D. Mass. Patent Litigation Update: May 2025

In Insulet Corporation v. EOFlow, Co., Ltd. et al., No. 23-11780, Chief Judge Saylor granted Plaintiff’s motion to compel post-verdict discovery after a jury found six defendants liable for trade secret misappropriation in violation of the Defend Trade Secrets Act. The misappropriated trade secrets related to the design and manufacture of Plaintiff’s insulin patch pump product. For three of the six Defendants, the Court had issued a worldwide, permanent injunction barring them from possessing or disclosing the misappropriated trade secrets and prohibiting them from manufacturing, selling, or seeking regulatory approval for any product developed using the trade secrets. Additionally, the permanent injunction required Defendants to reassign patents and pending patent applications that disclosed Plaintiff’s trade secrets and to transfer to Plaintiff any monetary fees obtained through Defendants’ ongoing arbitration proceedings with non-party Medtronic PLC from the terminated acquisition of EOFlow.

Plaintiff’s motion for post-verdict discovery sought: 1, information regarding Defendants’ financial status; 2, information related to Defendants’ ongoing arbitration with Medtronic, specifically regarding potential resolution and payment of a termination fee to EOFlow; and 3, a list of Defendants’ patents and pending patent applications. Defendants opposed on the grounds that the requests are premature and overbroad, and that information regarding arbitration implicated the attorney-client privilege.

The Court observed that Federal Rule of Civil Procedure 69(a)(2) permits broad discovery for judgment creditors to seek information related to the judgment, with a presumption of full discovery “arguably related to creditor’s efforts to trace debtor’s assets and otherwise enforce its judgment.” The Court found that all information sought by Plaintiff fell within the scope of Rule 69(a)(2) discovery.

As to 1 (Defendants’ financial status), the Court explained that Defendants’ financial condition, including information regarding updated financial statements, assets and liabilities, contemplated dividends or property transfers, historic and expected cash flows, and updated sales data was sufficiently related to tracing the debtor-Defendants’ assets to ensure enforcement of the final judgement against them. Defendants objected that the request for this financial information was based on unsubstantiated speculation that Defendants were concealing assets. The Court found that information related to Defendants’ assets was related to Plaintiff’s assessment of whether Defendants could satisfy the judgement, and thus discoverable regardless of the concealment allegations. Defendants also objected to Plaintiff’s request for information on asset transfers since 2018 as overly burdensome. The Court rejected this argument, noting that the jury found willful and malicious misappropriation of trade secrets began as early as 2018.

Regarding 2 (arbitration status), the Court found information regarding the Medtronic arbitration was relevant to enforcing the injunction’s requirement that any fee related to the terminated acquisition of EOFlow be transferred to Plaintiff. Defendants objected that the requests related to the Medtronic arbitration impermissibly sought production of privileged documents. The Court rejected this argument as the requests were limited to pleadings and contentions exchanged between the parties that did not include internal information protected under attorney/client privilege.

Last, with respect to 3 (patents and patent applications), the Court found that the requested list of Defendants’ patents and pending patent applications was necessary for Plaintiff to evaluate whether any additional patents should be transferred under the Court’s judgment.

Therefore, the Court granted Plaintiffs’ motion for post-verdict discovery, holding that each of the requested pieces of information was discoverable under Rule 69(a)(2).

In A.L.M. Holding Co., et al. v. All States Materials Grp. Inc., No. 25-10458, Judge Mastroianni denied Defendant’s motion to stay a patent infringement suit pending resolution of two related cases in the United States District Court for the District of Delaware regarding different defendants. In deciding whether to issue a stay pending resolution of the Delaware actions, the Court looked to the following three, non-dispositive factors: “(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay would simplify the issues in question and trial of the case; and (3) the stage of litigation.” The Court found that, while it was a close question, a stay was not appropriate.

Regarding the first factor, the Court found a stay would prejudice Plaintiffs by delaying their assertion of patent rights against Defendant while risking rendering injunctive relief unavailable because several of the asserted patents expire in three years. Further, the Court observed that while Defendant agreed to be bound by certain findings (e.g., validity and direct indirect infringement) in the Delaware action, the Delaware Court could not issue injunctive relief against the Defendant here and any relief entered in the Delaware litigation may not address this particular defendant’s allegedly infringing conduct, precluding Plaintiff from obtaining full relief against this Defendant via the Delaware litigations.

Regarding the second factor, Defendant urged the Court to analogize from the “customer suit exception,” which prioritizes litigation involving the manufacturer of infringing goods over litigation brought against customers of the manufacturer, to find that a stay is appropriate here. Defendant argued that the Delaware cases concern allegations of indirect infringement against an Indian manufacturer and its U.S. subsidiary, that Plaintiffs must establish an act of direct infringement as a prerequisite for indirect infringement in Delaware, and that Defendant here is “the functional equivalent of a mere customer.” It follows, Defendant argued, that the litigations in Delaware involving the manufacturer should take precedence. The Court considered the principles justifying the customer suit exception, but rejected the Defendant’s argument. In particular, the Court found that Defendant is not a mere customer, but instead an alleged direct infringer in its own right. Because the specific theories of direct liability for this specific Defendant may not arise in the Delaware litigations, the issues of direct infringement would not necessarily be common between the cases. The Court also acknowledged Plaintiff’s interest in proceeding expeditiously against direct infringers and found that the second factor weighs against a stay.

Finally, the Court accorded the third factor comparatively little weight because the Delaware cases were in a similar procedural posture.

Ultimately, the Court concluded that the factors on balance weighed slightly in favor of Plaintiffs and thus denied Defendant’s motion to dismiss. However, in its order, the Court encouraged the use of alternate methods to streamline the litigation and prevent the inefficient use of judicial resources.