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District Court Allows Discovery to Re-Open to Permit Plaintiff to Compel Defendant to Produce Update Sales Records prior to Trial

Isola USA Corp. (“Isola”) moved to compel Taiwan Union Technology Corp. (“TUC”) to provide updated sales data in response to document requests an interrogatories. In response to this discovery, TUC had previously provided sales data on allegedly infringing products that covered a period up to December 31, 2014. Isola moved to compel TUC to update that data to cover a period up to July 31, 2015.

In its motion, Isoled asserts that the information sought was relevant because it would be an update of information TUC has already produced. Isola also asserted that it would be prejudiced if the information was not produced, because it should be allowed to present the most complete picture of damages to the jury at trial. In addition, Isola claimed that TUC was required to supplement its sales data pursuant to Federal Rule of Civil Procedure 26(e)(1)(A) on the theory that TUC’s disclosures are now “incomplete” due to the passage of time.

TUC objected that producing sales data at this juncture would be prejudicial to its trial preparation efforts and also asserted that “the language of Rule 26(e) does not support” the creation of “a broad and on-going duty to supplement discovery throughout the entire life of an action,” particularly after the close of discovery, relying on Pharmacy Inc. v. American Pharmaceutical Partners, Inc., 2008 WL 4415263 (E.D.N.Y. Sept. 24, 2008). The district court agreed with the reasoning of that case and found that Rule 26(e) did not require further supplementation.

However, “as the district court did in Pharmacy, Inc., the district court construed Isola’s motion as seeking to re-open limited discovery to obtain on-going sales data of allegedly infringing products. The Court finds that the relatively small degree of prejudice to TUC does not outweigh the considerable benefit of potentially resolving this matter in a single jury trial proceeding. Isola was diligent in seeking this updated discovery from TUC, and although the need for this additional discovery was foreseeable, Isola could not have obtained this new information other than through this additional discovery proximate to trial. And Isola sought to obtain this information cooperatively without resorting to an order of the Court. Weighing strongly in favor of ordering the production of this additional limited sales data at this time is its direct relevance to the issue of compensatory damages.”

Isola USA Corp. v. Taiwan Union Technology Corp., Case No. 2:12-cv-01361-SLG (D. Az. Aug. 20, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or