DNA Genotek Inc. v. Spectrum Solutions L.L.C.
3:21-cv-00516
S.D. Cal.Dec 14, 2021Background
- DNA Genotek (plaintiff) alleges Spectrum Solutions infringed U.S. Pat. Nos. 10,619,187 and 11,002,646 by selling SDNA-1000 and SDNA-2000 saliva-collection devices; Spectrum counterclaimed (inequitable conduct and antitrust claims).
- Prior litigation/arbitrations among Genotek, Ancestry, and Spectrum (including a 2017 Settlement and subsequent arbitrations with Ancestry) produced arbitration materials Genotek treats as confidential under the Settlement Agreement.
- Spectrum moved to compel production of (1) Ancestry arbitration materials related to the asserted patents and (2) Genotek’s document-retention policies; Genotek opposed on confidentiality and relevance grounds.
- Genotek moved to compel Spectrum to produce company financial statements, valuation materials, and manufacturing/labeling documents; Spectrum objected as overbroad, unduly burdensome, and commercially sensitive.
- The Court ordered production in part: it compelled Genotek to produce relevant arbitration materials and earlier retention policies, and compelled Spectrum to produce limited financials, valuation documents (narrowed), and manufacturing/labeling information.
Issues
| Issue | Genotek's Argument | Spectrum's Argument | Held |
|---|---|---|---|
| Production of Ancestry arbitration materials | Genotek contends the Settlement Agreement (¶10.5) makes those arbitrations confidential and bars access; Protective Order cannot override the contract | Arbitration materials are relevant to claim construction, judicial estoppel, prior defenses, and royalty issues; Spectrum seeks only materials related to the asserted patents | Court: Granted Spectrum’s motion; arbitration materials relevant and confidentiality protected by Protective Order, Settlement clause did not expressly bar discovery in later litigation |
| Production of Genotek document-retention policies (pre-2020) | Genotek argued no need; said current servers only readily searchable to 2008 and produced key pre-2008 emails already | Spectrum argued policies needed to identify universe of documents, assess gaps, and target discovery given possible pre-2008 email unavailability | Court: Granted; earlier retention policies ordered produced to allow evaluation of completeness and targeted discovery |
| Spectrum financial statements (company-wide since 2014) | Genotek argued company-wide financials are relevant to damages, importance of accused products, and proportional; protective order protects confidentiality | Spectrum argued request is overbroad, seeks unrelated product data and pre-launch years, and would disclose highly sensitive competitive info | Court: Granted in part; Spectrum must produce quarterly/annual financial statements since 1/1/2018 limited to accused products and related products/services (e.g., packaging and kits); broader company-wide request denied without prejudice |
| Valuation documents for Spectrum and affiliates | Genotek argued valuations inform damages and rebut antitrust harms; asked for valuations of Spectrum entities and affiliates | Spectrum argued valuations of affiliates are irrelevant to damages/market share and overbroad | Court: Granted in part; Spectrum must produce valuation documents for Spectrum Solutions, L.L.C.; need not produce affiliate valuations unless separable and relevant |
| Manufacturing origin, labeling, and advertising of accused products | Genotek sought country-of-origin, labeling, advertising, and label-design documents to test accuracy of “Made in USA” claims and relevance to 35 U.S.C. §271(a) (where made/sold) and impeachment | Spectrum said no history of false claims established, dispute over relevance to infringement, and burden | Court: Granted; ordered production of manufacturing and labeling documents as they may yield impeachment evidence and have minimal relevance to infringement jurisdiction and damages |
Key Cases Cited
- Laub v. U.S. Dep’t of Interior, 342 F.3d 1080 (9th Cir. 2003) (district court has broad discretion over discovery)
- Blankenship v. Hearst Corp., 519 F.2d 418 (9th Cir. 1975) (party resisting discovery bears burden to justify objections)
- La. Pac. Corp. v. Money Mkt. 1 Inst. Inv. Dealer, 285 F.R.D. 481 (N.D. Cal.) (party moving to compel must establish relevancy under Rule 26)
- Davidson Pipe Co. v. Laventhol & Horwath, 120 F.R.D. 455 (S.D.N.Y. 1988) (five-factor approach for impeachment-related discovery)