Eastern District of Pennsylvania Judge Eduardo C. Robreno, sitting by designation, recently issued a memorandum opinion addressing discovery issues in Inventio AG v. Thyssenkrupp Elevator Americas Corporation et al., C.A. No. 08-874-ECR (D. Del. Oct. 8, 2009). Defendant moved to compel production of two categories of documents: letters and deposition transcripts from plaintiff’s pending S.D.N.Y infringement case on a related patent, and “all nonprivileged documents contained in [plaintiff’s] internal patent prosecution files with respect to the patents-in-suit.” Id. at 1-2.
As to the first request, Judge Robreno determined that the documents from the S.D.N.Y. suit, although mostly relevant, were covered under a stipulated protective order and that “this Court is without authority to alter the Protective Ordered entered by another court by ordering production of any documents within [its] scope.” Id. at 18. The court did, however, order plaintiff to identify the protected documents in a privilege log and, after the court determines which documents are relevant, to return before the judge in the S.D.N.Y. action and seek relief from the protective order as to those documents. Id. at 18-19.
As to the second request, seeking all of the plaintiff’s internal patent prosecution documents, Judge Robreno held that the only ground under which plaintiff could withhold the documents is privilege, and that privilege must be claimed on a document-by-document basis rather than plaintiff’s “blanket statement” that all internal patent prosecution documents are non-discoverable. Id. at 20.
Judge Robreno also included an interesting explanation of the scope of discovery under Rule 26. He analogized the types of information discoverable under Rule 26 to “three concentric circles,” because parties must disclose first “information integral to the litigation . . . without the necessity of a discovery request,” FRCP 26(a), then “nonprivileged information that is ‘relevant to any party’s claim or defense’ upon a request,” FRCP 26(b)(1), and finally “broader discovery of ‘any matter relevant to the subject matter involved in the action,’ where such information is likely to lead to the discovery of admissible evidence and the party making the discovery request can establish ‘good cause’ to support the request.” Id. at 7-9 (hyperlink added). As far as I can tell from a brief Lexis search, this apt analogy is unique to this memorandum opinion.