By Memorandum Order entered by Chief Judge Leonard P. Stark in Cosmo Technologies Ltd. et al. v. Actavis Laboratories FL, Inc., Civil Action No. 15-164-LPS (D.Del. September 2, 2016) (consolidated), the District Court granted Defendants’ Motion for the Issuance of a Letter of Request for International Judicial Assistance Pursuant to the Hague Convention on Taking Evidence Abroad (“Rogatory Motion”) over Plaintiffs’ objections to the motion. Defendants’ motion requested the Court to seek the assistance of Italian authorities in compelling the testimony of an Italian citizen residing in Italy, who is the named inventor on all of the patents-in-suit, regarding his role in the conception and reduction to practice of the patented inventions and development of Plaintiffs’ drug product that allegedly embodies the patents-in-suit. Id. at *2.
Plaintiffs opposed the Rogatory Motion arguing that it was untimely and that it would prejudice Plaintiffs if granted by requiring Plaintiffs to devote additional time and money to conducting a deposition in Italy after the close of fact discovery as well as the need to prepare to address the deposition during trial. Id. at *4. The Court rejected Plaintiffs’ objections and found that the Rogatory Motion was not untimely and that the prejudice to Defendants if they were denied the opportunity to take the inventor’s deposition outweighed the potential prejudice about which Plaintiff complained, particularly given that the parties agreed to extend certain dates such that fact discovery only recently ended and trial is not scheduled until May 2017. Id. at *4-5.
A copy of the Memorandum Order is attached.