Wielding a Motion for Protective Order as a Defensive Tool

Plaintiffs' requested discovery is always too broad and burdensome, and the information defendants produce are always too narrow and few. This is a common theme across almost every patent case filed in the nation, often ensuing in a whirlwind of letter writing campaigns and meet and confers, all aimed to find out what it is the plaintiff really needs to try its case and what the defendant is required to produce. Actual relevant information is oftentimes buried deep within the vast breadth of discovery that is reasonable calculated to lead to the discovery of admissible evidence. This situation is particularly burdensome for larger corporate defendants who are asked to produce "all documents" and "all things" related to an accused product or service that may be the essence of what they do.

In such situations, the defendant often finds that it must draw a line in the sand defining the outer boundaries of appropriate discovery or risk exposing all of its most sensitive information that may very well be completely irrelevant to the parties' claims and defenses. Standing on its objections and refusing to provide certain information is the default strategy employed by many defendants in patent cases, but doing so can result in an unfavorable decision when the plaintiff moves to compel.

Being defensive is not a defendant's only recourse. Offensively filing a motion for protective order is an underused method to limit unfettered discovery. In defending against such a motion, the plaintiff must validate the requested discovery against the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to such information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. See FRCP 26(b). In fact, Courts in the Eastern District of Texas, who are no stranger to discovery fights in patent cases, large or small, have often advised defendants to seek relief from the Court when they believe discovery is being abused. See Collins v. Nissan North Am., 2013 WL 1950002 at *1 (E.D. Tex. 2013); Stambler v., Inc., 2011 WL 10538668 at *4 (E.D. Tex. 2011). But surprisingly few defendants are willing to involve the Courts unless compelled to.

An offensive strategy can perhaps be best used to limit litigation expenses in cases of exceptionally low values by asking the plaintiff to justify the requested discovery against the proportional needs of the case. Federal Courts have acknowledged that they are required to limit discovery that is not proportional. See Carr v. State Farm Mut. Auto. Ins., Co., 312 F.R.D. 459, 468 (N.D. Tex. 2015). Indeed, the Court must do so under Rule 26(b), even in the absence of a motion. Id. (citing Crosby v. La. Health Serv. & Indem. Co., 647 F.3d 258, 264 (5th Cir.2011)). Defendants who help themselves, however, by moving for a protective order can only assist the Court in performing its tasks.

Author: Jane Du