Plaintiff Bayer Healthcare Pharmaceuticals, Inc. (“Bayer”) and Dow Pharmaceutical Sciences, Inc. (“Dow”) (collectively “plaintiffs”) sought specific relief after an emergency status conference had been held at their request. The relief sought included (1) an extension of the statutory 30-month stay based on defendants’ discovery cooperation failure; (2) to extend discovery; (3) to add parties based on new information; (4) to receive 5-days notice of any ANDA transfer or other change in ANDA circumstances; and (5) to shift discovery costs. Defendants River’s Edge Pharmaceuticals, LLC (“River’s”) and Teresina Holdings, LLC (“Teresina”) (collectively defendants) filed two motions to compel and for sanctions against plaintiffs.

In response to plaintiffs’ request, the Court (1) extended the statutory stay for 7 months; (2) extended discovery for 6 months; (3) granted plaintiffs permission to amend their complaint; (4) required plaintiffs be given 5-days notice of any transfer of ANDA or change in ANDA circumstances; and (5) found the issue of shifting discovery costs was not property before the Court. Nevertheless, the Court commented that circumstances outlined by plaintiffs in their motion for a status conference troubled the Court and admonished the parties to be candid with each other and the Court and to work together to resolve discovery disputes. The Court added a charge to plaintiffs to be more forthcoming and expeditious in handling requests for discovery from defendants.

Having disposed of plaintiffs’ motion, the Court next turned to defendants’ motion to compel Dow to produce a knowledgeable and prepared 30(b)(6)[1] witness within 30 days and pay defendants’ attorney fees in connection with the 30(b)(6) deposition that occurred. The Court found that Dow produced a prepared designee, that no further deposition was required, and that no sanctions were warranted. The witness had reviewed the inventor’s notebooks in question for 10 to 15 hours in preparation for the deposition and referred to those notebooks as containing the answers to deposition questions. The Court found “defendants refused to allow the witness to review nay of those notebooks” during the deposition and “did not bring a single research or laboratory notebook to introduce as exhibits.” The Court noted that a 30(b)(6) deposition was not a memory contest and that personal knowledge was not required to be a designee.

The Court also noted that some questions asked the witness were outside the scope of a 30(b)(6) deposition, involving principles of law or were improperly seeking to elicit scientific or technical testimony from a lay witness. The Court cited Brazos River Auth. v. GE Ionics, Inc., 469 F.3d 416, 434-435 (5th Cir. 2006) (“[A] Rule 30(b)(6) deponent ‘cannot make comments that . . . require expert qualifications.”). While the defendants may have wanted the Dow employee with the most knowledge on the topics, “it is axiomatic that ’the party seeking discovery is not entitled to insist on a specific person as the corporate representative and it likewise cannot demand the testimony of the designee . . . with the ‘most’ knowledge of a given matter.’” The Court cited Kendall Lakes Towers Condo. Ass’n v. Pac. Ins. Co., No. 10-24310, 2011 U.S. Dist. LEXIS 138953, at *25 (S.D. Fla. Dec. 2, 2011).

The Court further found that the defendants failed to pursue an appropriate line of follow-up questions to elicit the information that complain they did not receive.

The Court then turned to another motion by defendants, referred to as its “omnibus motion for sanctions.”

The Court looked unfavorably on this motion. The Court noted that neither side had “clean hands” in the discovery process in the case and cautioned that further disputes would likely result in sanctions. The Court did not find a violation of the meet-and-confer requirements and that the requests for discovery and an immediate designation of a corporate representative were mooted by the extension of discovery granted and defendants’ admission that they were now receiving some of the documents. The Court further found Dow to be a nominal plaintiff only in the case to provide Bayer with standing and, therefore, rejected defendants’ request that Dow be required to file a separate claim construction brief.

No sanctions were awarded to either side.

The case is Bayer Healthcare Pharmaceuticals, Inc. et al. v. River’s Edge Pharmaceuticals, LLC, et al., Civil Action File No. 1:11-CV-01634-RLV in the United States District Court for the Northern District of Georgia, Atlanta Division, and the Order was entered on April 26, 2013, by District Court Judge Robert L. Vining, Jr.