The United States District Court for the District of Nevada recently issued an Order casting doubt on a litigant’s ability to obtain blanket discovery from an adversary’s prior patent litigation without a specific showing of relevance. Anyone opposing overbroad discovery requests seeking “all documents” from a prior patent litigation should read a series of decisions in the case captioned Racing Optics v. Aevoe Corporation (“Racing Optics”).

In Racing Optics, the plaintiff asserted four patents related to transparent films applied to touch sensitive screens for impact and/or scratch protection including U.S. Patent Nos. 9,104,256 (“the ‘256 patent”) and 8,974,620 (“the ‘620 patent”). The defendant counterclaimed for non-infringement, invalidity, and in particular, unenforceability of the ‘620 and ‘256 patents on the ground that claims of these patents were allegedly copied or substantially copied from the defendant’s U.S. Patent No. 8,044,942 (“the ‘942 patent”) and patent applications, without informing the USPTO.

In discovery, the plaintiff sought production of any documents produced by the defendant in all prior litigations where defendant asserted the ‘942 patent (specifying ten such cases), including any documents related to validity or infringement of the ‘942 patent or related to damages caused by infringement of the ‘942 patent. In an April 20, 2016 order, the Court sustained the defendant’s “piggyback” objections to these requests, reasoning that the plaintiff had to “specifically ask for the documents [it] want[ed] and be able to demonstrate that the information [sought] [wa]s relevant to [its] claims in this case.” Id., citing Chen v. Ampco Sys. Parking, C.A. No. 08-cv-422, 2009 U.S. Dist. LEXIS 71633 (S.D. Cal. Aug. 14, 2009). The Court noted that just because the defendant produced documents in the prior litigations did “not necessarily make them discoverable in this case.” Id. Accordingly, the Court refused to require the defendant to produce documents responsive to the requests.

The issue then resurfaced when, in May 2016, the plaintiff allegedly sought the same or similar discovery in a subpoena to a non-party law firm. The defendant moved for a protective order to prevent the discovery. The Court granted the motion for a protective order, characterizing the requests as “impermissible ‘piggybacking’ discovery” and noting the absence of any explanation as to how the requested information was relevant to issues in the case.

Gibbons P.C. will monitor and report on related developments, including any decisions related to the alleged copying of patent claims.

Wendy R. Stein is Counsel in the Gibbons Intellectual Property Department.