By Memorandum Order entered by The Honorable Richard G. Andrews in TC Technology LLC v. Sprint Corp. et al., Civil Action 16-153-RGA (D.Del. December 13, 2018), the Court granted-in-part and denied-in-part defendants’ motion to compel production of non-privileged documents after finding, among other things, that Plaintiff and its joint owners had a shared legal interest in acquiring and enforcing the patent at-issue in the action and that Plaintiff met its burden of establishing the common interest privilege with respect to the disputed communications with its joint owners. Id. at *1-11. The Court also ordered Plaintiff to produce certain documents related to non-legal communications for in camera review. Id. at *11.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in North Atlantic Operating Co., Inc. et al. v. Dunhuang Group/d/b/a DHgate et al., Civil Action No. 18-154-LPS (D.Del. July 11, 2018), the Court granted in part Petitioners North Atlantic Operating Company, Inc. and National Tobacco Company, L.P.’s Motion to Compel Non-Party Dunhung Group d/b/a DHgate, DHlink, DHport, and DHpay to Comply with Plaintiffs’ Subpoena Duces Tecum (“Motion to Compel”) to the extent it requested the Court to transfer the Motion to Compel to the United States District Court for the Eastern District of Michigan. In so ordering, the Court found that “extraordinary circumstances exist in this case, such that transfer is warranted so as to not disrupt the issuing court’s management of the Underlying Action.” Id. at *3.

A copy of the Memorandum Order is attached.

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.