Varian Medical Systems, Inc. v. ViewRay, Inc.
- Susan Illston
- 3:19-cv-05697
- U.S. District Court · Northern District of California
- 3
In Varian Medical Systems v. ViewRay, Judge Illston ordered factual discovery now and advice-of-counsel-related information by the parties’ agreed deadline.
Varian Medical Systems received an order allowing discovery of non-privileged foundational facts. ViewRay and the other defendants were ordered to provide supplemental interrogatory responses within 14 days, while information covered by Patent Local Rule 3-7 was subject to the parties’ agreed August 5, 2020 deadline.
What happened
Varian Medical Systems asked ViewRay to provide information about steps it took after learning of Varian’s patents, including people involved and investigations of Varian’s technology. Varian said the information was relevant to its infringement and damages claims.
ViewRay responded that it would provide information covered by the patent rule governing advice of counsel on the parties’ agreed schedule, and would identify withheld material on a privilege log. The parties disputed whether ViewRay had to provide any information sooner.
The court ordered ViewRay to provide non-privileged basic facts—who, what, when, and how—within 14 days. Judge Illston ruled that information covered by the advice-of-counsel rule could be provided by the parties’ agreed August 5, 2020 deadline.
The detailed version
- Varian Medical Systems, Inc. v. ViewRay, Inc. · No. 3:19-cv-05697
- Susan Illston
- May 21, 2020
Background
The parties submitted a joint letter about ViewRay’s responses to Varian’s Interrogatories 11 and 12. Interrogatory 11 asked ViewRay to describe steps it took after learning about the asserted patents in 2016 to avoid infringement, including dates and the names of people involved. Interrogatory 12 asked for details about analyses, reviews, attempted design-around efforts, or investigations concerning Varian’s Halcyon MLC or the asserted patents, including the people involved, actions taken, and the range of documents concerning those matters.
ViewRay responded that, if it intended to rely on advice from a lawyer, it would provide the information required by Patent Local Rule 3-7. It also stated that documents or information withheld as privileged would be identified on a privilege log. Varian argued that the interrogatories sought non-privileged factual information relevant to its claims of indirect infringement, willful infringement, and damages. ViewRay argued that the Patent Local Rules set a specific time for providing the requested information.
Legal Standard and Analysis
Patent Local Rule 3-7 addresses disclosures required when a party relies on advice of counsel in a patent-related claim or defense. It requires production of certain non-privileged materials, written summaries of oral advice, and a privilege log for other documents withheld as protected by attorney-client privilege or work-product protection. The rule generally requires those disclosures within 30 days after the claim-construction order.
The court concluded that Varian could obtain “non-privileged foundational facts” that did not require disclosure of legal advice. The court directed the defendants to provide the basic facts about who did what, when, and how. Information covered by Patent Local Rule 3-7 and advice of counsel was to be provided under the parties’ agreement concerning the August 5, 2020 deadline.
Disposition
The court ordered defendants to provide supplemental interrogatory responses within 14 days after the order was filed. The order did not require ViewRay to provide advice-of-counsel-related information before the parties’ agreed deadline. Susan Illston entered the order on May 21, 2020.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.