicated that it believes defendants' company policy “is prudent in light of the global pandemic and will not order employees to travel to Macau in contravention of those policies at this time.” (Case No. 1:18-cv-00825, presiding before District Judge Franklin U. Valderrama; April 8, 2020, August 3, 2020 and October 22, 2020)

Magistrate Judge Gabriel A. Fuentes

Wi-LAN, Inc., et al. v. Motorola Mobility LLC, et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago sua sponte extended the deadline for submitting a Rule 26(f) report by 28-days to April 21, 2020, and further extending all discovery deadlines in the case by 21-days. This order was issued pursuant to the court’s Amended General Order 20-0012, dated March 16, 2020, and in response to the COVID-19 public health emergency. (Case No. 1:19-cv-00941, presiding before District Judge John F. Kness; March 16, 2020).

District Judge Charles R. Norgle

GlobalTap, LLC v. Petersen Manufacturing Co. Inc. et al.The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago granted defendant’s motion to compel plaintiff to produce certain documents, reproduce other documents in legible form and supplement its initial disclosures. The Court further ordered, that [i]n light of the COVID-19 pandemic, plaintiffs must comply no later than September 8, 2020.”  (Case No. 1:18-cv-05383; July 16, 2020).

District Judge Martha M. Pacold

Medline Industries, Inc. v. CR Bard, Inc. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago found good cause, after reviewing the parties’ status report, to revoke the further 28-day extension of the expert discovery deadline as provided in the Third Amended General Order No. 20-0012. The parties had completed only one of the seven necessary expert depositions in early 2020, and defendant's opposition to plaintiff's request to revoke the further 28-day extension, from August 25, 2020 to July 28, 2020, is based largely on a desire to conduct the remaining six expert depositions in person. The Court indicated that it “sees no reason to postpone the conclusion of this long-pending discovery for another month in the hope that depositions can safely be conducted in person, when there is a strong possibility that conditions surrounding the COVID-19 public health emergency will not have changed significantly.” Arguments for conducting an in-person deposition of an expert (in lieu of a remote video deposition) in a patent case were found to be not compelling. The use of remote video technology was encouraged as it “exists to reduce the cost of litigation and now to enhance its safety during a pandemic, the likes of which have not been seen in this country since World War I.” (Case No. 1:16-cv-03529; May 20, 2020).

Magistrate Judge Sidney I. Schenkier

RTC Industries, Inc. v. Fasteners for Retail, Inc.  – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago denied a motion to preclude without prejudice pending the required meet and confer process. Noting that it did not “wish to impose any undue burden on the parties in light of the pandemic,” the court set a briefing schedule and indicated that the parties shall meet and confer by May 15, 2020 “in the presence of a court reporter (electronically, and not in person).” The court further indicated that if the proposed dates “present a problem for the parties in light of the pandemic, they shall meet and confer and propose revised dates.” (Case No. 1:17-cv-03595, presiding before District Judge Martha M. Pacold; April 16, 2020).

Southern District of Indiana (Indianapolis)

District Judge Tanya Walton Pratt

Knauf Insulation, LLC, et al. v. Johns Manville Corp., et al. – On March 20, 2020, the U.S. District Court for the Southern District of Indiana’s Indianapolis Division denied defendants’ motion for oral argument in light of General Orders of the Court and closure of the building due to the COVID-19 pandemic. On March 24, 2020, Magistrate Judge Mark J. Dinsmore denied the parties’ joint stipulation regarding a stay in light of the coronavirus pandemic and sua sponte amended the Case Management Order to incorporate extensions to various deadlines. On March 26, 2020, Magistrate Judge Dinsmore granted the defendants’ unopposed motion to extend the deadline for invalidity contentions by two weeks. On June 23, 2020 the Magistrate Judge granted the parties' Joint Motion for Two Week Extension of Deadline for Liability Expert Reports requesting an extension, in part, due to the COVID-19 pandemic and related restrictions that slowed the rate at which laboratories can perform and complete testing. (Case No. 1:15-cv-00111 March 20, 2020, March 24, 2020 & March 26, 2020 and June 23, 2020).

Southern District of Iowa (Central Division—Des Moines)

Chief Magistrate Judge Helen C. Adams

Vermeer Mfg. Co. v. The Toro Co. – The U.S. District Court for the Southern District of Iowa’s Central Division in Des Moines granted plaintiff’s emergency motion to quash subpoenas for the depositions of three (3) undisclosed non-party individuals “in direct contravention of the [c]ourt’s March 20, 2020 Order extending the discovery deadline for the limited purpose of completing outstanding discovery and rescheduling depositions.” The court held that to allow the three depositions at issue to take place would be especially prejudicial to plaintiff. The original extension was premised on the parties inability to timely complete discovery “because of the emerging complications resulting from COVID-19.” (Case No. 4:17-cv-00076, presiding before Senior District Judge Charles R. Wolle; April 20, 2020).

District of Kansas (Kansas City)

Magistrate Judge James P. O'Hara

Sudenga Industries, Inc. v. Global Industries, Inc. – The U.S. District Court for the District of Kansas in Kansas City granted defendant's unopposed motion to stay discovery pending its summary judgment motion, agreeing "that proceeding with expert discovery while dual case-dispositive motions are pending is unduly burdensome at this stage, especially given the demands imposed by the COVID-19 pandemic.” The court stayed all pretrial proceedings in the case until both parties’ motions for summary judgments are filed, briefed, and decided by the presiding U.S. District Judge. (Case No. 2:18-cv-02498, presiding before District Judge Daniel D. Crabtree; April 20, 2020).

Western District of Louisiana (Lafayette)

Magistrate Judge Carol B. Whitehurst

Swivel Rental & Supply, LLC v. Petro Pull, LLC, et al. – The U.S. District Court for the Western District of Louisiana in Lafayette conducted a telephone conference with the parties on August 18, 2020 to consider the Plaintiff’s Motion For Protective Order For Remote Depositions Only. Following discussions by both parties, the Court denied Plaintiff’s Motion, stating that it “expects the parties to cooperate with each other and the third party witnesses to apply a COVID protocol that meets the needs of those involved in the depositions.” (Case No. 6:18-cv-01141, presiding before District Judge Michael J. Juneau; August 19, 2020).

District of Massachusetts (Boston)

District Judge Richard G. Stearns

Uniloc 2017 LLC v. Paychex, Inc. – The U.S. District Court for the District of Massachusetts in Boston granted in part and denied in part defendant’s Emergency Motion For Remote Depositions filed because plaintiff “insists on attending in-person depositions of non-parties and [defendant’s] personnel, despite the current circumstances surrounding COVID-19 and the availability of remote technologies.”  The Court ruled that plaintiff may attend a deposition in person provided it takes its “proposed precautions” and the witness does not object. The Court further noted that “[u]nder current pandemic circumstances the court will not require a witness to occupy an enclosed room with those other than his/her own attorney for an extended period of time.” (Case No. 1:19-cv-11272; July 16, 2020).

District Judge William G. Young

Bio-Rad Lab., Inc., et al. v. Stilla Tech., Inc., et al. – The U.S. District Court for the District of Massachusetts in Boston entered an order for a Commission to Take Foreign Deposition. The order is addressed to “Any Consular Officer of the United States Assigned to Paris, France” and requests that oral depositions be taken at the United States Embassy in Paris or remotely by videoconference on or about October 6, 2020 to October 9, 2020. However, the order goes on to specify that, “[i]n view of any current or potential COVID-19 related restrictions at the time of depositions, the parties and witnesses have consented and request to conduct the depositions remotely by videoconference at Stilla FR’s principal place of business or other location to be agreed upon by the parties.” (Case No. 1:19-cv-11587; August 20, 2020).

 

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