Simple Beats Precise: No Need for Carve-Outs Before Using Previously Produced Discovery

Discovery Order, Richtek Technology Corp. v.. uPI Semiconductor Corp., et al., Case No. 09-cv-05659-WHA (Magistrate Judge Laurel Beeler)

Here is a riddle for you: when can an interest in reducing cost and burden justify broader discovery? The answer: when documents previously produced in a related case are at issue. That's what Magistrate Judge Beeler concluded in Richtek Technology Corp. v. uPI Semiconductor Corp., in ruling that documents produced in an ITC investigation would be treated as if produced in the district court patent case, while simultaneously rejecting defendant uPI's request to carve out trade secret discovery and discovery about non-accused products.

Fundamentally, Magistrate Judge Beeler found that uPI's proposed process to carve out certain documents would be too burdensome on both the parties and the court, and thus contrary to the principal of proportionality in FRCP 26. uPI proposed that the parties exchange lists of what they deemed relevant, but Magistrate Judge Beeler found "that process . . . make no sense in light of Rule 26's guidance about burden." She noted the millions of documents produced in the ITC case, and that "there is an ambitious schedule and a trial this year."

Magistrate Judge Beeler was careful to note that limiting discovery made sense "in the ordinary case," but this case was the "opposite." In particular, she noted that discovery limits are often for the purpose of preventing fishing expeditions, but here, plaintiff Richtek is limited to "its intended universe of 58 [accused] products." Ultimately, Magistrate Judge Beeler ordered that discovery from the ITC case was useable to the same extent as if produced in the district court case, reserving questions of admissibility. She observed that "[i]ssues about admissibility will sort themselves out," first because Richtek would not use all of the discovery and, second, because admissibility could be addressed through in limine motions.

With respect to trade secret discovery, Magistrate Judge Beeler found that it was relevant to the case because it was uPI's products accused of infringement in this case that allegedly incorproate Richtek's trade secrets. Magistrate Judge Beeler found that such evidence was relevant not only to willfulness, but also that uPI's alleged use of trade secrets "shows its intent and gives context to its alleged sale of products that allegedly infringed Richtek's patents." The bottom line, at least with respect to the discovery situation presented to Magistrate Judge Beeler, is that simplicity in process outweighs precision in documents deemed produced.

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