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Article of Interest

Contention Discovery Requests in Federal Cases in Texas: Punting in the First Quarter Could Lead to Disaster in the Fourth
By:  Ricardo J. Bonilla

It happens every day: One litigant serves discovery requests on another, asking the latter to “identify every fact” or “explain every basis” for the party’s legal contentions in a lawsuit. For the longest time, the response was standard: Delay answering the requests by pointing to the party’s expert reports, which would be produced much later in the case, allowing the party to perform more discovery and spend more time formulating its contentions and the bases for them. That practice is not safe in Texas's federal courts anymore, and one need look no further than the United States District Court for the Eastern District of Texas to find the reason why.

Until recently, there was no precedent requiring federal-court litigants in Texas to actually answer these “contention discovery requests,” which usually came in the form of interrogatories or topics of a 30(b)(6) deposition. Many lawyers argued that these discovery requests were attempts to discover lawyers’ mental impressions, legal theories, and conclusions, and at least one court has agreed with those arguments:

[T]he court cannot fathom a manner in which the factual basis [for a party’s defenses] can be revealed without disclosing [the party’s] attorney's mental conclusions, legal theories, and legal conclusions. Discovery of the factual basis of the defenses would reveal the attorney's impression of the facts and legal theory of the case.

Norco Indus., Inc. v. CPI Binani, Inc., 2012 WL 6508624 (N.D. Ind. Dec. 13, 2012). Other courts are split. District courts in California and North Carolina issued opinions commensurate with the court’s holding in Norco, while courts in Nevada and Pennsylvania disagreed, requiring litigants to fully answer the discovery requests.¹   Yet in Texas, federal courts did not deviate from their standard practices because no case law had emerged that required such deviation. They continued the standard practice of pointing to future expert opinions, thereby “punting” the questions.

Enter Judge Rodney Gilstrap of the Eastern District of Texas, Marshall Division. Last year, Judge Gilstrap famously sanctioned a party for refusing to designate a witness for certain topics in a deposition, ordering the party to pay all of the opposing counsel’s travel costs for taking the deposition, the court reporter and videographer costs, and all of the opposing counsel’s fees associated with the prosecution of the motion to compel filed by the opposing counsel. He is not the kind of judge who takes discovery disputes lightly, and recently he weighed in on the contention discovery issue, likely changing the way litigants (should) practice in Texas for the foreseeable future.

Lake Cherokee Hard Drive Technologies, LLC v. Marvell Semiconductor, Inc., was a patent case litigated like any other in the Eastern District of Texas, until Lake Cherokee moved to strike portions of Marvell’s non-infringement expert’s report on the grounds that Marvell had not explicitly set out its non-infringement positions in its responses to Lake Cherokee’s contention interrogatories. No. 2:10-CV-216, Dkt. No. 391 (E.D. Tex. Aug. 1, 2013). Judge Gilstrap went over Marvell’s interrogatory responses carefully and granted Lake Cherokee’s motion in part, striking significant portions of Marvell’s key non-infringement defenses weeks before trial was set to begin. In striking those defenses, Judge Gilstrap also struck at most federal litigants' standard procedures and placed Texas firmly in the Pennsylvania and Nevada camps of how to handle contention discovery requests: Answer them.

Fortunately for Marvell, its story had a happy ending; the case resulted in a take-nothing verdict from the jury. But the story may not end so happily for other litigants who are unaware of Judge Gilstrap’s ruling.  Frequently, lawyers see contention discovery requests and look right past them, expecting to be able to punt those requests and focus on other matters until later in the case when an expert has reviewed the material and can opine on the issues. This is no longer the case. Looking past contentious discovery requests could result in losing defenses or claims at the worst possible time: Right before trial. Going forward, litigants should be wary of punting these discovery requests early in the case, lest they later find themselves completely blocked from scoring when the clock is running out.

¹Compare McCormick–Morgan, Inc. v. Teledyne Indus., Inc., 134 F.R.D. 275, overruled on other grounds 765 F.Supp. 611 (N.D.Cal.1991); and Kinetic Concepts, Inc. v. Convatec Inc., 268 F.R.D. 255, 263 (M.D.N.C.2010) (“allowing Plaintiffs to conduct Rule 30(b)(6) depositions ... to explore [the defendants'] laches and estoppel defense would contravene the limitations in Rule 26(b)(2)(c) in that (i) the discovery sought is unreasonably cumulative or duplicative ...; (ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; [and] (iii) the burden or expense of the proposed discovery outweighs its likely benefit”) (internal citations omitted); with EEOC v. Caesars Entm't, Inc., 237 F.R.D. 428, 435 (D.Nev.2006) (denying the defendant's request for a protective order to limit the scope of Rule 30(b)(6) deposition questioning to preclude inquiry into the factual bases for defendant's asserted position statements and affirmative defenses); and AMP, Inc. v. Fujitsu Microelectronics, Inc., 853 F.Supp. 808, 831 (M. D. Pa.1994) (compelling a corporate defendant to produce a 30(b)(6) witness to answer questions regarding the contentions and affirmative defenses detailed in the defendants' answer and counterclaim).

--RICARDO BONILLA is a registered patent lawyer for Fish & Richardson, P.C. His practice includes commercial litigation and all areas of intellectual-property law, with an emphasis on patents and intellectual-property litigation.