Hitkansut LLC v. United States
119 Fed. Cl. 40
Fed. Cl.2014Background
- Hitkansut sues the United States for infringement of the ’722 patent on thermo-magnetic processing methods.
- Hitkansut seeks CRADA-related documents from Oak Ridge through nonparty Eaton and from the government.
- Hitkansut previously obtained partial protective-order relief limiting some CRADA disclosures.
- Hitkansut files four discovery motions: from Eaton, from Oak Ridge data, from classified projects, and for extension of discovery.
- The court assesses proportionality under RCFC 26(b)(2) and governs nonparty discovery, classified information, and extensions.
- The court ultimately denies Eaton and classified-discovery requests, but grants a timing extension for fact discovery.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Eaton discovery is permissible. | Hitkansut seeks Eaton data to assess value, damages, and validity. | Eaton data are confidential nonparty information; not relevant to Hitkansut’s claims. | Denied; no showing of relevance or burdens justified. |
| Whether Oak Ridge data on the infringing process is discoverable. | Data would illuminate infringement terms and energy relationships. | Data are cumulative or untimely and not sufficiently probative. | Denied; data not sufficiently warranted and timely. |
| Whether classified information from Oak Ridge may be disclosed. | Classification does not bar discovery of nonclassified process information. | Projects are classified; disclosure risks state secrets and is overbroad. | Denied; unresolved state-secrets considerations; overbreadth refused. |
| Whether Hitkansut is entitled to an extension of fact discovery. | Extension needed to complete discovery given volume of documents. | Extension refused due to untimeliness and lack of diligence. | Granted; discovery deadline extended to November 17, 2014. |
Key Cases Cited
- American Standard Inc. v. Pfizer Inc., 828 F.2d 734 (Fed. Cir. 1987) (relationship required between infringement and confidential data)
- Micro Motion, Inc. v. Kane Steel Co., 894 F.2d 1318 (Fed. Cir. 1990) (nonparty discovery to prove damages must relate to pending claims)
- Truswal Sys. Corp. v. Hydro-Air Engineering, Inc., 813 F.2d 1207 (Fed. Cir. 1987) (remand to articulate reasons why disclosure would be unreasonable)