Genentech, Inc. v. Insmed Incorporation

ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS’ MOTION ON SCOPE AND PROCEDURE OF WILLFULNESS DISCOVERY; AND GRANTING IN PART AND DENYING IN PART DEFENDANTS’ CROSS-MOTION TO QUASH OR LIMIT SCOPE OF SUBPOENAS (Docket Nos. 514, 524)

Plaintiffs have sued Defendants for patent infringement and a declaratory judg ment of patent infringement. On July 17, 2006, Defendants decided that they would assert the advice-of-counsel defense with respect to the claim of willful infringement. Currently pending is Plaintiffs’ motion on the scope and procedure of willfulness discovery and Defendants’ cross-motion to quash or limit the scope of subpoenas. Having reviewed the parties’ briefs and accompanying submissions, and good cause appearing therefor, the Court hereby GRANTS in PART and DENIES in PART each party’s motion.

I. FACTUAL & PROCEDURAL BACKGROUND

On December 23, 2004, Plaintiffs filed suit against Defendants. In their original complaint, Plaintiffs asserted claims for infringement of the '151 patent and for a declaratory judgment of infringement of the '151 and '414 patents. The claim for declaratory relief “was aimed primarily at Insmed’s intended future conduct to infringe once…