Federal Bar Update: Permissible fishing in discovery process

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 The court’s unpublished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 – [email protected] – is a partner with Barnes & Thornburg litigating federal and state matters
nationally. The opinions expressed in this column are those of the author.