In Round Rock Research LLC v. Sandisk Corp., C.A. No 12-569-SLR (D. Del. Jan. 9, 2014), Judge Sue L. Robinson ruled on two discovery issues. The first issue related to defendant’s request for information from a third party (Micron) relating to its waiver and estoppel defenses. See id. at D.I. 96, 101 (letters outlining disputes). The Court allowed defendant to depose Micron, at its own cost, only on issues related to what Micron disclosed to plaintiff, not what plaintiff subsequently disclosed to third parties. Id. at 1-2. Furthermore, “plaintiff’s independent evaluation of said patents and its licensing strategies based upon such an evaluation are not relevant to defendant’s waiver or estoppel defenses.” Id. at 2.
Second, after reviewing in camera documents that were withheld as privileged or work product, the Court ruled that the documents need not be produced because they were irrelevant, based on the Court’s assessment of what was relevant to defendant’s waiver and estoppel defenses. Id. at 2. Even though the Court had found it unnecessary to decide whether these documents were privileged, the Court did “take the opportunity to observe that, when trying to divine the distinction between the business of licensing and preparing for anticipated litigation, some documents – like claim charts – are both useful business tools and essential litigation obligations. In this regard, in balancing the need for production against the historic protection from discovery of attorney-client communications and attorney work product, I believe the balance should be struck in favor of protection.” Id. at 2 n.3.