Gilead Sciences, Inc. v. Merck & Co, Inc. et al

Filing 136

ORDER GRANTING-IN-PART MOTION TO COMPEL by Magistrate Judge Paul Singh Grewal granting-in-part 114 Motion to Compel (psglc2S, COURT STAFF) (Filed on 4/23/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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GILEAD SCIENCES, INC.,

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Plaintiff,
v.

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MERCK & CO., INC. et al.,
Defendants.

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Case No. 5:13-cv-04057-BLF
ORDER GRANTING-IN-PART
MOTION TO COMPEL
(Re: Docket No. 114)

This case is about two patents that disclose and claim nucleoside analogs useful for treating
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patients suffering from Hepatitis C Virus infection. Plaintiff Gilead Sciences, Inc. moves to
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compel various discovery from Defendants Merck & Co., Inc., Merck Sharp & Dohme Corp. and
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Isis Pharmaceuticals, Inc. Fact discovery is set to close on May 22, 2015.
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The scope of discovery is set out in Fed. R. Civ. P. 26(b)(1). “Parties may obtain discovery
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regarding any nonprivileged matter that is relevant to any party’s claim or defense—including the
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existence, description, nature, custody, condition, and location of any documents or other tangible
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things and the identity and location of persons who know of any discoverable matter. For good
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cause, the court may order discovery of any matter relevant to the subject matter involved in the
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action. Relevant information need not be admissible at the trial if the discovery appears reasonably
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calculated to lead to the discovery of admissible evidence. All discovery is subject to the
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limitations imposed by Rule 26(b)(2)(C).” 1

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Fed. R. Civ. P. 26(b)(1).

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Case No. 5:13-cv-04057-BLF
ORDER GRANTING-IN-PART MOTION TO COMPEL

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The court nevertheless “must limit the frequency or extent of discovery otherwise allowed

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by these rules or by local rule if it determines that: (i) the discovery sought is unreasonably

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cumulative or duplicative, or can be obtained from some other source that is more convenient, less

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burdensome, or less expensive; (ii) the party seeking discovery has had ample opportunity to obtain

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the information by discovery in the action; or (iii) the burden or expense of the proposed discovery

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outweighs its likely benefit, considering the needs of the case, the amount in controversy, the

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parties’ resources, the importance of the issues at stake in the action, and the importance of the

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discovery in resolving the issues.” 2

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United States District Court
For the Northern District of California

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With these and all other applicable standards in mind, the court GRANTS-IN-PART
Gilead’s motion as follows:

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(1) Gilead’s interrogatory nos. 1, 4-5 seek post-filing evidence to show lack of enablement.

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Defendants are right that enablement is evaluated as of the filing date of the patent. 3 But post-

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filing evidence can still be used to show that as of the filing date, the claims were enabled. 4 While

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Defendants protest that Plant Genetics and its progeny addressed only publicly available articles,

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nothing in those cases turned on that fact. In any event, the undersigned’s role at this stage of the

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case is not to decide this question of law, but rather, whether the information sought “appears

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reasonably calculated to lead to the discovery of admissible evidence.” 5 Given the absence of any

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appellate or even district court authority suggesting the per se rule Defendants urge, Gilead has met

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its burden. Defendants shall supplement their interrogatory responses no later than April 30, 2015.

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(2) The only Rule 30(b)(1) deponent still at issue is Dr. Eldrup. Whatever the scheduling

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challenges that Defendants face, there is no good reason to put off this deposition any longer. No

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later than April 30, 2015, Defendants shall provide a date for the deposition. To the extent either

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Fed. R. Civ. P. 26(b)(2)(C).

See Streck, Inc. v. Res. & Diag. Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012); Ariad Pharms.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
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See Plant Genetic Sys., N.V. v. Dekalb Genetics Corp., 315 F.3d 1335, 1337 (Fed. Cir. 2003).

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Fed. R. Civ. P. 26(b)(1).

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Case No. 5:13-cv-04057-BLF
ORDER GRANTING-IN-PART MOTION TO COMPEL