United States District Court, D. Delaware
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE.
Wilmington this 23rd day of July, 2018:
stay in this case having been lifted and this case having
been remanded from the Court of Appeals for the Third
Circuit, and having reviewed the joint status report (D.I.
563), IT IS HEREBY ORDERED that:
five-day jury trial will be held beginning on April 15, 2019.
Considering the parties' competing scheduling proposals,
as well as the Court's schedule, this is the earliest,
reasonably appropriate date for the trial. The pretrial
conference will be held on April 5, 2019 at 1:30 p.m. and the
proposed pretrial order is due on March 27, 2019. A hearing
on any case-dispositive and Daubert motions will be
held on January 29, 2019 at 3:00 p.m. All briefing on such
motions must be completed no later than January 18, 2019. The
parties shall meet and confer and, no later than July 30,
submit a proposed schedule that includes the dates given
above as well as any other deadlines the parties request or
Having reviewed the parties' letters regarding discovery
disputes presented by Plaintiff The Gillette
Company ("Gillette" or "Plaintiff) (D.I. 543,
545), a. Gillette's request that the Court compel
documents logged as privileged by Defendants Dollar Shave
Club, Inc., Dorco Company Ltd., and Pace Shave, Inc.
("Defendants") is DENIED. Dorco has met its burden
to establish that the communications at issue are privileged
because Mr. Lee is a licensed South Korean patent attorney
who provided his client confidential legal advice based on
input from U.S. attorneys.
Gillette's request that Defendants reduce the number of
prior art references and obviousness combinations they are
asserting, before Gillette reduces the number of patent
claims it is asserting, is DENIED. The Court agrees with both
sides that this case needs to be streamlined. The parties
SHALL meet and confer and, no later than July 30, 2018,
submit their proposal(s) for the timing of any reduction(s)
of asserted claims, to be followed by any reduction(s) of
prior art references and obviousness combinations, to be
followed by service of validity contentions.
Gillette's request for a deposition by written questions
related to Dorco's manufacturing throughput and capacity
is GRANTED. The information sought is relevant and
proportional to the needs of the case, not unduly burdensome,
and should be provided without the parties bearing the
expense of returning to South Korea for additional
Having reviewed the parties' letters regarding discovery
disputes presented by Defendants (D.I. 542, 546),
Defendants' request that Gillette produce documents
that form the bases of its infringement contentions is
GRANTED. Gillette incorporated the select images - from
testing performed by non-testifying experts - into its
infringement contentions served on Defendants, purposefully
disclosing such images as potential evidence on which
Gillette would be relying in future stages of this case.
Under the circumstances, the Court concludes that Gillette
waived any protection that may have once applied to the
disclosed images and that it would not further the
interests of fairness or efficiency to make Defendants wait
for expert discovery to learn if Gillette is relying on the
images (and only thereafter be in a position to analyze and
potentially take discovery on them).
Defendants' request to compel Plaintiff to supplement
its infringement contentions is DENIED. The Court is not
persuaded that the contentions served to date are deficient
or that the additional detail sought by Defendants is not,
instead, more properly the subject of expert reports.
Defendants' request for additional discovery relating
to Gillette's manufacturing process is GRANTED, unless
Gillette promptly provides notice that it is withdrawing
its process claims. As long as such claims are asserted,
the Court agrees with Defendants that the additional
discovery sought by Defendants is relevant and proportional
to the needs of the case.
Defendants' request with respect to validity
contentions (Interrogatory No. 16) is DENIED WITHOUT
PREJUDICE to renew, consistent with the Court's ruling
above with respect to streamlining the case.
Defendants' request to compel an additional response to
Interrogatory Nos. 20 and 22 is DENIED, as the Court is
persuaded - particularly given the breadth of the
interrogatories, and the age of information they seek
(before 2000) - that Plaintiff has properly relied on Rule
33(d) in its response.
Defendants' request that the Court overrule Plaintiffs
objection to disclosure of Plaintiff s Highly Confidential
information to an invalidity expert is DENIED. Plaintiff
has demonstrated good cause to support its objection,
including that the expert was until recently an employee of
one of Plaintiffs competitors, and is a named inventor on
patent applications assigned to that former employer, which
could result in him needing to assist with prosecution of
those applications (or enforcement of resulting patents).
Defendants may use the expert to opine on invalidity to the
extent he does not require access to Plaintiffs Highly
Confidential information. Further, Defendants have failed
to show that they could not retain a highly-qualified
invalidity expert who does not pose the same risk of
inadvertent misuse of Plaintiffs Highly Confidential
information. (Plaintiff does not object to either of the
other two experts Defendants have already retained.)
Balancing the parties' competing interests, the Court
concludes Plaintiff should not have to bear the risk of
inadvertent disclosure, which here could cause Plaintiff
substantial harm, a risk which exists despite the expert
being bound to the terms of the protective order entered in
Gillette's motion to amend its complaint (D.I. 455),
which is not opposed (see D.I. 456, 457), is
The July 17 status report
indicates that all of the disputes that were briefed and
before the Court as of the entry of the stay last October
remain ripe for judicial ...