Author: Thomas J Patania

Case Citation: Gilead Scis., Inc. v. Merck & Co., No. 5:13-cv-04057-BLF, 2016 U.S. Dist. LEXIS 5616 (N.D. Cal. January 13, 2016).

Employee/Personnel/Employer Implicated: Outside Counsel

eLesson Learned: When a party seeking discovery already has information regarding a patent in question, but refuses to take the opposing party at its word, a Court will find a Motion to Compel information related to other patents disproportionate. Specifically, when dealing with nucleosides and other molecular compounds, counsel should limit discovery requests to the specific compound at issue.

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Taking the other side at its word can be extremely difficult, but in the case of pharmaceuticals, a party may have to do just that. Proportionality is key in patent litigation cases. In Gilead Scis., Inc. v. Merck & Co., the Defendant (“Merck” or “Defendant”) sought discovery of several molecular compounds synthesized by the Plaintiff (“Gilead” or “Plaintiff”), even though Defendant already had information related to said molecular compounds.

Defendant, through a Motion to Compel, advocated its position by discussing the similarity between the molecular weight of the compound sought in discovery and the compound at issue in the suit. Defendant asserted that Plaintiff was infringing two of Defendant’s patents to a certain molecular compound named PSI-6130. Through a separate suit, Defendant had obtained a photo of several different tubes of compounds in Plaintiff’s possession. The molecular weight listed on one of the tubes was 259.2 grams, the same weight as PSI-6130. Thereafter, Defendant obtained information from Plaintiff that the tube in question held either PIS-0194 or PSI-1834, and not PSI-6130.

Even though Defendant was aware that the tube in question did not hold PSI-6130, Defendant filed a Motion to Compel, seeking discovery of the tubes, refusing to take Plaintiff’s word. Defendant claimed that because the molecular weight of PSI-6130 and the tube in question were the same, Defendant was entitled to discovery of the tube. Looking to the December 2015 updated language of Fed. R. Civ. P. 26(b)(1), the Court found that the discovery sought was disproportionate to the case. While the Court noted that proportionality was a requirement prior to the December 2015 Amendment, the Court emphasized that now, “a party seeking discovery of relevant, non-privileged information must show, before anything else, that the discovery sought is proportional to the needs of the case.” Gilead Scis., Inc. v. Merck & Co., No. 5:13-cv-04057-BLF, 2016 U.S. Dist. LEXIS 5616 (N.D. Cal. January 13, 2016) (quoting Fed. R. Civ. P. 26(b)(1)). Because Defendant had failed to introduce any evidence that the discovery provided by Plaintiff was false, the Court noted that it “must take the producing party . . . at its word.” Gilead Scis., Inc. v. Merck & Co., No. 5:13-cv-04057-BLF, 2016 U.S. Dist. LEXIS 5616 (N.D. Cal. January 13, 2016). In denying Defendant’s Motion to Compel, the Court noted that asking Plaintiff “to produce discovery on all sorts of compounds . . . [is] like requiring GM to produce discovery on Buicks and Chevys in a patent case about Cadillacs simply because all three happen to be cars.” Id.

In the future, Defense counsel may be wise to limit discovery requests to the specific compound at issue. While discovery isn’t specifically limited to the precise subject matter of the suit, here PSI-6130, Fed. R. Civ. P. 26(b)(1) is clear that discovery must be proportional to the matter at hand. Remember, when a requesting party refuses to believe that information is what the producing party claims, the opposing party is stuck taking the producing party at its word unless the requesting party can prove proportionality.

Thomas Patania, a Seton Hall University School of Law Student (Class of 2018), focuses his studies in the areas of general civil and healthcare litigation. Thomas spent his first three semesters in Birmingham, Alabama, at Cumberland School of Law, where he was a member of the Cumberland Law Review and National Trial Team. Outside of studying the law, Thomas enjoys snowplowing and hunting.

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