DDEL approves case-by-case approach to discovery of license negotiation documents
The District of Delaware in Sciele Pharma, Inc. v. Lupin, LTD, Civil No. 09-37 (RBK/JS) (Redacted Version) (D. Del. January 31, 2013), ruled on plaintiff’s motion seeking production of certain license agreements and related negotiation documents. The portion of the opinion concerning production of negotiation documents is most interesting. The court granted the motion as to negotiation documents, but indicated that production in such cases should be based on a case-by-case approach.
Having determined that the defendant was required to produce some license agreements, it was compelled to address plaintiff’s request for the underlying documents, including “negotiations, forecasts and analysis.” The court noted that there are cases going both ways on settlement negotiation documents, citing: Tyco Healthcare Group LP v. E-Z-EM, Inc., No. 2:07-cv-262 (tjw), 2010 wl 774878, at *2 (E.D. Tex. March 2, 2010) (ordering production); High Point SARL v. Sprint Nextel Corp., C.A. No. 09-2269-CM-DJW, 2012 WL 1533213 (D. Kan. April 30, 2012) (denying production even though license agreements ordered to be produced). The court recognized the split was not surprising given the broad discretion afforded courts in deciding discovery issues.
The court declined to adopt a blanket rule on the discoverability of negotiation documents, instead opting for a “case-by-case approach … to determine whether the requested documents were discoverable.” The court cited Charles E. Hill & Assoc., Inc. v. ABT Elecs., Inc., 854 F. Supp. 2d 427, 429 (E.D. Tex. 2012), in support of this approach. However, the Delaware court also agreed with Charles E. Hill that “as a general rule license negotiations are less probative and more prejudicial than the licenses themselves,” and that “negotiation documents ‘primarily add heat and not light to an already difficult judicial chore.’” Slip op. at 10 (quoting Charles E. Hill).
Related posts:
- Judge Davis, EDTX, compels production of negotiation documents re license agreements
- EDTX orders production of settlement communications related to the patent-in-suit
- District of Minnesota Orders Production of License Negotiation Documents and Sanctions
- NDCA refuses to compel production of license negotiations and license drafts
Recent Posts
- Does Section 287(a) Apply to Agreements That Do Not Contain a Patent License?
- Webinar Replay | Patent Damages Theories
- California Law on Reverse Payment Settlements Goes into Effect
- DNJ finds award of lost profits does not preclude injunction
- DDE excludes damages approach due to lack of comparability
Categories
- 25% Rule
- 271(a)
- 271(f)
- 287(a)
- Accelerated Market Entry Theory
- Admissibility of license agreements
- Analytical Method
- and evidence
- Apportionment
- Apportionment – Degree of Use
- apportionment – claim scope
- apportionment – conventional features
- Apportionment – rate apportioning
- apportionment – real estate approach
- Apportionment – Use of Defendant’s Documents
- Asset or patent sale and reasonable royalties
- Assignment
- Bifurcation of damages
- Book of Wisdom
- Breach of Contract
- Comparable Agreements
- Comparable Licenses
- Constructive Notice
- Cost savings approach
- Court as gatekeeper
- Covenants Not to Sue
- Damages articles
- Daubert
- delay filing suit
- Discoverability of agreements and other damages-related documents
- Discoverability of license negotiation documents
- Do-overs for expert reports
- Enhanced Damages
- Entire market value rule
- Exclusion Order
- Expert witnesses and admissibility of testimony supporting damages
- Extraterritoriality
- Federal Circuit decisions
- Foreign Sales
- Foreign tax laws & damages
- FRAND
- Future Damages
- Hypothetical License
- Hypothetical Negotiation
- Inexorable flow doctrine of lost profits
- injunction
- ITC
- Joint infringement
- Judgment as a Matter of Law
- Jury verdict form
- Laches
- Large damages verdicts
- Legislative patent damages reform
- License Agreements
- Lost Profits
- Lost profits – market share
- Lost profits – two-supplier market
- Lost profits requires patentee product
- Lump sum awards and issues
- Market approach
- Market Share
- Marking
- Marking Requirement
- Misuse
- Motion for Reconsideration
- Nash Bargaining Solution
- Net profits computations
- New trial
- Non-infringing alternatives
- Notice
- NPE-specific issues
- Ongoing royalties
- Panduit
- Patent damages books and articles
- Patent damages speeches and seminars
- Patent marking
- patent valuation
- Permanent injunction
- Piggy-backing experts
- Post verdict royalties
- Post-Hypo Date Evidence
- Prejudgment interest
- Price Erosion
- Profitability of accused products and royalties
- RAND
- Real Estate Apportionment
- Reasonable royalties: capped
- Reasonable Royalty
- Reasonable royalty – license agreements
- Reasonable royalty – litigation risk multiplier
- Related Entities
- Royalty rate exceeds defendant's profit margin
- Royalty Rate Exceeds Rate to Which Parties Stipulated
- Rule 702
- Sanctions
- Settlement agreements
- Settlements
- Smallest Salable Patent Practicing Unit
- Spoliation
- Standards
- Standing
- Statutory Presumption of Damages
- Stay of damages awards pending appeal
- Subsidary
- Summary Judgment
- Summary judgment for failure of proof
- Supplemental Damages
- Surface Area Apportionment
- Surveys
- U.S. Government Sales and 28 USC 1498
- Uncategorized
- valuation