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Federal Bar Update: Permissible fishing in discovery process

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Most discovery orders are uninteresting and have little or no significance beyond the dispute between the parties. The Southern District of Indiana’s order in Eli Lilly and Co. v. Wockhardt Limited, et al., No. 1:08-cv-01547 (S.D. Ind. May 27, 2010) (Baker, M.J.), however, is both interesting and has potential broader significance. The court’s unpublished order is available on the court’s website in the Recent Opinions section.

The case was brought by Lilly alleging patent infringement, and the patent discovery issues would be best understood by and most relevant to patent litigators. For the rest of us with average IQs, there are some broader points of relevance.

First, the order teaches that discovery is broad and in some respects a permissible fishing expedition. In granting in part Lilly’s motion to compel, the court wrote: “What’s a high-stakes patent case without a fierce discovery dispute and cries of an unfair ‘fishing expedition’? This case does not disappoint. Defendants … claim that Plaintiff Eli Lilly and Company caught its fair share of discovery documents and needs to return to shore. Lilly wants to fish a little deeper.”

After analyzing various specific issues, the court ultimately concluded, “This case brings to mind Eli Lilly and Company v. InvaGen Pharmaceuticals, Inc., 1:09-cv-87-WTL-TAB (S.D. Ind. Sept. 17, 2009), in which cries of a ‘fishing expedition’ also were made. In addressing this concern, the Court observed that the Federal Rules of Civil Procedure allow courts to ‘determine the pond, the type of lure, and how long the parties can leave their lines in the water.’”

Second, the order indicates that sometimes throwing more resources at discovery is necessary. The court observed, “Lilly stresses that Wockhardt has produced only 17,000 pages of documents to Lilly’s 3.5 million, and that Wockhardt’s production is lacking in emails and PowerPoints and devoid of research reports and laboratory notebooks – documents that Lilly claims are relevant to the issues of infringement, induced infringement, and nonobviousness.”

In addressing and rejecting defendants’ “undue burden” arguments, the court then explained, “The foregoing rulings are made with due regard to Wockhardt’s concern that additional production would be unduly burdensome. Discovery in a high-stakes patent infringement case is not without its burdens. Lilly indicated at the … pretrial conference that it allocated significant resources – nearly 60 attorneys and millions of dollars – to responding to Wockhardt’s discovery requests. Wockhardt, on the other hand, has produced only thirty emails and few of the PowerPoints and other documents that are ubiquitous in this type of case. Of course, discovery – unlike some fishing – is not a contest, and Wockhardt need not engage 60 attorneys in a multimillion dollar document production. But Wockhardt will need to allocate more resources toward responding to Lilly’s discovery requests. In this case, that is not an unreasonable burden.”

Finally, regarding Lilly’s contention interrogatories seeking defendant’s basis for its defense that each claim of its patent is invalid, the court rejected defendant’s argument that it should be allowed to await the close of discovery to answer the interrogatories. The court explained, “Wockhardt must answer Lilly’s interrogatory nos. 7 and 10 in good faith and may supplement its responses as it is able to digest Lilly’s large production. Within 28 days of this order, Wockhardt must provide Lilly with at least its basis for raising the defense identified in interrogatory no. 7 and the counterclaim identified in interrogatory no. 10, and Wockhardt must supplement its responses in good faith as discovery progresses.”•

__________

John Maley – jmaley@btlaw.com – is a partner with Barnes & Thornburg litigating federal and state matters nationally. The opinions expressed in this column are those of the author.

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  1. Call it unauthorized law if you must, a regulatory wrong, but it was fraud and theft well beyond that, a seeming crime! "In three specific cases, the hearing officer found that Westerfield did little to no work for her clients but only issued a partial refund or no refund at all." That is theft by deception, folks. "In its decision to suspend Westerfield, the Supreme Court noted that she already had a long disciplinary history dating back to 1996 and had previously been suspended in 2004 and indefinitely suspended in 2005. She was reinstated in 2009 after finally giving the commission a response to the grievance for which she was suspended in 2004." WOW -- was the Indiana Supreme Court complicit in her fraud? Talk about being on notice of a real bad actor .... "Further, the justices noted that during her testimony, Westerfield was “disingenuous and evasive” about her relationship with Tope and attempted to distance herself from him. They also wrote that other aggravating factors existed in Westerfield’s case, such as her lack of remorse." WOW, and yet she only got 18 months on the bench, and if she shows up and cries for them in a year and a half, and pays money to JLAP for group therapy ... back in to ride roughshod over hapless clients (or are they "marks") once again! Aint Hoosier lawyering a great money making adventure!!! Just live for the bucks, even if filthy lucre, and come out a-ok. ME on the other hand??? Lifetime banishment for blowing the whistle on unconstitutional governance. Yes, had I ripped off clients or had ANY disciplinary history for doing that I would have fared better, most likely, as that it would have revealed me motivated by Mammon and not Faith. Check it out if you doubt my reading of this, compare and contrast the above 18 months with my lifetime banishment from court, see appendix for Bar Examiners report which the ISC adopted without substantive review: https://www.scribd.com/doc/299040839/2016Petitionforcert-to-SCOTUS

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  3. So if I am reading it right, only if and when African American college students agree to receive checks labeling them as "Negroes" do they receive aid from the UNCF or the Quaker's Educational Fund? In other words, to borrow from the Indiana Appellate Court, "the [nonprofit] supposed to be [their] advocate, refers to [students] in a racially offensive manner. While there is no evidence that [the nonprofits] intended harm to [African American students], the harm was nonetheless inflicted. [Black students are] presented to [academia and future employers] in a racially offensive manner. For these reasons, [such] performance [is] deficient and also prejudice[ial]." Maybe even DEPLORABLE???

  4. I'm the poor soul who spent over 10 years in prison with many many other prisoners trying to kill me for being charged with a sex offense THAT I DID NOT COMMIT i was in jail for a battery charge for helping a friend leave a boyfriend who beat her I've been saying for over 28 years that i did not and would never hurt a child like that mine or anybody's child but NOBODY wants to believe that i might not be guilty of this horrible crime or think that when i say that ALL the paperwork concerning my conviction has strangely DISAPPEARED or even when the long beach judge re-sentenced me over 14 months on a already filed plea bargain out of another districts court then had it filed under a fake name so i could not find while trying to fight my conviction on appeal in a nut shell people are ALWAYS quick to believe the worst about some one well I DID NOT HURT ANY CHILD EVER IN MY LIFE AND HAVE SAID THIS FOR ALMOST 30 YEARS please if anybody can me get some kind of justice it would be greatly appreciated respectfully written wrongly accused Brian Valenti

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