Carnegie Institution of Washington v. Pure Grown Diamonds, Inc.
- Jed Rakoff
- 1:20-cv-00189
- U.S. District Court · Southern District of New York
- 4
In Carnegie Institution v. Pure Grown Diamonds, Judge Rakoff denied without prejudice discovery about plaintiffs’ synthetic-diamond manufacturing processes.
The ruling affected the defendants’ requests for manufacturing-process discovery and the plaintiffs’ confidentiality interests. The defendants could not compel the requested discovery at that stage, but they could renew the request if depositions did not provide the needed information.
What happened
In Carnegie Institution of Washington v. Pure Grown Diamonds, Inc., consolidated with a related case against Fenix Diamonds, defendants sought discovery about how plaintiffs manufacture synthetic diamonds. Plaintiffs objected that the information was not relevant and involved confidential trade secrets.
The court found that process details were only marginally relevant to damages and injunction issues, while the confidentiality concerns were substantial. Although the information could matter to defendants’ argument that the patents do not explain how to practice the inventions, defendants could likely obtain what they needed through depositions of plaintiffs’ witnesses and the patent inventors.
Judge Jed S. Rakoff denied the discovery motion because it was not proportional to the needs of the case at that stage. He denied it without prejudice, allowing defendants to renew the request if those depositions did not provide the expected information.
The detailed version
- Carnegie Institution of Washington v. Pure Grown Diamonds, Inc. · No. 1:20-cv-00189
- Jed Rakoff
- June 2, 2020
Background
The court addressed discovery motions in two consolidated patent actions. Pure Grown Diamonds, Inc., IIa Technologies Pte. Ltd., and Fenix Diamonds, LLC moved to compel Carnegie Institution of Washington and the other plaintiffs to produce information about the manufacturing processes used to make synthetic diamonds. Plaintiffs opposed the requests based on relevance and confidentiality.
Reasons for the Ruling
Defendants argued that the requested information was relevant because plaintiffs sought reasonable-royalty damages and an injunction. The court rejected the argument that detailed manufacturing information was needed for those issues. Whether plaintiffs used the patented methods might be relevant to whether an injunction was appropriate, but the details of the processes were not. The court also stated that plaintiffs could receive a reasonable royalty for infringement of a valid patent whether or not they practiced the patent. It found that the process details were, at most, marginally relevant to calculating that royalty, and that this limited relevance was outweighed by plaintiffs’ concern about revealing trade secrets.
Defendants also argued that the information was relevant to defenses including obviousness and, especially, lack of enablement. Lack of enablement applies when a person skilled in the field cannot practice the invention from the patent’s description without excessive experimentation. The court agreed that whether plaintiffs practiced the patented methods, and whether they did so without a substantial period of experimentation, was relevant to that defense.
Disposition
The court nevertheless concluded that the requested discovery was not proportional to the needs of the case at that point. Defendants planned to take depositions under Federal Rule of Civil Procedure 30(b)(6) of both plaintiff entities, and plaintiffs indicated that they would not oppose depositions of the patent inventors. The court found that these less-burdensome methods would probably provide the information needed to evaluate the enablement defense. Judge Jed S. Rakoff therefore denied the motion. The denial was without prejudice to renewal if the depositions did not produce the expected information.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.