Trading Techs. Int’l., Inc. v. eSpeed, No. 04 C 5312, 4120 & 5164, 2006 WL 2506293 (N.D. Ill. Jul. 18, 2006) (Moran, J.).
Judge Moran requested additional briefing on remaining discovery disputes and denied defendant’s motion to compel additional discovery regarding plaintiff’s patent prosecution after both plaintiff and its prosecution counsel represented that they had produced all non-privileged documents. The opinion itself is somewhat generic, except that Judge Moran made some reasoned comments regarding the discovery process that IP litigators should read and remember:
Discovery is a means for determining the truth, not an end in itself. Indeed, in criminal cases where liberty, not just money, is at stake, discovery is much circumscribed. Further, the discovery process depends upon the good faith of the parties and their counsel. . . . More often, reasonably complete discovery requires some prodding–the party is loath to expend the effort or seeks to use delays as a bargaining chip in getting discovery from others, or is anxious about what full discovery might disclose. Generally, however, we are convinced that litigants, represented by ethical counsel, recognize their obligations and act accordingly. Therefore, courts customarily rely upon the representations of counsel that the party has complied.
My former colleague, Gary Hood (now at Baniak Pine & Gannon), wrote an excellent article arguing for a reasonable discovery plan in patent cases: Refuse to Play the Game: An Alternative Document Production Strategy in Intellectual Property Litigation, Intellectual Property & Technology Law Journal, Volume 16, Number 5, May, 2004. As with Judge Moran’s comments in this opinion, IP litigators should take the time to read Gary’s article. Unfortunately, the article is not currently available in electronic form and I do not have rights from the publisher to make my own electronic copy, but I am working on it and will post an update when I am able to get electronic rights. So, for now, if you would like to read it, you can go here to buy a reprint from the publisher.