Magistrate Judge Burke recently issued a memorandum order resolving certain discovery disputes in a patent infringement case between Plaintiff GSK and Defendant Teva. There were two main categories of discovery in dispute. First, the parties disputed whether Teva should produce market analyses and sales forecasts as well as business analyses of Teva’s decision to switch from a Paragraph IV certification to a Section viii carve-out for its generic product. Judge Burke accepted GSK’s argument that the information was relevant to induced infringement and to other issues such as objective indicia of non-obviousness, despite Teva’s contention that such documents were irrelevant because “inducement of infringement . . . does not lie when the acts of inducement occurred before there existed a patent to be infringed.” Glaxosmithkline LLC, et al. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-878-LPS-CJB, Memo. Or. at 1-2 (D. Del. Mar. 3, 2016). Teva also argued that this discovery stretched back in time farther than six years prior to the complaint and were therefore not subject to discovery under the Delaware Default Standard for Discovery absent a showing of good cause. Judge Burke explained that “if the possible existence of some other relevant, non-produced documents was always enough to demonstrate good cause to abandon the Default Standard’s requirements, the Standard would be worth little.” Thus, due to the potential burden of an expansive search, Judge Burke found that good cause had been shown only for a targeted search of the two custodians most likely to have relevant documents dating back to 2007 and ordered the parties to confer about the parameters of that search. Id. at 3-4. Judge Burke also granted GSK’s request that Teva respond to an interrogatory seeking the facts and circumstances regarding its decision to substitute a Section viii carve-out for its Paragraph IV certification. Id. at 5-6.
Second, GSK also sought Teva’s internal analyses regarding manufacturing decisions and patent enforcement. Judge Burke found that these requests “even more clear[ly] . . . could amount to a fishing expedition.” GSK’s proffered explanation of the relevance of this discovery did not adequately counter the “burden the requested searches would impose upon Teva with the potential for little reward.” However, because GSK suggested that it could craft a narrower search, Judge Burked order the parties to confer regarding the potential for such a narrower approach. Id. at 4-5.