Dexcel filed a motion to compel contending that Takeda has refused to provide any fact discovery concerning Takeda's methods for particle size analysis used in prior litigations or underlying the data in the patents-in-suit. Dexcel asserted "that this information was relevant because it targets whether Takeda's position as to test methods to assess the literal infringement of Takeda's particle size limitations by Dexcel's product is consistent with positions Takeda has taken in the past."

Takeda objected arguing that any discovery into test methods for particle size that were employed in prior litigations "implicates the confidential and highly confidential information" of the defendants in those suits. Takeda also contended that the Discovery Confidentiality Orders entered in those matters prohibit it from disclosing information designated confidential by those defendants.

On this issue, the district court thought that the close proximity to trial would require the production in this case instead of through third-party subpoenas. "With regard to documents from other litigations, the undersigned is mindful of the obligations that are likely imposed by the confidentiality orders entered in Takeda's prior suits and that in another suit the Court ordered a reversal of the burden with regard to obtaining documents from third parties. This case, however, is distinguishable based on the extraordinary press of time. Fact discovery is closing on December 16, 2016, one month from now. There simply is not enough time to serve third-party subpoenas and to entertain potential motions to quash or to compel. The Court finds that given the time constraints, discovery should be allowed as to prior positions Takeda has taken as to testing methods, but it should be narrowed."

Accordingly, the district court granted the motion but ordered a specific search. "Takeda is hereby ordered to search its files and produce documents that set forth the test procedures for particle size and for mouth feel that were employed by Takeda (or on its behalf) in prior litigations. The same applies to the methodology employed during the development of the claimed invention and on Takeda's own orally dissolvable lansoprazole tablet product. By "test procedures," the Court refers to standard operating procedures, monographs, analytical test methods, etc., which describe how the tests are or were conducted but do not implicate the results of the testing or third-party confidential information. Dexcel can then proceed with a Rule 30(b)(6) deposition as to those methodologies."

Dexcel Phrama Technologies LTD. v. Takeda Pharmaceutical Company Limited, Case No. 16-4957 (MLC) (D.N.J. Nov. 16, 2016)