United States District Court, E.D. Louisiana
ADMINISTRATORS OF THE TULANE EDUCATIONAL FUND, ET AL.
CYTOGEL PHARMA, LLC
ORDER AND REASONS
Van Meerveld United States Magistrate Judge
the Court is the Motion to Compel filed by Cytogel Pharma,
LLC (“Cytogel”) (Rec. Doc. 152). For the
following reasons, the Motion to Compel is GRANTED in part
and DENIED in part.
lawsuit concerns the ownership of patent rights in certain
opioid substitutes. During the relevant period, Dr. James E.
Zadina (“Dr. Zadina”) and Dr. Lazlo
Hackler (“Dr. Hackler”) were employed
jointly by Tulane University (plaintiff in this lawsuit as
the corporate entity The Administrators of the Tulane
Educational Fund (“Tulane”)) and the Department
of Veterans Affairs (“VA”) and were engaged in
developing new compounds that would reduce the side effects
associated with opioids. In the 1990s, Dr. Zadina, Dr.
Hackler, and Dr. Abba J. Kastin of Tulane developed a group
of cyclic peptide-based opioid compounds
(“1st Generation Compounds”), for
which two patents were ultimately issued
(“1st Generation Patents”). Pursuant
to a 2003 agreement, Tulane has the sole right to license
patents and patent applications it owns jointly with the VA.
In that same year, Cytogel and Tulane entered into a license
agreement for the 1st Generation Patents. After
this agreement was executed, Dr. Zadina advised Cytogel
regarding the properties and characteristics of the
1st Generation Compounds, at first pursuant to an
oral agreement, and starting in 2007, pursuant to a written
consultancy agreement. This work was performed outside of Dr.
Zadina's normal duties for the VA and Tulane. Tulane
insists that Dr. Zadina's consultancy never involved work
with any opioids other than the 1st Generation
alleges that Dr. Zadina and Dr. Hackler continued researching
peptide-based opioids for the VA and Tulane and eventually
invented certain “2nd Generation Compounds,
” which offered reduced side effects and improved
solubility relative to the 1st Generation
Compounds. Tulane filed a provisional patent application for
the 2nd Generation Compounds. After Tulane
informed Cytogel of the application, Cytogel asserted that it
owned the new application. Cytogel alleges that the
2nd Generation Compounds were developed by Dr.
Zadina using confidential Cytogel information. The dispute
continued, and eventually Dr. Zadina terminated his
consulting agreement in 2013. Tulane's provisional
application resulted in the issuance of U.S. Patent No. 8,
716, 436 (the “‘436 Patent”).
August 19, 2016, Tulane and the United States filed this
lawsuit against Cytogel seeking a declaratory judgment that
Plaintiffs are the sole owners of the ‘436 Patent and
related patent applications and that Dr. Zadina and Dr.
Hackler are the true inventors of the ‘436 Patent.
Cytogel filed a counterclaim against Tulane, the United
States, and Dr. Zadina, alleging that they misappropriated
its trade secrets and confidential information. Cytogel seeks
a declaratory judgment that it is the owner of the ‘436
Patent and also asserts claims for breach of contract,
infringement of the 1st Generation Patents that
had been licensed to Cytogel, misappropriation of trade
secrets, and other state law claims.
issue before the Court at this time concerns a licensing
agreement between Tulane and a non-party, Mirata
Pharmaceuticals (“Mirata”), for the ‘436
Patent (the “License Agreement”). Before
producing the License Agreement, Tulane seeks assurances from
Cytogel that the non-party will not be joined to this
lawsuit. Further, Tulane will only produce this licensing
agreement to Cytogel if it is subject to the
“Attorneys' Eyes Only” provisions of the
joint Protective Order issued earlier in this case. That
Protective Order was issued on November 9, 2017, and was
submitted jointly by the parties who negotiated the terms
between themselves, and with the assistance of the
undersigned Magistrate Judge.
Scope of Discovery
Federal Rules of Civil Procedure provide that “parties
may obtain discovery regarding any nonprivileged matter that
is relevant to any party's claim or defense and
proportional to the needs of the case.” Fed. R. Civ.
Proc. 26(b)(1). Of note, with the 2015 amendment to Rule 26,
it is now clear that “[i]nformation within this scope
of discovery need not be admissible in evidence to be
discoverable.” Id. In assessing
proportionality of discovery, the following should be
considered: “the importance of the issues at stake in
the action, the amount in controversy, the parties'
relative access to relevant information, the parties'
resources, the importance of the discovery in resolving the
issues, and whether the burden or expense of the proposed
discovery outweighs its likely benefit.” Id.
The advisory committee comments to the 2015 amendment to Rule
26 make clear that the parties and the court have a
collective responsibility to ensure that discovery is
proportional. The party claiming it would suffer an undue
burden or expense is typically in the best position to
explain why, while the party claiming the information sought
is important to resolve the issues in the case should be able
“to explain the ways in which the underlying
information bears on the issues as that party understands
them.” Id. advisory committee comments to 2015
amendment. “The court's responsibility, using all
the information provided by the parties, is to consider these
and all the other factors in reaching a case-specific
determination of the appropriate scope of discovery.”
26(c) provides that the Court “may, for good cause,
” protect a party from “undue burden or
expense” by issuing an order “forbidding inquiry
into certain matters, or limiting the scope of disclosure or