A Party Is Not Entitled To Take Discovery On Subjects It Affirmatively Places Outside the Scope of the Investigation

June 5, 2019

Jason W. Balich

(As published by ITC TLA)

In the Matter of CERTAIN RADIO FREQUENCY MICRO-NEEDLE DERMATOLOGICAL TREATMENT DEVICES AND COMPONENTS THEREOF, Inv. No. 337-TA-1112, Order Granting-in-Part and Denying-inPart Respondents’ Motion to Compel Responses to Requests for Admission

Before ALJ Lord

Summary: Respondents served Complainants requests for admission directed to establishing that certain non-accused products do not have certain limitations of the claims of the asserted patents, and could be used in non-infringing ways. Complainants objected to some of these requests and denied others. Respondents then filed a motion to compel a response to the requests for admission. Complainants argued that they could not respond to requests for admission relating to non-accused products because they did not take discovery relating to them and that Respondents took the position in responding to Complainants’ own discovery requests that the same nonaccused products were outside the scope of discovery.

In denying Respondents’ motion in part, ALJ Lord determined that the information sought was “plainly relevant to [Respondent’s] defense of non-infringing alternatives,” but held that because [Respondents] had affirmatively placed the non-accused products outside of the scope of discovery, they were not entitled to discovery relating to the non-accused products. “Where a party limits the scope of discovery when answering discovery requests, the same limits must be applied when the party seeks discovery.” Order 24 at 3.

ALJ Lord did order Complainants to respond to two of Respondents’ requests for admission that were not related solely to the non-accused products, and held that Complainants’ denials and explanation thereof (for those requests to which Complainants responded) fulfilled Complainants’ discovery obligations and that the parties’ disagreement on the merits of those denials could not be resolved through a motion to compel.