The Software IP Report

Discovery Not Limited to Patent Infringement Contentions

Because the Eastern District of Texas does not limit the scope of discovery to the plaintiff’s infringement contentions, the court in DDR Holdings, LLC v., No. 2:06-CV-42-JRG (E.D. Texas, July 18, 2012), granted the plaintiff’s motion to compel one of the defendants to produce a corporate representative to testify regarding various of that defendant’s e-commerce platforms.

The plaintiff had taken depositions of the defendant’s Rule 30(b)(6) witnesses, but none of them had been prepared to testify about the e-commerce platforms.  The defendant did not dispute that its witnesses were unprepared to testify about these products, but rather contended that the products were not included in the plaintiff’s infringement contentions, and were therefore outside the scope of discovery.

The court rejected the defendant’s arguments that the plaintiff was attempting unreasonably to expand the scope of the case, and was seeking information that was in fact publicly available.  A protective order may have been a reasonable remedy in light of attempts to expand the case, but the defendant had not sought a protective order.  Even if public information about the platforms at issue was available, depositions would undoubtedly yield non-public information as well.

The court concluded that:

Infringement contentions serve the important role of providing Defendants notice with the theories of infringement in a case. However, infringement contentions are not intended to impose rigid boundaries that confine the scope of discovery to only those products that are specifically identified therein. This is particularly true when, as [the plaintiff] did here, a party specifically identifies a series of products that may operate in a matter “reasonably similar” to other products specifically identified in the contentions. This Court’s commitment to broad discovery obligations requires that [the defendant] provide the requested discovery.