As noted in a post from August of this year (see here), Judge Robinson has instituted a bifurcation procedure in her cases where she conducts separate trials for liability and damages/willfulness. As part of this procedure, damages discovery is stayed except for discovery necessary to support the ADR process, to determine how valuable the patent is, and as it relates to secondary considerations of non-obviousness (i.e., commercial success). In Teles AG Informationstechnolgien v. Quintum Technologies, LLC, a dispute arose over the proper scope of commercial success discovery in a case where damages discovery has been stayed. C.A. Nos. 06-197-SLR-LPS, 09-72-SLR-LPS, 09-232-SLR-LPS, Order Regarding Discovery, at 2 (D. Del. Oct. 30, 2009). This dispute was referred to Magistrate Judge Stark for resolution. Id. at 3.
Judge Stark refused to order the production of invoice level detail on sales from any product with the accused feature, finding that aggregrate, general sales information on accused products (for which plaintiff provided infringement contentions) is sufficient. Id. at 6. Specifically, Judge Stark noted that the financial data “should be limited to the products [plaintiff] has actually accused as part of its infringement contentions….” Id. (internal citations omitted) (empahsis added). The Court also found that “internal and external evidence regarding market share” with respect to the accused products and internal marketing materials should be produced. Id. at 8.
Plaintiff had requested documents for a time frame beginning three years prior to introduction of the allegedly infringing feature through the present day. The Court found that this time frame was too broad and should begin the year before the accused feature was introduced through the first two years it was available in the marketplace. Id. at 7.