Ruling Emphasizes the Importance of Reasonable Behavior in Litigation and Following the Rules of Procedure in Discovery

A June 2015 ruling from the Honorable Rya W. Zobel, United States District Judge, District of Massachusetts (Boston), granted a protective order to a DMYL client involved in a hotly contested patent infringement lawsuit.

The Federal Rules of Civil Procedure allow parties in civil litigation to seek discovery of documents and other items relevant to any party’s claim or defense.

Our client’s competitor served 116 [!] document requests on our client. Most were unrelated to the patent and products at issue in the case, which is about expansion joint systems. Expansion joints are used in large facilities such as airports, athletic stadiums and medical centers.

Requested documents included files related to packaging of the client’s other products, paperwork related to the shipment of the client’s products, and files related to the sale of the client’s business or the offering of stock.

Worse still, the competitor demanded samples of all of our client’s products, about 4,000 [!] in all. Yet only 48 products are in issue in this lawsuit.

When a request for documents is not tailored to the claims and defenses at issue, or would subject a party to significant time and expense, the Federal Rules allow that party to request a protective order from the court. We did so.

We asked for a protective order to shield the client from the significant time and expense required to respond to so many requests, most of them having nothing to do with the patent and products in issue. We argued that the other side, a competitor, was on a fishing expedition to obtain our client’s trade secrets and other proprietary information. The competitor could reverse engineer the samples, most of them unrelated to the lawsuit. A protective order would ensure that the competitor would not obtain valuable information about every corner of our client’s business.

The Court agreed with us. The Court did not look favorably on so many and such open-ended requests.

The Court issued its protective order, noting that while the competitor sought some relevant material, 116 requests were far too many and were directed at the entirety of our client’s business. The competitor did not properly tailor the requests to the products and patent claims at issue.

It’s always tempting to request any and all information about your opponent in a lawsuit. But it’s essential to consider whether your request is reasonably tailored to meet your litigation goals. Otherwise, you can end up on the wrong side of the judge and her protective order.

Authored by: Peter B. Goldman and Paul M. Tilley