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A Balm in Gilead – Proportionality Series, Part 2

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A multi-part series reviewing decisions on proportionality in eDiscovery since the December 2015 amendments to the Federal Rules of Civil Procedure


In the first Part of this series, we reviewed the amendments made to Federal Rule of Civil Procedure 26(b)(1) in December 2015.  In this Part, we continue our discussion of proportionality in eDiscovery with a review of one of the first decisions applying the amended rule.

Gilead Sciences, Inc. v. Merck & Co., Inc.

In January 2016, just a few weeks after the amendments became effective, a court in California had the opportunity to apply the amended rule in Gilead Sciences, Inc. v. Merck & Co., Inc., No. 5:13-cv-04057-BLF (N.D. Cal. Jan. 13, 2016).  This was a patent infringement case in which Merck alleged that Gilead was infringing “two of its patents to a certain kind of nucleoside analog.”  Gilead claimed that “it was the one to conceive and reduce to practice the inventions.”

During the case’s extensive discovery process, Merck became interested in some tubes of compounds visible in a picture produced by an expert witness of Gilead’s.  During subsequent discovery about the pictured compounds, Gilead produced deposition testimony from the expert, laboratory notebooks from the chemist, and a letter from the expert’s source all showing that the pictured compounds were not the infringing compound being sought.

Merck was not satisfied, however, and pressed on seeking “further production of further information about the tubes and their contents, including the tubes themselves.”

The Proportionality Requirement

The Magistrate Judge begins his Order Denying Merck’s Motion to Compel with a summation of the proportionality requirement and a discussion of the recent amendments:

Proportionality in discovery under the Federal Rules is nothing new.  Old Rule 26(b)(2)(C)(iii) was clear that a court could limit discovery when burden outweighed benefit, and old Rule 26(g)(1)(B)(iii) was clear that a lawyer was obligated to certify that discovery served was not unduly burdensome.  New Rule 26(b)(1), implemented by the December 1, 2015 amendments, simply takes the factors explicit or implicit in these old requirements to fix the scope of all discovery demands in the first instance.

What will change – hopefully – is mindset.  No longer is it good enough to hope that the information sought might lead to the discovery of admissible evidence.  In fact, the old language to that effect is gone.  Instead, a party seeking discovery of relevant, non-privileged information must show, before anything else, that the discovery sought is proportional to the needs of the case.  The present dispute offers a good example of the wisdom of the Advisory Committee on Civil Rules in elevating proportionality in defining the scope of permissible discovery. [footnote omitted; emphasis added]

This description reflects the intentions of the amendments to elevate and emphasize proportionality as central to determining discovery scope, as stated in the Committee Notes we reviewed previously.  Relevance alone is insufficient.

Proportionality Applied

The Magistrate Judge then applies this proportionality requirement to Merck’s current request for additional discovery and concludes that – absent some evidence suggesting what’s been produced so far is unreliable – further discovery would be disproportionate:

Merck’s demands are exactly the type of disproportionate demands that Rule 26(b)(1) proscribes.  Sure, it’s possible that Gilead’s evidence confirming the compounds are not PSI-6130 is false and even concocted.  But Merck offers no real evidence that this is the case . . . .

And so that leaves Gilead in the position of having to produce discovery on all sorts of compounds that bear no indication of any nexus to the disputes in this case.  This is untenable. It would be like requiring GM to produce discovery on Buicks and Chevys in a patent case about Cadillacs simply because all three happen to be cars.  In the absence of any reason to doubt the proof Gilead has tendered about the identity of the disputed compounds, and given the cost and potential delay introduced by the requested production, Merck’s request is precisely the kind of disproportionate discovery that Rule 26 – old or new – was intended to preclude. [footnote omitted; emphasis added]


Upcoming in this Series

In the next Part of this series, Cases from Early 2016, we will continue our discussion of proportionality in eDiscovery with a survey of several other proportionality decisions from the last two years.


About the Author

Matthew Verga, JD
Director, Education and Content Marketing

Matthew Verga is an electronic discovery expert proficient at leveraging his legal experience as an attorney, his technical knowledge as a practitioner, and his skills as a communicator to make complex eDiscovery topics accessible to diverse audiences. A ten-year industry veteran, Matthew has worked across every phase of the EDRM and at every level from the project trenches to enterprise program design. He leverages this background to produce engaging educational content to empower practitioners at all levels with knowledge they can use to improve their projects, their careers, and their organizations.

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