Law School Case Brief
Gilead Scis., Inc. v. Merck & Co. - No. 5:13-cv-04057-BLF, 2016 U.S. Dist. LEXIS 5616 (N.D. Cal. Jan. 13, 2016)
Proportionality in discovery under the Federal Rules is nothing new. Old Rule 26(b)(2)(C)(iii) was clear that a court could limit discovery when burden outweighed benefit, and old Rule 26(g)(1)(B)(iii) was clear that a lawyer was obligated to certify that discovery served was not unduly burdensome. New Rule 26(b)(1), implemented by the December 1, 2015 amendments, simply takes the factors explicit or implicit in these old requirements to fix the scope of all discovery demands in the first instance.
Defendant Merck asserts that Gilead infringes two of its patents to a certain kind of nucleoside analog. Among other things, plaintiff Gilead says it was the one to conceive and reduce to practice the inventions, in 2003, in a compound named PSI-6130. And so a key issue in this case is what did Gilead synthesize and when did it know it. Given the importance of figuring out when Gilead first synthesized the disputed compound, Merck immediately demanded further production of further information about the tubes and their contents, including the tubes themselves. But lots of compounds share the same molecular weight. In fact, Merck's own patents list different nucleosides that share the same molecular weight.
Was the discovery sought by defendant proportional to the needs of the case?
The district court stated that defendant Merck's demands were exactly the type of disproportionate demands that Rule 26(b)(1) proscribes. While acknowledging that it was possible that plaintiff Gilead's evidence confirming the compounds are not PSI-6130 was false and even concocted, the district court noted that defendant Merck offered no real evidence that this is the case, and as the district court recently explained in denying a similar motion to compel by plaintiff Gilead, "[w]ithout more specific information triggering some reason for doubt, the Court must take the producing party . . . at its word." Any alternative ruling would leave plaintiff Gilead in the position of having to produce discovery on all sorts of compounds that bear no indication of any nexus to the disputes in the case, likening it to requiring GM to produce discovery on Buicks and Chevys in a patent case about Cadillacs simply because all three happen to be cars. In the absence of any reason to doubt the proof Gilead has tendered about the identity of the disputed compounds, and given the cost and potential delay introduced by the requested production, Merck's request is precisely the kind of disproportionate discovery that Rule 26—old or new—was intended to preclude.
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