In a recent discovery dispute before Judge Thynge in a sham litigation case, plaintiff filed a motion to issue letters rogatory seeking discovery related to the prosecution of defendants’ patents. Ethypharm S.A. France v. Abbott Laboratories, C.A. 08-126-SLR-MPT (D. Del. Nov. 2, 2010). Defendant asked that the court insert a restriction that plaintiff may not seek discovery about possible inequitable conduct during the prosecution of a patent not at issue in the litigation. Id. at 6. Plaintiff argued that possible inequitable conduct relating to the unrelated patent was relevant to “whether the patent applicant was simultaneously engaging in inequitable conduct in connection with other patents for a different version of the same product,” and whether “the history of the [unrelated patent] motivated [defendant and its non-party subsidiary] to engage in inequitable conduct in the prosecution of the [patents at issue].” Id. at 10. Judge Thynge denied plaintiff’s request, however, because plaintiff did not plead or argue in its briefs that the unrelated patent “bears such an immediate and necessary relation to the enforcement of the [patents at issue] that a demonstration of inequitable conduct in the prosecution of the [unrelated patent] will render the [patents at issue] unenforceable.” Id. at 11. Allowing discovery into any inequitable conduct during the prosecution of the unrelated patent, “would authorize a fishing expedition beyond that which is nominally permitted by the Federal Rules.” Id.
Ethypharm S.A. France v. Abbott Laboratories, C.A. 08-126-SLR-MPT (D. Del. Nov. 2, 2010)
Delaware IP Law Blog 