And So It Begins: Court Hopes for Change in Mindset Under Amended Rule 26(b)(1) in Gilead v. Merck Ruling

Gilead Sciences, Inc. v. Merck & Co., Inc.,, No. 5:13-cv-04057-BLF, 2016 WL 146574 (N.D. Cal. Jan. 13, 2016)

After a little over a month since the amended Federal Rules of Civil Procedure went into effect, U.S. Magistrate Judge Paul Grewal (N.D.Cal.) wasted no time in citing them in an opinion issued on January 13, 2016. In denying the motion to compel filed by the defendant, the court wrote: “This is untenable…. [The defendant’s] request is precisely the kind of disproportionate discovery that Rule 26 – old or new – was intended to preclude.”

The intellectual property dispute alleges infringement of patents for a nucleoside, a class of compound used in antiviral or anticancer drugs. During testimony a photograph was introduced that included two test tubes which the defense felt might establish a timeline for when the plaintiff first synthesized the compound. Merck filed a motion that “immediately demanded further production of further information about the tubes and their contents, including the tubes themselves.” (p.2) However, the defendant “had long had information” from the plaintiff confirming the contents, which included laboratory notebooks (p.2) and a letter from the source of the photo confirming the content of the samples. (p.3) Rather than accepting the documentation, Merck posited that it “should not have to take Gilead’s word as to what exactly is in those tubes.” (p.3)

The court points out “a party seeking discovery of relevant, non-privileged information must show, before anything else, that the discovery sought is proportional to the needs of the case.” (p.1) Given that the defendant “offers no real evidence” that called into doubt the veracity of the evidence provided by the plaintiff and “[w]ithout more specific information triggering some reason for doubt, the Court must take the producing party…at its word.” (p.3)


In stepping back from the immediate facts of the case, the court expresses that while proportionality is not new “[w]hat will change – hopefully – is mindset.” (p.1) As we enter the new era under these amendments, it will be interesting to observe whether the amendments reinvigorate the courts to expect better behavior as it appears to have done in this opinion.

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