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Isis Pharmaceuticals, Inc. v. Santaris Pharma A/S Corp.

United States District Court, Ninth Circuit

July 5, 2013

ISIS PHARMACEUTICALS, INC., Plaintiff,
v.
SANTARIS PHARMA A/S CORP. et al., Defendant.

ORDER DETERMINING DISCOVERY DISPUTE RE: DEFENDANTS' FIRST SET OF INTERROGATORIES: [Doc. Nos. 145, 161]

KAREN S. CRAWFORD, Magistrate Judge.

Before the Court is the parties' Joint Motion for Determination of Discovery Dispute [Doc. No. 145 (unsealed), Doc. No. 161 (sealed)] regarding plaintiffs responses to defendants' First Set of Interrogatories. Specifically, defendants contend that plaintiff failed to provide adequate responses to Interrogatory Nos. 1, 4, and 7, and seek an order from the Court compelling plaintiff to provide additional responses. For the reasons outlined below, defendants' request for additional responses from plaintiff is GRANTED in part and DENIED in part.

I. BACKGROUND

On September 22, 2011, plaintiff Isis Pharmaceuticals ("Isis" or "plaintiff') filed a Complaint [Doc. No.1] alleging that defendants Santaris Pharma A/S Corp. and Santaris Pharma A/S (collectively, "Santaris" or "defendants") have infringed upon two of plaintiffs patents. The two patents at issue in this litigation involve a form of biotechnology called antisense molecules. Antisense molecules are generally used to interrupt the overproduction or abnormal production of certain proteins that can cause disease. On January 30, 2012, defendants filed a Motion for Summary Judgment arguing that their allegedly infringing activities were protected by the "Safe Harbor" provision of 35 U.S.C. § 271(e)(1). [Doc. No. 17] On July 26, 2012, the Court entered a Case Management Conference Order Regulating Discovery and Other Pretrial Proceedings in a Patent Case. [Doc. No. 42] The case progressed until September 2012, when the normal flow of discovery was interrupted by an intervening Court Order.

Specifically, on September 18, 2012, Judge Moskowitz issued an Order Denying Defendants' January 30, 2012 Motion for Summary Judgment ("MSJ") without prejudice [Doc. No. 53], finding that (1) defendants could fall within the Safe Harbor but that it is a fact-intensive inquiry and more substantial fact discovery was required; and, (2) the Safe Harbor issue could potentially dispense of the entire case. Judge Moskowitz established a 120-day period of limited discovery related solely to defendants' Safe Harbor defense, and gave defendants leave to re-file their MSJ (on the issue of Safe Harbor only) within 30 days of the close of this limited discovery period. [Doc. No. 53] The following day, Judge Moskowitz issued an Order staying discovery Harbor related discovery to occur during the 120-day period. [Doc. No. 54] The 120-day period of limited discovery contemplated by the Judge Moskowitz was September 18, 2012 to January 16, 2013. Further, the original 30-day leave granted for defendants to re-file their Safe Harbor MSJ expired on February 15, 2013.

This matter was transferred from District Judge Moskowitz to District Judge Curiel on October 12, 2012. [Doc. No. 57] On November 30, 2012, plaintiff filed an ex parte Motion [Doc. No. 62] asking the Court to vacate the remaining period of limited discovery so that discovery on all issues could re-commence, and to extend the filing deadline for defendants' renewed MSJ on the Safe Harbor issue. Plaintiff claimed that, contrary to the representations made to Judge Moskowitz, discovery on the Safe Harbor issue was not narrow or isolated from the other issues and was much more complicated and fact-intensive than represented. On December 10, 2012, defendants filed an Opposition [Doc. No. 67], explaining that the Safe Harbor issue was more discrete than represented by plaintiff and that defendants' voluminous (and reluctant) discovery production (exceeding the scope of Safe Harbor) was at plaintiffs request and stemmed from defendants' desire to avoid future costly discovery disputes. Accordingly, defendants requested a hearing before Magistrate Judge Crawford to address plaintiff's requests.

On January 15, 2013, the Court held a Discovery Hearing to address the issues raised. [Doc. No. 101] Specifically, the Court heard oral argument regarding the deadline for filing a renewed MSJ on the Safe Harbor issue and the appropriate scope of discovery leading up to said filing. On January 31, 2013, based on the arguments presented at the January 15, 2013 Discovery Hearing, the Court ordered, inter alia, "The current discovery stay limiting discovery to the Safe Harbor issue only (35 U.S.C. § 271(e)(1)) will remain in place until April 5, 2013. Parties are not authorized to engage in discovery related to any other areas, including 35 U.S.C. § 271(a), before April 5, 2013. No discovery encompassing a broader range of issues is to commence absent further order of Court." [Doc. No. 94, p. 2 (emphasis in original)]

On March 8, 2013, the parties submitted a Joint Motion for Resolution of Dispute [Doc. No. 113] concerning plaintiff's proposed testifying expert, Dr. Nicholas M. Dean. Defendants notified the Court that this pending dispute was impacting their ability to file their renewed MSJ on the Safe Harbor issue. Accordingly, on April 26, 2013, District Judge Curiel set a telephonic status hearing for May 3, 2013 "to discuss an appropriate hearing date and briefing schedule for [d]efendants' renewed summary judgment motion." [Doc. No. 131, p. 2] As a result of the May 3, 2013 telephonic hearing, Judge Curiel amended the filing deadline and briefing schedule for defendants' renewed MSJ. [Doc. No. 132]

On May 6, 2013, a Discovery Hearing was held [Doc. No. 134] before Magistrate Judge Crawford to hear argument regarding the parties' dispute over plaintiffs expert, Dr. Dean. After considering the arguments, on May 17, 2013, the Court ordered plaintiff to disclose certain information about Dr. Dean's consulting practice and further instructed the parties to timely contact the Court if they remained unable to resolve their conflict after the required information was disclosed. [Doc. No. 140] After the production by plaintiff of the required information, defendants' objections remained and, on June 10, 2013, the parties filed a Supplemental Joint Motion for Resolution of Dispute over Dr. Dean. [Doc. No. 149 (unsealed), Doc. No. 162 (sealed)] In addition, on June 7, 2013, the parties filed the instant Joint Motion for Determination of Discovery Dispute [Doc. No. 145 (unsealed), Doc. No. 161 (sealed)] regarding plaintiffs responses to defendants' First Set of Interrogatories. The parties again notified the Court that these pending discovery disputes were impacting their ability to proceed with the renewed MSJ. [Doc. No. 155, Joint Motion seeking expedited review of discovery disputes]

II. DISCUSSION

The scope of discovery under Rule 26(b) is broad: "[p]arties may obtain discovery regarding any matter, not privileged, which is relevant to the claim or defense of any party involved in the pending action. Relevant information need not be admissible at trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." FED.R.CIV.P.26(b). However, a court may limit discovery of relevant material if it determines that the discovery sought is unreasonably cumulative or duplicative, or obtainable from some other source that is more convenient, less burdensome, or less expensive, or the burden or expense of responding to the proposed discovery outweighs the likely benefit. The party resisting discovery generally bears the burden of showing that the discovery requested is irrelevant to the issues in the case or is overly broad, unduly burdensome, unreasonable, or oppressive. If the resisting party meets its burden, the burden shifts to the moving party to show the information is relevant and necessary. Henderson v. Holiday CVS, L.L.C., 269 F.R.D. 682, 686 (2010).

A. Defendants' First Set of Interrogatories

Defendants contend that plaintiff failed to provide adequate responses to Interrogatory Nos. 1, 4, and 7. For the reasons articulated below, the Court finds plaintiff is not required to supplement its responses to Interrogatory No.1, but ...


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