Intellectual Property Law

Guest Post - Magistrate Judge Stark: Discovery Behavior Not Exemplary But Not Bad Faith

By Karen E. Keller, Andrew A. Lundgren et al.

The following post was graciously written by one of our fellow associates, Pilar Kraman.

On February 17, 2009, Magistrate Judge Stark granted defendant Hewlett-Packard?s Motion for Leave to Amend Answer and Affirmative Defenses. St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 04-1436-JJF-LPS (D. Del. Feb. 17, 2009). The defendant sought to amend its answer to assert a license defense based upon a license agreement between the defendant and a third party. The plaintiff, St. Clair, argued that the Motion should be denied because the license agreement was covered by two discovery requests directed to the defendant by the plaintiff.

The Court was troubled by the defendant?s apparent failure to disclose the document. However, the Court noted that defendant?s discovery conduct, while not ?exemplary,? did not rise ?to the level of bad faith[.]? Moreover, the Court concluded that the plaintiff would not suffer undue prejudice due to the relative early stage of the case.

Author: Pilar Kraman is an associate in Young Conaway?s Intellectual Property Litigation and Commercial Litigation Sections. She focuses her practice primarily on patent litigation, trade secret and complex corporate and commercial litigation matters in the United States District Court for the District of Delaware and the Delaware Court of Chancery. During law school, Ms. Kraman served as a member of the University of Pittsburgh Journal of Technology Law & Policy, and completed an externship for the Honorable Henry duPont Ridgely of the Supreme Court of Delaware. Prior to law school, Ms. Kraman worked primarily in the social science research field. Most recently, she worked as a research analyst for the Council of State Governments where she studied issues and trends impacting state governments and proposed policy options.

St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 04-1436-JJF-LPS (D. Del. Feb. 17, 2009).

Full post as published by Delaware IP Law Blog on February 20, 2009 (boomark / email).