## Facts

- Cameron Lanning Cormack owned U.S. Patent No. 7,781,693, covering a method and system for sorting incoming mail.
- He sued the United States under 28 U.S.C. § 1498, alleging the U.S. Postal Service used and procured mail-sorting systems that infringed specified patent claims.
- The allegedly infringing systems were Flats Sequencing Systems (FSS) manufactured and supplied by Northrop Grumman Systems Corp.
- Northrop intervened as a defendant-intervenor due to an indemnity provision in its contract with the Postal Service.
- During discovery, Cormack sought documents about Northrop’s non-FSS mail-sorting products, including product information and financial data, to assess potential infringement beyond FSS and to support possible amendment of his pleadings.
- Northrop objected to producing certain materials as irrelevant/overbroad and argued some documents were not within its possession, custody, or control because they were held by affiliates.

## Issues

1. Whether discovery could reach documents concerning Northrop’s non-FSS mail-sorting products to evaluate potential additional infringement and damages theories, including possible amendment of the complaint.
2. Whether Northrop was required under Rule 34 to produce documents held by related entities based on “control.”
3. Whether the requested non-FSS discovery was proportional to the needs of the case or unduly burdensome given the operative infringement theory centered on FSS.

## Decision

- The court partially granted and partially denied the motions to compel.
- The court allowed limited discovery into certain non-FSS products where the requests could reasonably bear on potential infringement and damages, including possible amendment.
- The court restricted the breadth of non-FSS discovery to avoid undue burden and to prevent open-ended inquiry into Northrop’s broader product lines.
- On Rule 34 “control,” the court required production of affiliate-held documents only where Northrop had the legal right or practical ability to obtain them; otherwise, it declined to compel production.

## Legal Principles

- Discovery may include information that reasonably supports potential amendment of pleadings and development of damages theories, but it must remain tethered to plausible infringement theories.
- Relevance does not permit unlimited discovery; courts must limit discovery to what is proportional to the needs of the case and to targeted categories and time periods.
- Under Rule 34, “control” extends beyond physical possession and may include documents a party has the legal right or practical ability to obtain from related entities; a party is not required to produce documents beyond that control.

## Conclusion

In this pretrial discovery ruling in a § 1498 patent action, the court permitted targeted discovery into certain non-FSS products and applied a pragmatic “control” standard for affiliate-held documents, while narrowing requests to maintain proportionality and reduce burden.


Cormack v. United States, 117 Fed. Cl. 392 (Fed. Cl. 2014)