Court Encourages Plaintiff to Craft a Narrower, More Targeted Discovery Request Through Depositions
In Rembrandt Diagnostics LLP v. Innovacon, Inc., No. 3:16-cv-0698 CAB (NLS), (S.D. Cal. Oct. 3, 2017), the dispute was over drug-testing cups for screening urine samples. The Plaintiff, Rembrandt Diagnostics, LP (“Rembrandt”), alleged that the Defendant, Innovacon, Inc. (“Innovacon”), breached the patent license agreement established between both companies’ predecessors. Innovacon argued that it did not owe royalties because the patents were invalid and because its own test cups were not infringing. Rembrandt moved to compel “further responses and documents” from Innovacon. Innovacon responded, saying the requests were unreasonable and disproportionate. Proportionality analysis requires the Court to consider several factors, including whether the requested discovery would resolve the issues and whether expense would outweigh benefit.
Rembrandt requested production of evidence that include broad categories of contract information about the manufacture and sale of test cups: volume, market share, and revenue. Innovacon objected to the requests as overbroad and burdensome, irrelevant and disproportionate for the issues. Rembrandt claimed thorough information was required to give it background for cross-examination of a deponent. The Court was not persuaded by Rembrandt’s argument that the broad information is necessary. The Court found Rembrandt’s Requests for Production to be overbroad, unduly burdensome, and disproportionate to the needs of the case, and the motion to compel further production was denied.
Rembrandt also requested production of emails from two custodians identified as knowledgeable about the use of the test cups. Innovacon explained that this request was overbroad and disproportional considering the two custodians had more than one million emails that would need to be exported and researched. The cost would be prohibitive, and the results would likely be duplicative of information already produced by Innovacon. The Court was persuaded that the emails sought were disproportionate and the financial burden too great. The Court told Rembrandt to seek the information it wanted first through depositions and then from there, narrowly tailor document requests.
The Motion to Compel Production was denied by the Court.