In Ladatech, LLC v. Illumina, Inc., No. 09-627-SLR (D. Del. Mar. 29, 2011), Special Master David A. White required defendants Illumina, Inc. and Solexa, Inc. (collectively “Illumina”) to produce witnesses pursuant to Rule 30(b)(6) to testify on its behalf as to three topics set forth in LadaTech’s notice of deposition.
Illumina had objected to the topics on grounds of legal privilege and relevance (and, for one of those topics, vagueness and ambiguity).
The first topic concerned Illumina’s decision to purchase Solexa. The scope of this topic was limited by the Special Master to inquiries “reasonably calculated to lead to the discovery of admissible evidence.” Id. at 7.
The second topic concerned “(a) the date Illumina first became aware of the patent-in-suit; (b) any prior art searches related to the patent-in-suit; (c) any analysis of the validity or enforceability of the patent-in-suit; (d) any analysis of possible infringement of the patent-in-suit . . . ; and (e) any communications with customers related to the patent-in-suit or this litigation.” Id. at 8. The Special Master required Illumina to produce a witness for this topic despite Illumina’s contention of “burden and expense[.]” Id. at 9.
The third topic concerned reexamination of the patent-in-suit. Illumina argued that this topic concerned the issue of willfulness — an issue bifurcated from issues of infringement and invalidity by the Court’s Scheduling Order. While the Special Master agreed that the topic may concern willfulness, the topic’s “relevance to the initial phase of this litigation cannot be ignored.” Id. at 10.