Discovery - Page 2
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.” On March 26, 2021, the Court granted the parties request for an additional 90 days to complete depositions finding that the ongoing COVID-19 pandemic constituted good cause for the extension. The Court found that “the circumstances preventing the depositions from taking place 5 months ago have not materially changed, and the parties have been unable to take depositions of witnesses residing in China.” (Case No. 1:18-cv-00825, presiding before District Judge Franklin U. Valderrama; April 8, 2020, August 3, 2020, October 22, 2020 and March 26, 2021).
District Judge Sara L. Ellis
Medline Industries, Inc. v. CR Bard, Inc. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago denied plaintiff's motion under Federal Rules of Civil Procedure 26(e) and 37(c) to strike and preclude defendant's experts from relying on a previously undisclosed redesigned kit as a non-infringing alternative, but ordered defendant to pay plaintiff its reasonable expenses, including attorneys’ fees, because the delay was not substantially justified or harmless. As part of its analysis with respect to whether the violation was harmless, the Court found that the disruption to trial factor supported a finding of harmlessness, because the violation will not disrupt trial since there is no trial date set and “given the impact the COVID-19 pandemic has had on court proceedings in this District over the past year (and the impact it may continue to have), the Court likely will not schedule a trial in this case anytime soon, regardless of whether discovery is reopened for a limited amount of time.” (Case No. 1:17-cv-07216; March 3, 2021).
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 John Z. Lee
PerDiemCo, LLC v. GPS Insight, LLC – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago granted plaintiff leave to take limited venue-related discovery directed to the question of whether the defendant had continuing operations in the Northern District of Illinois after the relevant time. The Court encouraged the parties to use electronic means to conduct the deposition, if necessary, and further noted that the inability to conduct a deposition in person shall not be grounds for an extension of the limited discovery period. (Case No. 1:20-cv-03466; December 2, 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 Allison D. Burroughs
Virtek Vision International ULC v. Assembly Guidance Systems, Inc. d/b/a Aligned Vision – The U.S. District Court for the District of Massachusetts entered a Stipulation Addendum To Confidentiality Agreement And Order Regarding Treatment Of Source Code. In order to “accommodate concerns regarding safety during the COVID-19 pandemic,” the agreement provides that the receiving party may “request that [code] inspection be done remotely using a third-party virtual code review platform” if the disclosing party elects to produce the source code for inspection at the offices of its counsel or another mutually agreeable location. (Case No. 1:20-cv-10857; November 20, 2020).
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).
Magistrate Judge Elizabeth Cowan Wright
ARP Wave, LLC, et al. v. Salpeter, et al. – The U.S. District Court for the District of Minnesota in Minneapolis issued an order addressing various discovery issues, including granting defendants’ request to compel responding parties to conduct proper searches and produce all responsive documents to specific RFPs, “only to the extent that plaintiff will make good faith attempts to arrange for securing identified boxes of documents located at the ARP Wave facility in Centennial, Colorado to the extent it is reasonably possible to safely and legally do so in light of Colorado’s stay-at-home order as a result of the COVID-19 pandemic” (emphasis in original). The court further ordered that depositions take place remotely via videoconference in light of the COVID-19 pandemic. (Case No. 0:18-cv-02046, presiding before District Judge Patrick J. Schiltz; April 10, 2020).
District of Minnesota (St. Paul)
Magistrate Judge Hildy Bowbeer
Grupo Petrotemex, SA DE CV, et al. v. Polymetrix AG – The U.S. District Court for the District of Minnesota in St. Paul issued an application requesting authorization from the Swiss Federal Department of Justice and Police to take evidence and conduct remote depositions pursuant to the Hague Convention, based on a joint motion for Appointment of Commissioners with respect to depositions of witnesses in Switzerland which had been postponed due to restrictions on travel associated with the COVID- 19 pandemic. In an effort to complete the depositions before the filing of summary judgment motions, the Court had instructed the parties to initiate the Hague Convention process required to conduct the depositions by videoconference, while also monitoring “travel restrictions and public health guidance that could permit the depositions to be taken legally and reasonably safely outside of Switzerland, either in person or by videoconferencing means, sooner than they could be arranged through the Hague Convention process.” The Court granted defendant’s Expedited Motion Pursuant to Fed. R. Civ. P. 30(b)(4) ordering that the previously noticed depositions of its witnesses, that are scheduled for the week of August 3, 2020, be taken remotely using videoconferencing technology. While the Court recognized “the advantages of in-person depositions under ordinary circumstances”, it noted that “these are not ordinary circumstances” and the necessary restrictions related to the COVID-19 pandemic will likely continue for an indeterminate and potentially lengthy amount of time. With respect to a proposal by plaintiffs for a possible location option for in-person depositions that might be permissible from a legal or regulatory standpoint, the Court indicated that it “is not satisfied that travel to and from [that location] would not require a period of self-quarantine at least upon the return home for one or more of the participants, nor is the Court satisfied that the travel and in-person proceedings would not expose the participants to a substantially greater risk of contracting COVID-19 beyond what they might otherwise choose to encounter at home.” The Court further indicated it “is not willing to continue to allow the parties to take a wait-and-see approach”, ruling that the depositions must go forward because the technology is available and the parties have already secured the necessary authorization through the Hague Convention to proceed with the depositions by videoconferencing means. Finally, the parties were directed to meet and confer as to the remaining elements of a remote deposition protocol, and file a proposed remote deposition protocol. The Court issued an Order For Remote Deposition Protocol, with input from the parties, providing a protocol that “will govern the conduct of remote depositions in [the case].” The parties agreed that “the court reporter can administer the oath to each deponent remotely and such oaths shall have full legal effect under Fed. R. Civ. P. 28,” and that, pursuant to Fed. R. Civ. P. 29(a), “the recorded video may be used as if it were a recording prepared by a certified videographer and each side waives any objections based on authenticity.” The protocol indicates that the “witness shall not wear a mask or face covering of any kind during his/her deposition testimony . . . [and to the extent practicable the] head, shoulders, arms, and hands of the witness should be displayed on the screen at all times, as should any and all documents and/or other items that are on the table or in front of the witness.” In addition, “[n]o person may be physically located in the same room as the witness during the taking of a remote deposition except for a non-attorney who may be present solely for the purpose of providing technical assistance as needed.” On August 21, 2020, the Court ordered a hearings motion set for September 14, 2020 to address multiple motions filed by plaintiffs, including a motion for leave to amend the complaint and motions regarding alleged deficiencies in discovery and a motion for contempt. The hearing will be conducted via ZOOMGOV technology. (Case No. 0:16-cv-02401, presiding before District Judge Susan Richard Nelson; May 6, 2020, July 20, 2020, August 1, 2020, and August 21, 2020).
District Judge Wilhelmina M. Wright
Willis Electric Co., Ltd. v. Polygroup Limited (Macao Commercial Offshore) et al. – The U.S. District Court for the District of Minnesota in St. Paul overruled plaintiff's objections to a magistrate judge's order denying in part plaintiff's motion to compel depositions to take place in the United States. The Court found the denial of plaintiff’s motion to compel depositions to occur in the United States “was neither clearly erroneous nor contrary to law on the basis of the COVID-19 pandemic.” In particular, the plaintiff did not demonstrate that the magistrate judge abused her discretion in considering the impact of the COVID-19 pandemic, in February and March, in light of the information available at the time and given a district court’s broad discretion in determining the location for depositions to occur. The Court granted the parties’ Joint Motion To Extend Fact Discovery Deadline In Light Of Exigent Circumstances, extending the fact discovery deadline to December 8, 2020, in part because “the Covid-19 pandemic has disrupted and continues to disrupt the parties’ ability to schedule and take international depositions in a convenient, safe, and efficient manner.” (Case No. 0:15-cv-03443; June 19, 2020 and July 30, 2020).
Southern District of Mississippi (Eastern Division— Hattiesburg)
Magistrate Judge Michael T. Parker
BNJ Leasing, Inc. et al v. Portabull Fuel Service, LLC - The U.S. District Court for the Southern District of Mississippi in Hattiesburg denied plaintiff’s Unopposed Motion for Extension of Time for Fact Discovery, seeking an extension of two months due to the COVID-19 pandemic. The Court found the Motion failed to show good cause and does not provide the specifics needed to justify moving the case deadlines, noting that the parties provide no indication why any outstanding discovery cannot be completed within the 46 days remaining before the discovery deadline expires beyond a general statement about “potential scheduling difficulties based on the ongoing COVID-19 pandemic.” (Case No. 2:19-cv-00156, case presiding before District Judge Keith Starrett; January 14, 2021).
District of New Jersey (Camden)
Magistrate Judge Joel Schneider
Mitsubishi Tanabe Pharma Corporation et al v. Aurobindo Pharma USA, Inc. et al.– The U.S. District Court for District of New Jersey in Camden issued a Request For Judicial Assistance To The High Court of The Canton of Zurich to summon two expert witnesses, who reside in Switzerland, for a deposition. The Court noted that the trial is scheduled for February 23, 2021, and that in the event that trial needs to be conducted remotely, or that the expert witnesses cannot travel to the United States due to the COVID-19 pandemic related restrictions, the current Letter of Request seeks the remote depositions and trial testimony pursuant to the Hague Convention, whereby the remote depositions will be held separately from the trial testimony. (Case No. 1:17-cv-05005, presiding before District Judge Renee Marie Bumb; December 23, 2020).
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). On April 19, 2021, the Court issued a Request For International Judicial Assistance (Letter of Request) - Permission Of Taking Of Evidence Under Hague Evidence Convention, requesting assistance of the Courts of Switzerland to compel oral testimony from an expert who submitted a report in the case. Trial is scheduled for June 14, 2021. The Letter of Request seeks the remote trial testimony of the expert pursuant to the Hague Convention, in the event that trial will be conducted remotely, or that the expert cannot travel to the United States due to COVID-19 pandemic related restrictions. (Case No. 3:18-cv-11026, presiding before District Judge Michael A. Shipp; April 23, 2020, May 22, 2020 and April 19, 2021).
Amgen, Inc. v. Sandoz, Inc., et al. – The U.S. District Court for the District of New Jersey in Newark granted the parties’ Stipulation and Proposed Order Regarding Foreign Depositions, which permits corporate representatives under Rule 30(b)(6) as well as fact witnesses under Rule 30(b)(1) to appear for depositions by way of video, in light of travel restrictions resulting from “government orders and health concerns concerning the global COVID-19 pandemic.” On September 2, 2020 the Court entered a similar Stipulation related to another third party once again indicating that any such foreign deposition “will be deemed to be useable to the same extent as if the deposition had been conducted in person in the United States.” In addition, the Order stated that “to the extent possible, the Court Reporter will be present in the room with the attorney or attorneys taking the deposition.” (Case No. 3:18-cv-11026, presiding before District Judge Michael A. Shipp; August 20, 2020 and September 2, 2020).
Takeda Pharmaceutical Company Limited et al v. Zydus Pharmaceuticals (USA) Inc. et al. – The U.S. District Court for the District of New Jersey in Trenton entered a Stipulated Order Concerning Remote Depositions, providing the protocol that shall apply in the case for conducting remote depositions. The parties indicated that is presumed that all remaining depositions in the case shall be conducted remotely due to the COVID-19 pandemic. According to the protocol “any platform must allow for . . . participating attorneys and the court reporter to hear and see, and Witness, Deposing Counsel, Defending Counsel, and Attending Counsel.” It was also agreed that “[n]o person may be physically located in the same room as the witness” during the deposition except the defending attorney and a non-attorney “present solely for the purpose of providing technical assistance to the witness in using the platform.” In addition, during the deposition, “the witness may not communicate with any person, except through the platform, by any means, including through gestures, handwritten communications, email, chat, instant messaging, or text messaging.” On March 15, 2021, the Court issued a Request For International Judicial Assistance Under Article 17 Hague Evidence Convention, requesting assistance of the German Central Authority to compel oral testimony and document evidence. Although it was acknowledged that the local competent authorities may require the witnesses to attend their remote examination via videoconference at the local courthouse, the parties requested that the witnesses be allowed “to attend their remote examination from their homes, respectively, due to the current circumstances and complications related to the COVID-19 pandemic.” (Case No. 3:18-cv-12663, presiding before District Judge Brian R. Martininotti; July 24, 2020, August 12, 2020 and March 15, 2021).
Eastern District of New York (Brooklyn)
Chief Magistrate Judge Cheryl L. Pollak
Uni-Systems, LLC v. United States Tennis Association, Inc. et al. – The U.S. District Court for the Eastern District of New York in Brooklyn granted defendant’s motion for a protective order requesting that the Rule 30(b)(6) depositions occur at the same time as the Rule 30(b)(1) depositions of two fact witnesses. Finding that “it is more efficient for the fact and 30(b)(6) depositions to proceed simultaneously,” the Court also Ordered “the parties to meet and confer regarding the deposition schedule and [urged] the parties to take all precautions pursuant to the ongoing COVID pandemic, including exploring the possibility of taking depositions remotely using videoconferencing technology.” (Case No. 1:17-cv-00147, presiding before District Judge Kiyo A. Matsumoto; July 6, 2020).
Eastern District of New York (Central Islip)
Magistrate Judge Steven I. Locke
Signify North America Corp. f/k/a Philips Lighting North America Corp., et al., v. Satco Products, Inc – The U.S. District Court for the Eastern District of New York in Central Islip granted defendant’s motion to compel, holding that “(1) [plaintiff] will compile the summaries at issue containing the information it reasonably believes will be relevant to the upcoming mediation, and confer with [defendant] as part of this process; and (2) [plaintiff] will start sending notice to the Category 2 licensees and is practical under the circumstances given the present COVID-19 pandemic.” (Case No. 2:19-cv-06125, presiding before District Judge Joan J. Azrack; April 13, 2020).
Northern District of New York (Syracuse)
Magistrate Judge Andrew T. Baxter
ICM Controls Corp., et al. v. Honeywell Int’l, Inc. – On April 14, 2020, the U.S. District Court for the Northern District of New York in Syracuse granted the parties’ stipulation and order regarding the deposition of a Rule 30(b)(6) deponent who suffered a traumatic injury in early March, necessitating the deposition’s postponement, the rescheduling of which is now also impacted by the COVID-19 pandemic. The parties agreed to communicate with a view of producing the deponent for deposition reasonably in advance of June 1, 2020, as well as endeavor to produce a corporate representative on financial topics for deposition by the same time. The parties also agreed the depositions could take place virtually if in-person depositions are not possible due to the COVID-19 pandemic. On April 16, 2020, the court granted the parties’ stipulation and order permitting plaintiffs to supplement their opening expert report on infringement after the April 16, 2020 deadline due to the expert’s equipment and test boards being delayed in France as a result of the COVID-19 pandemic. According to the stipulation, the expert had been living and working in France where he had sent his equipment and materials needed to complete his expert analysis and report before he “was forced to quickly evacuate out of France back to the United States.” The stipulation allows plaintiffs to timely supplement their expert’s opening report to include oscilloscope data (which is dependent on the expert’s equipment) and “shall not extend to the substance of the report.” The stipulation also provides additional time for defendant’s technical expert to supplement his or her responsive report on infringement to address the supplemented oscilloscope data. (Case No. 5:12-cv-01766, presiding before Senior District Judge Lawrence E. Kahn; April 14, 2020 & April 16, 2020).
ICM Controls Corp., et al. v. Honeywell Int’l, Inc. – The U.S. District Court for the Northern District of New York in Syracuse denied defendants’ request to amend their invalidity contentions. Specifically, the “court recognizes that the current schedule for completion of discovery will likely need to be extended because of the COVID-19 epidemic. However, allowing defendants to pursue their new invalidity theory would further complicate and prolong discovery and the completion of pretrial proceedings. A continuance would not eliminate the prejudice to plaintiffs, who have been litigating this case for more than seven years.” The court further ordered that “pending the resolution of any appeal of this order, discovery shall continue, subject to likely modification.” (Case No. 5:12-cv-01766, presiding before Senior District Judge Lawrence E. Kahn; April 3, 2020).
Southern District of New York (Manhattan)
Magistrate Judge Ona T. Wang
Wongab Corp. v. Urban Outfitters, Inc., et al. – The U.S. District Court for the Southern District of New York in Manhattan sua sponte ordered:
- counsel to work remotely;
- that no in-person depositions shall take before May of 2020 absent a showing of “exceptionally good cause;” and
- that parties planning to conduct depositions on or after May 1st shall submit a joint status letter stating their deposition plans 14 days before the planned depositions.
Notably, the order also permits counsel to email the court ex parte with private, personal, familial, or medical concerns that would necessitate further orders, provided that they advise the other parties that they will be contacting the court ex parte. On August 11, 2020, the Court granted plaintiff’s Motion for Extension of Time to Complete Discovery, extending the time to complete expert discovery because counsel was “working remotely since early March, and  had a small number of unfortunate calendaring and logistical issues arise”, such as failing to “include a number of the dates that were included in the parties’ initial planning report, including the expert deadlines.” (Case No. 1:19-cv-01660, presiding before District Judge Andrew L. Carter, Jr.; March 19, 2020 and August 11, 2020).
District of New Jersey (Trenton)
Magistrate Judge Tonianne J. Bongiovanni
Boehringer Ingelheim Pharmaceuticals, Inc., et al. v. Lupin Atlantis Holdings SA, et al. – The U.S. District Court for the District of New Jersey in Trenton granted the parties request to permit depositions to occur after the approaching close of fact discovery on July 24, 2020, due to the “extraordinary conditions” caused by the COVID-19 pandemic. According to the parties, “Government orders and health concerns concerning the pandemic have reduced or prohibited the ability and availability of witnesses and their counsel to travel to, from, and within the United States . . . [and such] conditions have reduced the ability to organize and schedule depositions within the existing fact discovery period.” On August 12, 2020, the Court entered a Stipulation and Order Concerning Remote Depositions, providing the protocol that shall apply in the case for conducting depositions via remote means. The parties agreed that all depositions of fact witnesses shall be conducted remotely due to the COVID-19 pandemic and schedule limitations which left “insufficient time to take depositions by means other than remote deposition.” The deponent, court reporter, and counsel will each participate remotely and separately, and each shall be visible to all other participants. It was also agreed that “[n]o counsel shall initiate a private conference, including through test message, electronic mail, or the chat feature in the videoconferencing system, with any deponent while a question is pending, except for the purpose of determining whether a privilege should be asserted.” (Case No. 3:18-cv-12663, presiding before District Judge Brian R. Martininotti; July 24, 2020 and August 12, 2020).
Middle District of North Carolina
District Judge Catherine C. Eagles
Fuma International, LLC v. RJ Reynolds Vapor Company – The U.S. District Court for the Middle District of North Carolina denied defendant’s motion for leave of court to conduct a for-trial deposition of a witness in China, outside of the discovery period. The Court indicated that “[n]o trial will take place until sometime next year, when it is possible the public health and travel situation may have improved.” In addition, “it is not clear when or how such a deposition could take place” because the “premise of the motion” is that the witness cannot travel and the parties agree that Chinese residents are precluded from providing depositions in China. As such, the Court found that “[i]n the absence of an explanation of how and when such a for-trial deposition, and the proffered discovery deposition, could be taken, the motion is based on speculative possibilities and otherwise is premature.” (Case No. 1:19-cv-00260; August 12, 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.” The Court granted plaintiff’s Motion to Stay Briefing Schedule to delay the deadline for its Response in Opposition to Summary Judgment to allow for the production of all materials considered by a declarant, allow for depositions and permit any reasonable discovery necessary to address the issues raised in the motion. As part of the disputes, source code was previously not produced because a resolution “was thwarted in part due to disagreements on whether [defendant’s] proposal for in-house review of the code created undue risk to [plaintiff’s] attorneys due to the COVID-19 pandemic.” The Court found it reasonable to allow plaintiffs the opportunity to obtain discovery necessary to address the factual statements made in defendant’s motion. On January 20, 2021, the Court entered a Source Code Addendum To the Protective Order, stipulated and agreed to by the parties, providing procedures to facilitate remote source code review during the COVID-19 pandemic.(Case No. 1:18-cv-00016; April 27, 2020, December 18, 2020 and January 20, 2021).
Parker-Hannifin Corporation v. Laird Technologies, Inc. – The U.S. District Court for the Northern District of Ohio’s Eastern Division entered a joint stipulation concerning the protocol for conducting remote depositions of their claim construction experts, after concerns were raised regarding in-person depositions in light of the COVID-19 pandemic. Among a number of provisions, the parties agreed that “given the COVID-19 pandemic, the court reporter will not be physically present with the witness whose deposition is being taken . . . [but the parties will not] challenge the validity of any oath administered by the court reporter . . . .“ (Case No. 1:17-cv-00988; June 22, 2020).
Western District of Pennsylvania (Pittsburgh)
Senior District Judge Joy Flowers Conti
Sherwin-Williams Company v. PPG Industries, Inc.– The U.S. District Court for the Western District of Pennsylvania in Pittsburgh granted defendant’s motion to compel updated damages discovery about a potential non-infringing alternative product for its lost profit and reasonable royalty analysis. The Court had previously granted partial summary judgement to prevent the defendant’s damages expert from using the product in the proposed manner based upon a lack of factual evidence in the record, which had been limited to the period prior to Q2 2018. The Court found that its prior decisions did not resolve the current motion, however, because the court’s summary judgment and Daubert decisions did not address supplemental damages discovery or the period post-Q2 2018. The Court noted that it is now three years after the close of fact discovery, and “unfortunately, due to the Covid-19 pandemic, the trial has been continued and is not imminent.” The parties were found to have a duty to supplement damages discovery, even beyond the close of fact discovery, and the existence of non-infringing alternative products is relevant to the damages analysis. The Court further found that there will be no real prejudice, given the “unavoidable delay of the trial, the parties’ resources, and their litigious approach to the litigation.” The Court ruled that neither party’s expert may refer to the product as a non-infringing alternative prior to Q2 2018, based on the Court’s prior determinations, but if the market has changed since then “damages should be based on economic reality; not a market arbitrarily frozen in time by the original close of fact discovery in [the] litigation.” (Case No. 2:17-cv-01023; February 18, 2021).