COVETRUS INC v. ACTIAN CORPORATION
2:21-cv-00097
D. Me.Oct 25, 2024Background
- Plaintiffs Covetrus, Inc. and Veterinary Data Services, Inc. sued Actian Corporation seeking declaratory judgment of non-infringement and no violation of a licensing agreement concerning copyrighted software (Data Integrator).
- There has been extensive and contentious discovery, with multiple disputes and hearings resolved by a magistrate judge.
- Magistrate Judge Wolf allowed Plaintiffs to proceed with several 30(b)(6) deposition topics, including Actian’s patents, infringement basis, and issues related to additional copyright registrations pled in Actian’s Supplemental Counterclaim.
- Actian objected to Judge Wolf’s decision, leading to this review under Rule 72(a), which grants deference unless the rulings are clearly erroneous or contrary to law.
- The court examined whether the magistrate’s rulings properly allowed targeted discovery relevant to Plaintiffs’ defenses and issues raised in the supplemental pleadings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether discovery into Actian’s patents (Topic 3) is proper for supporting copyright misuse defense | Relevant to misuse defense; not precluded by First Circuit case law | First Circuit doesn’t recognize misuse defense; patents irrelevant; undue burden | Plaintiffs may pursue discovery on Topic 3 |
| Whether Topic 6 (basis for infringement allegations) is permissible in 30(b)(6) deposition | Seeks factual basis, not legal conclusions | Seeks legal conclusions; not suitable for witness testimony | Plaintiffs can inquire into factual bases |
| Whether discovery on damages and licensing (Topics 5,7,8,12,13,14) related to new registrations is warranted | Needed to address supplemental counterclaim’s new registrations | No new damages or causes of action; improper to expand discovery | Limited discovery on these topics is permitted |
| Standard for reviewing magistrate discovery orders | Magistrate’s order entitled to deference unless clear error/law | Order was clearly erroneous and contrary to law | No clear error or legal mistake—order affirmed |
Key Cases Cited
- Thomas E. Hoar, Inc. v. Sara Lee Corp., 900 F.2d 522 (2d Cir. 1990) (discusses deference to magistrate judge’s discovery rulings)
- Phinney v. Wentworth Douglas Hosp., 199 F.3d 1 (1st Cir. 1999) (articulates 'clearly erroneous' standard for review)
- Inc. v. Syntel, Inc., 597 F.3d 10 (1st Cir. 2010) (explains de novo review for pure legal questions in discovery matters)
- In re IDC Clambakes, Inc., 727 F.3d 58 (1st Cir. 2013) (mixed questions of law and fact involve a sliding scale of review)