United States District Court, D. Delaware
RICHARD A. LLORET, U.S. MAGISTRATE JUDGE
Defendants (collectively, “Ajinomoto”) want to
depose a corporate representative of the Plaintiffs
(collectively, “Kyowa”) under Fed. R. Civ. Pro.
30(b)(6), in advance of claim construction. See
Letter of Chad S.C. Stover dated March 28, 2019
(“Stover letter”). The point of the deposition is
to collect information on how Kyowa determined “average
particle size of amino acid crystals added to a medium
containing a microorganism for producing an amino acid,
” among other things. See Stover letter
attachment, “Topics for Examination, ” ¶ 4.
The subject is at the core of the claim construction dispute.
Ajinomoto also wants to question a corporate designee about
Kyowa's efforts to comply with document production
requests. Id., ¶¶ 1-3.
objects for various reasons, prime among them that extrinsic
evidence of the kind sought by Ajinomoto is of marginal
probative value in a claim construction proceeding.
See Letter of Ronald P. Golden, III dated March 28,
2019 (“Golden letter”). I held a hearing on the
record via telephone conference on Friday, March 29, 2019.
makes a legitimate point, but there is a difference between
no probative value and a little probative value. The Federal
Circuit holds that extrinsic evidence “may be useful in
claim construction, but it should be considered in the
context of the intrinsic evidence.” Biagro Western
Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1302
(Fed. Cir. 2005). It is true, as Kyowa points out, that
expert reports will be available to provide extrinsic
evidence. See Golden letter, at 1-2. That does not
mean that deposition testimony by a corporate representative
on the issue of how Kyowa itself measured average particle
size of amino acid crystals will have no value. Experts and
courts sometimes rely on industry practice as background in
determining how a person skilled in the art would have
understood claim language. See Eidos Display, LLC v. AU
Optronics Corp., 779 F.3d 1360, 1365 (Fed. Cir. 2015)
(“the state of the art for manufacturing LCD panels
always had been to form contact holes for source wiring
connection terminals that are separate from contact holes for
gate wiring connection terminals.”).
be that intrinsic evidence will be sufficient to construe the
claims. If that is so, I will not consider extrinsic
evidence. See Interactive Gift Exp., Inc. v. Compuserve
Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001) (“If
the meaning of the claim limitations is apparent from the
totality of the intrinsic evidence, then the claim has been
construed. If however a claim limitation is still not clear,
we may look to extrinsic evidence to help resolve the lack of
clarity.”). There is no guarantee that the deposition
testimony will be admissible or helpful, but that is often
the case when discovery is permitted. See Fed. R.
Civ. Pro. 26(b)(1) (“Information within the scope of
discovery need not be admissible in evidence to be
meaning of the phrase “average particle size, ”
among others, will be the subject of claim construction.
See Doc. No. 68-1 at 2 (Claim Construction Chart).
It seems appropriate, in this case, to permit the deposition
to go forward and allow the parties to use or criticize the
utility of the testimony during briefing on claim
construction. I have considered the stakes at issue in the
litigation, Kyowa's superior access to the information
requested, the parties' resources, and the potential for
the information elicited at the deposition to be helpful in
construing the claim. See Fed. R. Civ. Pro.
26(b)(1). I find that one 30(b)(6) deposition of seven (7)
hours in length is not a disproportionate burden for Kyowa to
bear, if the topics for examination are narrowed.
1-3 are stricken. Each of them concerns Kyowa's
responses, so far, to document requests. This is tangential
to claim construction. I do not preclude the possibility that
the subject may be inquired into at some point in this case,
but right now it promises to sidetrack the path to early
permit topics 4 and 5,  both of which are relatively discrete
and bear directly on information that may be helpful during
claim construction. I will not permit topic 6, which concerns
“Kyowa's pre-April 12, 2005, experiments in which
crystals of an amino acid were added to a medium containing a
microorganism having the ability to produce the amino
acid.” The subject promises to be a general inquisition
into experiments rather than being focused on the specific
language at stake in claim construction. I will permit topic
7, which concerns “[t]he measurements and experiments
reported in the documents that Kyowa has produced in this
matter.” However, I will limit the scope of the topic
to “measurements and experiments [concerning the
average particle size of amino acid crystals added to a
medium containing a microorganism for producing an amino
acid] reported in the documents that Kyowa has produced in
this matter.” See Fed. R. Civ. Pro.
26(c)(1)(D) (court may enter an order “limiting the
scope of . . . discovery to certain matters[.]”). An
Order is filed with this Memorandum Opinion.
 Topic 4 is “Kyowa's
pre-April 12, 2005, measurements and calculations to
determine the average particle size of amino acid crystals
added to a medium containing a microorganism for producing an
amino acid.” Topic 5 is “[t]he nature, meaning,
and use by Kyowa of the measurements and calculations output