Verinata Health, Inc. et al v. Sequenom, Inc. et al

Filing 94

ORDER DENYING MOTION TO COMPEL PRODUCTION (Illston, Susan) (Filed on 6/25/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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United States District Court
For the Northern District of California

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Plaintiffs,

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ORDER DENYING MOTION TO
COMPEL PRODUCTION

v.

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No. C 12-00865 SI
Related Cases: 11-00693, 12-00132, 12-05501

VERINATA HEALTH, INC., et al.,

SEQUENOM, INC., et al.,
Defendants.

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/

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Currently before the Court is defendant Sequenom’s motion to compel plaintiffs Verinata and
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Stanford University to produce a variety of documents. The Court shall address each dispute in turn.
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1.

Custodial Documents

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On October 15, 2013, the Court ordered Verinata to produce all non-privileged documents
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regarding the negotiation of Stanford University’s licenses with Verinata and Fluidigm. See Docket No.
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52 (“Discovery Order”). It appears that most of the documents regarding the negotiation are “custodial
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ESI” – that is, electronically stored information held by a custodian, not by Verinata/Stanford. These
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documents were not produced by the Court’s deadline, and Sequenom argues that Verinata is therefore
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in violation of the Court’s Discovery Order. Verinata responds that it followed the guidelines in the
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Document Production Order, which require that parties who seek custodial ESI must propound specific
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custodial document requests, and which limit each party to ten such custodians. See Docket No. 47 at
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6. Sequenom failed to propound a custodial request, and instead seeks production directly pursuant to
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the Court’s Discovery Order.

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The Court finds that its Discovery Order did not abrogate the requirements set forth in the

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Document Production Order. If Verinata produced all responsive documents that it found in its central

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repositories to Sequenom, then it has complied with the Court’s Discovery Order. If Sequenom seeks

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additional documents, it must follow the requirements of the Document Production Order. If the parties

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reach their custodian limit, then, as set forth in the Document Production Order, they may either jointly

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agree to increase the limit or they may seek leave from the Court.

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2.

Documents Relating to Inventors’ Expenses
Second, Sequenom moves to compel the production of documents related to Dr. Quake and Dr.

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United States District Court
For the Northern District of California

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Fan’s expenses and budget. It argues that these documents are relevant because expenses and invoices

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will show when lab equipment was purchased and used, and when the doctors used equipment in other

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labs, which will reveal when they first experimented with massively parallel sequencing (“MPS”) for

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fetal aneuploidy detection. Stanford argues that this request is irrelevant, cumulative, and overly

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burdensome.

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Dr. Quake testified that he first conceived of using MPS for fetal aneuploidy detection in the fall

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of 2005. Stanford has already produced the doctors’ calendars, their grant application and budget

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proposal, and a detailed transaction report with over 1200 entries related to the grant. It argues that

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further production of materials from six years of research would be overly burdensome.

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Sequenom has not shown why it needs further documents related to the expenses and budget.

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Thus, based on the record before it, the Court finds that producing these documents would be unduly

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burdensome.

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Accordingly, the Court DENIES Sequenom’s motion to compel the production of documents.
This resolves Docket No. 90.

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IT IS SO ORDERED.

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Dated: June 25, 2013
SUSAN ILLSTON
United States District Judge

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