Intellectual Property Law

Mary Pat Thynge: Obviousness and the Limits of Document Discovery

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

In document discovery, relevance is broadly construed. But the doctrine has its limits. In a recent decision by magistrate judge Mary Pat Thynge, the Court rejected as irrelevant a request for documents concerning certain properties embodied in two prior art products. According to the Court, the request, made in part to support assertions of obviousness, could not illuminate the sufficiency of the defense:

"That the inherent teaching of a prior art reference is applicable to obviousness does not make the information requested by Mylan relevant since . . . obviousness is an objective legal construct, measured by whether the inherency would have been obvious to one skilled in the art."

As a result, the Court held that, as a matter of law, the requested documents were irrelevant to the issue of obviousness.

Eurand Inc. v. Mylan Pharma. Inc., C.A. No. 08-889-SLR (D. Del. Dec. 9, 2009) (Thynge, M.J.).

Full post as published by Delaware IP Law Blog on December 17, 2009 (boomark / email).