Judge Andrews recently granted a motion to quash a deposition and document subpoena served on a third party, Hill Dermaceuticals. The subpoena sought information about the Hill’s Derma-Smoothe products, where were alleged to be prior art to the patents-in-suit. Judge Andrews first determined that the information sought should be afforded trade secret status both because the defendant, Perrigo, had not seriously disputed the point and because Hill “produced considerable evidence regarding the requested information’s trade secret status and the harm that may result from disclosure to a competitor” such as the defendant. Taro Pharmaceuticals U.S.A., Inc., et al. V. Perrigo Israel Pharmaceuticals Ltd., C.A. No. 14-989-RGA, Memo. Or. at 3 (D. Del. Nov. 30, 2015).
Next, Judge Andrews turned to whether the information sought was relevant to the litigation. His Honor explained, “[t]he secret nature of Derma-Smoothe does not foreclose its relevance to the§ 103 inquiry. Whether in connection with § 102(b) or § 103, [i]f a device was in public use or on sale before the critical date, then that device becomes a reference under section 103 against the claimed invention. . . . Hill’s argument that Derma-Smoothe may not anticipate Taro’s invention under§ 102 does not belie its relevance to an obviousness inquiry under§ 103. Therefore, I find that the requested information is relevant.” Id. at 4 (internal quotations omitted).
Perrigo was unable, however, to convince the Court that the information sought was necessary to its case, leading Judge Andrews to conclude that the subpoena should be quashed. “Perrigo may be correct that detailed information about the Derma-Smoothe prior art reference may be uniquely available from Hill. That does not mean, however, that Hill is uniquely positioned to provide Perrigo with information relevant to its obviousness defense. . . . Perrigo has listed twenty-two prior art references in its Invalidity Contentions, most of which are printed publications or patents. Perrigo has made no showing as to how Hill’s Derma-Smoothe, among these, is uniquely necessary to proving its invalidity case. . . . The possibility of obtaining relevant information from alternative sources weighs against a finding of need. . . . Perrigo has in its possession numerous sources relevant to proving the same legal theory. That Perrigo seeks only to supplement its theory with Hill’s trade secrets cuts against a finding that the requested information is ‘reasonably necessary for a fair opportunity to develop and prepare the case for trial.’” Id. at 5-6.