Opinion
Civil Action No. 02-11280-RWZ.
June 6, 2005
ORDER CONCERNING DISCOVERY AND STAY OF PROCEEDINGS
The now-passed date for the close of fact discovery elicited from both parties motions designed to complete and/or prevent certain discovery. The parties also disagree whether a petition for reexamination of the patent in suit should stay this action pending a decision by the Patent Office. I address these motions in chronologic order of filing.
1. Defendant's Motion to Stay this Litigation Pending Reexamination of the `516 Patent-In-Suit. (#131 on the Court's Docket)
The motion is denied.
Unlike the authority cited by defendant, Target Therapeutics, Inc. v. Scimed Life Systems, Inc., 1995 WL20470 (N.D. Cal), this motion comes very late in the litigation, and it is not clear that the prior art relied upon has only recently surfaced. I am also not persuaded that reexamination will significantly simplify the issues for trial. Finally, given the amount of pretrial preparation that has taken place and the estimated time of arrival of a Patent Office decision, delaying resolution of this dispute is likely to be far more prejudicial to plaintiff than moving ahead will be for defendant.
2. Defendant's Motion for Reconsideration of Discovery Order Dated January 12, 2005 Regarding Plaintiff's Interrogatory No. 4. (#133)
The motion is allowed to the extent that defendant may supplement its answer to Plaintiff's Interrogatory No. 4 if expert discovery so dictates. Any supplementation shall be limited to matters disclosed by expert discovery.
3. Plaintiff's Motion to Quash Subpoena Served upon Third-Party Dr. Stuart L. Schreiber (# 137) and Motion to Quash Subpoena or for Protective Order by Stuart Schreiber (#136).
Since the deposition was first noticed long before the close of discovery, both motions are denied. Defendant may depose Dr. Schreiber concerning his knowledge of the `516 patent as a director and co-founder of plaintiff and his involvement with the prosecution and commercialization of that patent, if any. He is not required to give expert testimony. The subpoena for documents is similarly limited.
4. Plaintiff's Motion to Compel Defendant to Offer a Timely Date for Dr. Richard Gaynor's Deposition (#147).
The parties shall agree upon a date as soon as convenient to the witness and the parties.