## Facts

- Gilead and Merck were engaged in patent litigation concerning hepatitis C treatments and nucleoside analog compounds, with dispute over what Gilead synthesized and when.
- In related Canadian litigation, a Gilead expert produced a photograph showing tubes of compounds; at least one label displayed molecular weight “259.2,” which matches the molecular weight of PSI-6130.
- The expert later testified he received the pictured compounds before 2003 from a Pharmasset founder (Pharmasset later acquired by Gilead), which Merck viewed as relevant to priority and conception.
- Merck sought discovery compelling Gilead to produce the physical tubes and additional details and data about their contents.
- Gilead opposed and sought a protective order, asserting the request was unnecessary and disproportionate because the identity of the tubes was already supported by documentation.
- Gilead produced laboratory notebooks identifying the photographed tubes’ contents as PSI-0194 and PSI-1834, not PSI-6130, and also produced a confirmatory letter to the same effect.
- Evidence showed that multiple distinct compounds can share the same molecular weight, including compounds disclosed in Merck’s own patents.
- The dispute was evaluated under the amended Rule 26(b)(1) (effective Dec. 1, 2015), which places proportionality within the scope of permissible discovery.

## Issues

1. Whether Rule 26(b)(1) permitted compelling production and further discovery about the photographed compound tubes when existing records identified them and the requesting party lacked specific grounds to doubt those representations.
2. Whether the requested production and potential testing was proportional to the needs of the case given the likely benefit relative to the burden and expense.

## Decision

- The court denied Merck’s motion to compel production of the tubes and additional information concerning their contents.
- The court effectively granted Gilead protection from the requested discovery to the extent necessary to deny the motion.
- The court held that, under amended Rule 26(b)(1), Merck did not show the requested discovery was proportional to the needs of the case.
- The court accepted Gilead’s identification of the compounds based on contemporaneous documentation because Merck offered no concrete evidence creating a reason to doubt those representations.

## Legal Principles

- Under Rule 26(b)(1), a party seeking discovery must show that the request is proportional to the needs of the case; relevance alone does not justify discovery.
- The removed “might lead to the discovery of admissible evidence” formulation does not support speculative or open-ended discovery demands.
- When contemporaneous records identify the materials at issue and the requesting party lacks specific evidence suggesting unreliability, courts may credit the producing party’s reasonable representations and deny further intrusive discovery.
- Proportionality analysis weighs, among other considerations, the importance of the discovery to resolving disputed issues against the burden and expense of obtaining it, including whether the incremental value is marginal given existing evidence.

## Conclusion

The court applied amended Rule 26(b)(1) to deny a motion to compel physical production and further investigation of photographed compound tubes, finding the request disproportionate where laboratory records identified the compounds and the movant offered no concrete basis to doubt the producing party’s account.


Gilead Scis., Inc. v. Merck & Co., 2016 WL 146574 (N.D. Cal. Jan. 12, 2016)