Contention Discovery Requests in Texas: Punting in the First Quarter Could Lead to Disaster in the Fourth

It happens every day: one litigant serves discovery requests on another, asking the latter to "identify every fact" or "explain every basis" for the party's legal contentions in a lawsuit. Usually, the response is standard: delay answering the requests by pointing to the party's expert reports, which would be produced much later in the case, allowing the party to perform more discovery and spend more time formulating its contentions and the bases for them. This has been especially true in patent cases, where defendants frequently serve "validity contentions" on plaintiff patentees and the latter frequently serve "non-infringement contentions" on the former. But the practice of delaying in answering these requests is not safe anymore, particularly in the Eastern District of Texas, which has one of the busiest patent dockets in the country and is consequently the forum for many fights over contention discovery requests.

Parties usually resist actually answering these "contention discovery requests," which often come in the form of interrogatories or topics to a 30(b)(6) deposition. Many attorneys have argued that these discovery requests are attempts to discover attorneys' mental impressions, legal theories, and conclusions, and at least one court has agreed with those arguments:

[T]he court cannot fathom a manner in which the factual basis [for a party's defenses] can be revealed without disclosing [the party's] attorneys mental conclusions, legal theories, and conclusions. Discovery of the factual basis of the defenses would reveal the attorneys impression of the facts and legal theory of the case.

Norco Indus., Inc. v. CPI Binani, Inc., 2012 WL 6508624 (N.D. Ind. Dec. 13, 2012). Other courts are split. District courts in California and North Carolina have issued opinions commensurate with the court's holding in Norco, while courts in Nevada and Pennsylvania disagreed, requiring litigants to fully answer the discovery requests.[1] Yet many parties continue not to deviate from their standard practice of pointing to future expert opinions, thereby "punting" the questions.

One unreported opinion counsels against such a strategy. Lake Cherokee Hard Drive Technologies, LLC v. Marvell Semiconductor, Inc. was a patent case litigated like any other in the Eastern District of Texas, until Lake Cherokee moved to strike portions of Marvell's non-infringement expert's report on the grounds that Marvell had not explicitly set out its non-infringement positions in its responses to Lake Cherokee's contention interrogatories. No. 2:10-CV-216, Dkt. No. 391 (E.D. Tex. Aug. 1, 2013). The court went over Marvell's interrogatory responses carefully and granted Lake Cherokee's motion in part, striking significant portions of Marvell's key non-infringement defenses weeks before trial was set to begin. In striking those defenses, the court also struck portions of the standard Litigant's Tool-Belt and placed Texas firmly in the Pennsylvania and Nevada camp of how to handle contention discovery requests: answer them.

Fortunately for Marvell, its story had a happy ending, as the case resulted in a take-nothing verdict from the jury. But the story may not end so happily for other litigants who are unaware of this precedent. Attorneys many times see contention discovery requests and look right past them, expecting to be able to punt those requests and focus on other matters until later in the case when an expert has reviewed the material and can opine on the issues. But waiting until expert discovery, which usually occurs after fact discovery closes and parties can no longer supplement their discovery responses without good cause, may be too late. Looking past contention discovery requests could result in losing defenses or claims at the worst possible time: right before trial. Going forward, litigants should be wary of punting these discovery requests, lest they later find themselves completely blocked from scoring when the clock is running out.

[1] Compare McCormick-Morgan, Inc. v. Teledyne Indus., Inc., 134 F.R.D. 275, overruled on other grounds 765 F.Supp. 611 (N.D.Cal.1991); and Kinetic Concepts, Inc. v. Convatec Inc., 268 F.R.D. 255, 263 (M.D.N.C.2010) ("allowing Plaintiffs to conduct Rule 30(b)(6) depositions … to explore [the defendants] laches and estoppel defense would contravene the limitations in Rule 26(b)(2)(c) in that (i) the discovery sought is unreasonably cumulative or duplicative …; (ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; [and] (iii) the burden or expense of the proposed discovery outweighs its likely benefit") (internal citations omitted); with EEOC v. Caesars Entmt, Inc., 237 F.R.D. 428, 435 (D.Nev.2006) (denying the defendants request for a protective order to limit the scope of Rule 30(b)(6) deposition questioning to preclude inquiry into the factual bases for defendants asserted position statements and affirmative defenses); and AMP, Inc. v. Fujitsu Microelectronics, Inc., 853 F.Supp. 808, 831 (M.D.Pa.1994) (compelling a corporate defendant to produce a 30(b)(6) witness to answer questions regarding the contentions and affirmative defenses detailed in the defendants answer and counterclaim).​