Discovery - Page 3
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.” On July 28, 2021, the Court granted defendant’s motion for leave to take testimony of a Chinese witness via deposition in Hong Kong having found good cause had been shown. The Court noted that it had previously denied defendant’s request to take a trial deposition of the witness as premature, but circumstances arising from the global COVID-19 pandemic continue to make it highly unlikely that the witness will be able to travel here for the November 2021 trial, despite his willingness to do so. The Court further stated that the “use of videoconference technology for the taking of depositions has become commonplace during the pandemic, and it works well and generally smoothly.” (Case No. 1:19-cv-00260; August 12, 2020 and July 28, 2021).
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).
Eastern District Of Pennsylvania (Philadelphia)
District Judge Joshua D. Wolson
Midwest Athletics and Sports Alliance LLC v. Ricoh USA, Inc. – The U.S. District Court for the Eastern District of Pennsylvania in Philadelphia denied defendant’s Motion to Strike plaintiff’s expert reports that proposed infringement theories that differ in significant ways from those put forth in its infringement contentions. Although the Court considered the plaintiff’s conduct concerning, it found that there is ample time to remedy the belated and prejudicial disclosures. Therefore, the Court denied the motion but ruled it will give defendant an opportunity to address and rebut the new opinions, which may include additional discovery. As part of its analysis regarding the ability to cure and trial disruption, the Court noted that given its “backlog of cases due to the Covid-19 pandemic, the Court might not be able to schedule a trial in this matter until 2022 or later.” (Case No. 2:19-cv-00514; May 12, 2021).
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.” On October 27, 2021, the Court issued a number of rulings on MILs related to supplemental damages discovery. The Court acknowledged that the trial, which is now scheduled to commence in January 2022, had been delayed due to the COVID-19 pandemic and supplemental discovery had previously been granted with respect to the period post-Q2 2018, but it made clear that “[n]either side will be permitted a second bite at the apple with respect to the original damages period.” (Case No. 2:17-cv-01023; February 18, 2021 and October 27, 2021).
District of Rhode Island (Providence)
District Judge Mary S. McElroy
Summer Infant (USA), Inc. v. TOMY Int’l, Inc. – The U.S. District Court for the District of Rhode Island in Providence entered a Notice of Remote Hearing set for August 25, 2020, to be conducted virtually via ZOOM, to address discovery disputes. The Court will send the ZOOM access information to the parties’ counsel via e-mail. (Case No. 1:17-cv-00549; August 20, 2020).
Western District of Tennessee (Western Division – Memphis)
District Judge Jon Phipps McCalla
Avanos Medical Sales, LLC v. Medtronic Sofamor Danek USA, Inc. et al. -The U.S. District Court for the Western District of Tennessee in Memphis denied defendants’ Motion for Leave to Amend Final Invalidity and Unenforceability Contentions, finding that defendants did not put forth sufficient reasons to show diligence in seeking to amend, and good cause did not exist for defendants’ amendments to their invalidity contentions. Although the Court agreed that that “the circumstances brought about by the COVID-19 pandemic are justifiable reasons” for the delay by the third party in accessing documents, and that defendants acted diligently after serving the third party subpoena, it found the decision not to serve the third party with a subpoena for six months after they identified the potential prior art suggested a lack of diligence. (Case No. 2:19-cv-02754; January 29, 2020).
Eastern District of Texas (Marshall Division)
Chief District Judge J. Rodney Gilstrap
Bell Northern Research, LLC v. Samsung Electronics Co., Ltd. et al. – The U.S. District Court for the Eastern District of Texas’s Marshall Division ordered a Covid-19 Addendum To The Stipulated Supplemental Protective Order that is effective immediately and remains in effect until the close of expert discovery (currently October 23, 2020), providing for remote Source Code review using “specially-configured source code discovery laptops . . . which can be shipped to reviewers who are sheltering in place, and enable the recipient . . . to review code in an environment designed to approximate the security precautions that have become a longtime standard at the [producing party’s] dedicated source code discovery facility.” The discovery facility of the third party producing party “has become temporarily unavailable because of public health orders and advisories relating to [the Covid-19 pandemic].” Each reviewer provided with a laptop must “use the shipping container and/or packing materials” in which the laptop was received to return the laptop “following the completion of their review, but in no event later than 14 days after delivery.” (Case No. 2:19-cv-00286; July 30, 2020).
Image Processing Techs., LLC v. Samsung Electronics Co., Ltd., et al. – The U.S. District Court for the Eastern District of Texas’s Marshall Division issued an Order On Motions In Limine, including one that was agreed upon that “[n]either party shall refer to COVID-19 in connection with a party or its witnesses (including a decision to call or not call, or as a reason excusing attendance at trial), or shall refer to a witness’s nationality, citizenship or place of residence in a disparaging manner.” (Case No. 2:20-cv-00050; June 8, 2020).
Intertrust Technologies Corporation v. Cinemark Holdings, Inc. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted plaintiff’s Unopposed Motion For Leave To Permit Late-Produced Documents From Foreign Third Party, allowing production of 54 documents produced from Hong Kong after the close of fact discovery. The Court noted that plaintiff informed it that the discovery had been diligently sought, but various delays outside of its control prevented the timely production of the documents. In particular, the plaintiff had requested a Letter Rogatory which was issued with more than four months remaining in fact discover, but as the plaintiff noted “the road to the foreign discovery sought here was full of obstacles and delays outside of [plaintiff’s] control, not the least of which was the COVID-19 pandemic.” (Case No. 2:19-cv-00266; August 17, 2021).
Saint Lawrence Comms. LLC v. Amazon.com, Inc., et al. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted the parties’ renewed joint motion for a 30-day continuance on the basis of newly imposed government and public health restrictions. Notably, the court denied the parties’ original joint motion for a 30-day continuance on March 12, 2020, noting that “there are no current official travel restrictions or advisories from government health agencies.” Specifically, the court advised that while it “is sensitive to the Parties’ concerns and the hazards associated with the Coronavirus, [it] is not inclined to implement delays or grant continuances unless a party can put forward specific concerns backed by firm restrictions from a governmental/public health level of actual exposure.” (Case No. 2:19-cv-00027; March 19, 2020).
Magistrate Judge Roy S. Payne
GREE, INC v. Supercell Oy – The U.S. District Court for the Eastern District of Texas’s Marshall Division denied defendant's Motion for Relief in View of Governmental/Public Health Restrictions in Response to COVID-19 Virus Impact and Motion to Compel Discovery and Depositions -- seeking a 3-month trial extension due to the COVID-19 pandemic in order to take additional depositions of plaintiff's employees -- because the defendant failed to establish that the depositions were necessary. In addition, the Court noted that the request “to compel these depositions to promptly proceed . . . is asking for an impossibility—one also contrary to this Court’s standing orders.” Moreover, the Court felt it not clear that even if the request for a 3-month continuance was granted, it would be enough to take the depositions since “[n]o one knows for sure when this pandemic will end and countries will begin to ease restrictions” and taking a deposition in Japan is a complicated and long process. Thus, even if the deadlines were delayed, the defendant may still be then in the same position as now. The final pretrial conference was reset for August 18, 2020 and jury selection was reset until September 10, 2020 at 9:00 a.m. (CDT) (Case No. 2:19-cv-00070/00071, presiding before Chief District Judge J. Rodney Gilstrap; July 21, 2020 and August 17, 2020).
Team Worldwide Corporation v. Academy, Ltd. d/b/a Academy Sports & Outdoors – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted defendants’ Motion For Relief seeking exemption from the restriction against in-person depositions pursuant to Standing Order Regarding Pretrial Procedures in Civil Cases Assigned to Chief District Judge Rodney Gilstrap During the Present COVID-19 Pandemic. In particular, the defendants were seeking “the flexibility to accommodate the in-person attendance of one or more attorneys at witness depositions, with full remote capabilities for parties and counsel unable to attend in person, or who prefer to conduct or attend the deposition remotely . . . [submitting] that ‘hybrid’ depositions may be conducted safely and will allow for the greatest flexibility in scheduling and completing the necessary depositions.” (Case No. 2:19-cv-00092, presiding before Chief District Judge J. Rodney Gilstrap ; September 11, 2020).
District Judge Robert W. Schroeder, III
Maxell, Ltd. v. Apple Inc. – The U.S. District Court for the Eastern District of Texas’s Texarkana Division ordered a COVID-19 pandemic Addendum to the Protective Order effective immediately and remaining in effect until September 1, 2020, unless extended by agreement of the Parties or further order of the Court, providing for remote Source Code review using “dedicated, specially-configured source code discovery laptops” that may be shipped to reviewers who are sheltering in place and enable the recipient “to review code in an environment designed to approximate the security precautions set forth in the Protective Order to allow discovery of source code in this action to continue while the public health restrictions are in place.” (Case No. 5:19-cv-00036; June 25, 2020).
Uniloc USA, Inc., et. al. v. Big Fish Games, Inc. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted in part defendant's motion for an extension of deadlines for expert discovery, dispositive motions, and Daubert motions due to the COVID-19 pandemic, only agreeing to extend the expert discovery deadline three weeks from May 6 to May 27 in view of the approaching deadline. The Court acknowledged that “[t]he country is undoubtedly in the throes of a public health crisis”, however it indicated that motions like these “require something more than [defendant's] generalized concerns about COVID-19 to establish good cause.” In this case, the Court found “the defendant had not demonstrated good cause for its requested extension because its motion lacks specificity about “how the crisis has affected its deposition preparations or why it has encountered difficulty in complying with current deadlines.” The Court granted the parties’ Joint Motion to Extend Stay of All Deadlines for seven days, and staying all unreached deadlines in the Docket Control Order up to and including June 22, 2020, so the final agreement could be executed by both parties, and appropriate dismissal papers filed. The parties submitted that good cause exists for the brief extension, as “both parties have worked diligently to finalize the written agreement, and have done so amidst quarantine restrictions affecting theirs and their respective attorneys’ locations.” (Case No. 2:16-cv-00741; April 30, 2020 and June 15, 2020).
Eastern District of Texas (Sherman Division)
Magistrate Judge Christine A. Nowak
United Services Automobile Association v. PNC Bank, NA – The U.S. District Court for the Eastern District of Texas’s Sherman Division issued an Order Re: “Hotline” Hearing Pursuant To Local Tule CV-26(e), sustaining in part plaintiff’s objection to defendant’s counsel being present in-person at the deposition of a third party witness that was noticed by plaintiff’s counsel to proceed remotely. The Court ruled that defendant’s counsel must participate in the deposition via remote means during plaintiff’s counsel’s examination, but may appear in person and in the same room as the witness during his own questioning of the witness. The Court further instructed the parties to meet and confer in advance of additional depositions, and provide notice of whether attendance will be remote, in person, or hybrid. (Case No. 2:20-cv-00319, presiding before Chief Judge Rodney Gilstrap; November 17, 2021).
Southern District of Texas (Houston Division)
Senior District Judge Nancy F. Atlas
Enventure Global Tech., Inc. v. Weatherford U.S., L.P. – The U.S. District Court for the Southern District of Texas’s Houston Division cancelled the parties’ March 25th discovery conference after the parties suggested the court decide the outstanding discovery issues on the arguments set forth in their letters and without oral argument, in light of the public health issues caused by COVID-19 and the Stay-At-Home orders issued for Houston and Harris County. On February 4, 2021, the Court granted defendant’s motion to amend its preliminary invalidity contentions, in part, because “the proposed amendments . . . are attributable in part to the fact that parties, their counsel, and their experts, as well as the Patent Office from which information had to be obtained, have been hampered by requirements that all employees work from home because of the highly contagious COVID virus and the related worldwide pandemic.” The Court further noted that any prejudice to the plaintiff may be addressed by a reasonable continuance, and “[i]n deference to the difficulties of litigation during the COVID pandemic and [plaintiff’s] need to respond” the Court indicated a willingness to grant an extension of deadlines of up to 90-days if timely requested by plaintiff. (Case No. 4:19-cv-02397; March 24, 2020 and February 4, 2021).
District Judge Keith P. Ellison
Fisher-Rosemount Systems, Inc. et al v. ABB Ltd. et al. – The U.S. District Court for the Southern District of Texas’s Houston Division entered the parties’ Agreed Covid-19 Remote Source Code Review Protective Order, which the parties agreed would replace Section 7.2 (Review of Source Code) in the originally entered Protective Order as a result of the COVID-19 pandemic and related travel restrictions and shelter-in-place orders “which make in-person source code review unworkable.” The protocol calls for the producing party to load its source code on a securely hosted virtual machine and to provide access to the authorized reviewer through either a network server with a publicly facing API or a source code review laptop wherein the only functionality is to access the source code virtual machine through the network server. (Case No. 4:18-cv-00178; August 6, 2020).
District Judge Lynn N. Hughes
Celltex Therapeutics Corporation v Human Biostar, Inc and R Bio Co. Ltd. – The U.S. District Court for the Southern District of Texas’s Houston Division adopted the Special Master’s recommendations regarding defendant’s motion to inspect premises, finding that the inspection was warranted and should be permitted. Included as part of the inspection parameters, it was required that the expert “must have a current negative COVID-19 test before he can enter the clean room” and “all visitors, on the occasion of the inspection, must have a current negative COVID-19 test result before entering any part of the lab premises.” (Case No. 4:18-cv-01901; July 24, 2020).
Western District of Texas (Austin)
District Judge Alan D. Albright
Align Technology, Inc. v. 3Shape A/S et al.- The U.S. District Court for the Western District of Texas in Waco issued a Request For International Judicial Assistance (Letter Rogatory) to the Ministry of Justice in Denmark to summon a witness, who is a resident of Denmark, to produce documents and provide testimony regarding deposition topics. The Court requested that the examination be conducted via video conference due to the COVID-19 pandemic related restrictions and to all U.S. counsel to join the hearing. (Case No. 6:20-cv-00979; September 7, 2021).
Neonode Smartphone LLC v. Apple Inc. - The U.S. District Court for the Western District of Texas in Waco issued an Amended Letter Of Request For International Judicial Assistance in response to the Stockholm District Court’s Advisory Letter, clarifying and substantially narrowing the requested discovery requested from two individuals. As part of its justification, the Court indicated that the requested testimony was “necessary due to practical problems in having and enforcing the two witnesses . . . to appear in a court in the United States, in particular during the ongoing disruptions resulting from the COVID-19 pandemic.” On September 22, 2021, the Court issued another Amended Letter Of Request For International Judicial Assistance in response to the Stockholm District Court’s Advisory Letter to the same effect. (Case No. 6:20-cv-00505; September 7, 2021 and September 22, 2021).
Onstream Media Corporation v. Facebook Inc. – The U.S. District Court for the Western District of Texas in Austin issued a Request For International Judicial Assistance (Letter Rogatory) to the appropriate Judicial Authority in Japan to summon a witness, who is a resident of Japan, to produce documents and provide testimony regarding deposition topics. In light of the ongoing COVID-19 pandemic and widespread business closures, the Court provided the last known personal address for the witness in addition to the business address. (Case No. 1-20-cv-00214, March 10, 2021).
Unification Technologies LLC v. Micron Technology, Inc. et al.- The U.S. District Court for the Western District of Texas in Waco issued a Request For International Judicial Assistance (Letter Rogatory) to the judicial authorities of Taiwan to obtain evidence. Due to difficulties of international travel during the COVID-19 pandemic, the Court requested that defendants be ordered to produce source code for inspection. (Case No. 6:20-cv-00500; November 1, 2021).
Magistrate Judge Susan Hightower
Shenzhen Tange Li’An E-Commerce Co., Ltd. et al v. Drone Whirl LLC et al. – The U.S. District Court for the Western District of Texas in Austin denied plaintiffs’ Opposed Motion To Stay Discovery and for Leave To Amend Proposed Case Schedule, finding that a stay would be inappropriate because the need for discovery will not be eliminated even if the Court grants plaintiff’s motions for partial judgment and to dismiss. As part of its analysis, the Court rejected plaintiff’s argument as conjecture that there would be no prejudice from a stay “because trial likely will be delayed due to the COVID-19 pandemic” since no scheduling order had yet been set in the case. (Case No. 1:20-cv-00738, presiding before District Judge Robert Pitman; March 19, 2021).
Western District of Texas (Waco)
District Judge Alan D. Albright
H-E-B, LP v. Wadley Holdings, LLC, d/b/a nICE Coolers et al – The U.S. District Court for the Western District of Texas in Waco issued a discovery order requiring defendant to produce relevant requested discovery which is not privileged to the plaintiff within two weeks. The discovery was originally thought to be on a U.S. server, but now believed to be in an office in China that has been shut down due to the COVID-19 pandemic. (Case No. 6:20-cv-00081; April 20, 2021).
Synkloud Technologies, LLC v. Dropbox, Inc. – The U.S. District Court for the Western District of Texas in Waco ordered the defendant to produce its source code at the offices of its counsel of record in Palo Alto, California. The Court indicated that the inspection “shall be considered a necessary service to assist in compliance with a non-elective legally required activity.” The defendant will make the code available for inspection upon five business days’ notice when COVID-19 pandemic restrictions are in play and, once the parties agree that COVID-19 pandemic restrictions have been lifted, defendant will make the code available for subsequent inspections upon two business days’ notice pursuant to the terms of the protective order in these actions. (Case No. 6-19-cv-00526, June 18, 2020).
TruSun Technologies, LLC et al v. Eaton Corporation et al. – The U.S. District Court for the Western District of Texas in Waco issued a Request For International Judicial Assistance (Letter Rogatory) To The Superior Court of Justice in Ontario to summon a witness, who is a resident of Toronto, Ontario, to produce documents and appear for a deposition. As part of the request, the Court asked that the witness be compelled to attend a deposition on a date prior to July 15, 2021, or as soon thereafter as reasonably possible, “in light of possible delays experienced by the Court and the Recipient due to COVID-19, with counsel for the parties to the Actions electing whether to appear in person, by phone, or by video-conferencing.” (Case No. 6-19-cv-00656; March 22, 2021).
WSOU Investments LLC v. Microsoft Corporation – The U.S. District Court for the Western District of Texas in Waco entered a stipulated Protective Order to address disclosure of trade secrets, confidential business information, other proprietary information, or information implicating privacy considerations, including source code. "In view of the current logistical circumstances related to the COVID-19 pandemic," the Order provided that the receiving party will receive 3 copies of printed source code material. (Case No. 6:20-cv-00456; March 30, 2021).
District of Utah (Central Division)
Magistrate Judge Dustin B. Pead
Definitive Holdings LLC v. Powerteq LLC – The U.S. District Court for the District of Utah’s Central Division denied the Plaintiff’s Short Form Discovery Motion seeking a copy of the source code files to review without opposing counsel present, finding the requested “sweeping changes to the review or production of source code” not supported or warranted under the circumstances. The court acknowledged “the trying and challenging circumstances created by the COVID-19 pandemic, which impact the parties and the review of source code,” but the court encouraged the parties “to find a workable solution.” (Case No. 2:18-cv-00844, presiding before District Judge David B. Barlow; May 22, 2020).
Magistrate Judge Cecilia M. Romero
Modern Font Applications LLC v. Alaska Airlines, Inc. – The U.S. District Court for the District of Utah’s Central Division denied plaintiff's motion for monetary sanctions after granting plaintiff's motion to compel additional initial disclosures from defendant. While the court was mindful of the potential for prejudice caused by delayed initial disclosures, it noted that “the impact of the COVID-19 pandemic on business operations is unprecedented and excuses delays in normal litigation procedures.” The Court found, therefore, that the failure to provide adequate initial disclosures was not willful or in bad faith. In addition, the Court further ruled that Plaintiff may supplement its infringement contentions after receiving the supplemental initial disclosures, and may seek further relief from the court in the form of extensions to mitigate the impact of the delayed disclosures. On August 21, 2020, the Court entered a Notice of Hearing on Motion set for September 21, 2020 to address multiple discovery motions, including a Motion to Maintain Protective Order Designations and a Motion for Contempt Sanctions and to Compel Complete Initial Disclosures. The hearing will be held via ZOOM technology. On December 3, 2020, the Court granted plaintiff’s Motion To Compel Production of Documents, ordering supplemental responses to requests for production. As part of the Order, the Court indicated that the defendant’s supplemental responses shall exclude various objections, including “any COVID delay objections.” (Case No. 2:19-cv-00561, presiding before District Judge David B. Barlow; June 8, 2020, August 21, 2020 and December 3, 2020).
Vivint, Inc. v. Alarm.com – The U.S. District Court for the District of Utah’s Central Division granted the parties’ Stipulated Motion for Partial Stay and For Extension of Discovery Deadlines, “[b]ased on the stipulation of the parties, and in light of global health concerns of the current COVID-19 pandemic, to allow sufficient time to complete expert discovery in view of the uncertainty caused by the pandemic.” The court set certain deadlines in the case related to expert reports and dispositive motions and stayed all other litigation activity before the court, with the exception of a motion for reconsideration and objections to an earlier ruling. (Case No. 2:15-cv-00392, presiding before Senior District Judge Clark Waddoups; April 16, 2020).
Senior District Judge Clark Waddoups
Polar Electro Oy v. Suunto Oy et al. – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City granted plaintiff’s Motion For Leave to Supplement a Technical Expert Report, finding that the supplementation was appropriate. As part of its timeliness analysis, the Court found that the report was not untimely based on the totality of the circumstances including that the expert evaluated the report submitted on November 6, 2020, designed and conducted a test, and wrote a supplemental report by January 6, 2021 “despite his employment as a professor, COVID conditions, and intervening holidays for Thanksgiving, Christmas, and the New Year.” (Case No. 1:17-cv-00139; April 9, 2021).
Eastern District of Virginia (Norfolk)
Magistrate Judge Lawrence R. Leonard
Appotronics Corp. Ltd. v. Delta Electronics, Inc. – The U.S. District Court for the Eastern District of Virginia in Norfolk granted the parties’ Joint Motion for Extension of Case Schedule, to complete fact depositions that must take place in Taiwan and China, which, “despite the parties’ best efforts”, have been delayed due to the COVID-19 pandemic. (Case No. 2:19-cv-00466, presiding before District Judge Robert G. Doumar; July 28, 2020).
Northern District of West Virginia (Clarksburg)
Senior District Judge Irene M. Keeley
Merck Sharp & Dohme Corp. v. Mylan Pharmaceuticals Inc. et al.– The U.S. District Court for the Northern District of West Virginia in Clarksburg entered a Stipulation And Order For Entry Of Letter Of Request For Judicial Assistance To Facilitate Remote Trial Testimony, indicating the Court shall execute and issue an Appointment of Commissions Under the Hague Convention and Request for Judicial Assistance to facilitate testimony of a witness located in Switzerland for trial. In light of “the health risks related to COVID-19 and the Delta variant”, it was the “strong preference” of the plaintiff and the witness that he “testify live at trial via remote means from Switzerland, facilitated by a Court-approved vendor.” It was also noted that travel from foreign countries, including Switzerland, where the witness resides, is difficult given restrictions and quarantine mandates that are in place due to the COVID-19 pandemic and the Delta variant, and that “the recent rise of COVID-19 cases due to the Delta variant has cast further uncertainty on the quarantine rules of each country.” (Case No. 1:19-cv-00101; October 12, 2021).
The United States Court of Federal Claims
Court of Federal Claims Judge Patricia E. Campbell-Smith
University of South Florida Board of Trustees v. United States of America – The U.S. Court of Federal Claims granted plaintiff’s motion to compel the deposition of defendant’s damages expert witness. The court, however, agreed with defendant that a video deposition is warranted should defendant’s counsel and expert so desire, arguing that the COVID-19 pandemic “makes a remote deposition ‘the safest way to proceed.’” The court stated that it “will not order defendant to produce its expert witness in a manner that makes counsel or the witness unsafe during a public health emergency.” (Case No. 0:15-cv-01549; August 4, 2020).
Court of Federal Claims Judge Lydia Kay Griggsby
Geospatial Technology Associates, LLC v. United States of America – The U.S. Court of Federal Claims denied the defendant’s Motion To Stay Certain Discovery in which it was argued that the ongoing COVID-19 pandemic prevented defendant from conducting in-person searches for responsive information and documents. Although sympathetic to the challenges due to the ongoing pandemic, the Court observed that the defendant had agreed to the current schedule for supplementing its discovery responses during a telephonic discovery hearing held on March 25, 2020. In addition, the defendant failed to explain why the required searches for responsive documents and information could not be performed electronically or address what efforts it has undertaken to date to search for responsive information and documents. (Case No. 0:16-cv-00346; May 7, 2020).
Court of Federal Claims Judge Ryan T. Holte
Cellcast Technologies, LLC et al v. USA – The U.S. Court of Federal Claims granted plaintiffs’ Expedited Motion For Leave To Amend Infringement Contentions, permitting plaintiffs to amend their infringement contentions in the form produced to defendants in November 2020. As part of its analysis the Court noted that “the prejudice alleged by defendants—if any—is primarily attributed to the unfortunate few-months delay caused by the COVID pandemic in early 2020 and such prejudice can be alleviated by further extending any future deadlines.” (Case No. 0:15-cv-01307; February 25, 2021).
Court of Federal Claims Judge Charles F. Lettow
3rd Eye Surveillance, LLC et al v. United States of America – The U.S. Court of Federal Claims granted plaintiff’s motion to conduct depositions remotely under Rule 30(b)(4) of the Rules of the Court of Federal Claims (“RCFC”). Noting that defendants acknowledge that the COVID-19 pandemic requires resort to remote means of conducting deposition, the Court granted leave for depositions to be taken either telephonically or by WebEx. The Court further indicated that Zoom should not be used, absent proof that such use would be secure. (Case No. 0:15-cv-00501; December 2, 2020).