Letters of request for inventors premature and trial date set

Background

Samsung brought this motion for letters of request to be sent to the United States to compel the discovery of inventors who reside there. Associate Justice Trent Horne dismissed the motion as premature. A trial date was also set in this order.

The underlying patent action was an impeachment action brought by Samsung in respect of Janssen’s patent no. 3,113,837. Janssen indicated that it anticipated bringing a counterclaim for infringement.

Letters of request not necessary to compel inventors

The motion for letters of request was premature and dismissed by the Court as Janssen had not yet refused to produce the inventors for an examination, were in the process of scheduling, and were likely to meet the discovery deadlines that had been set. The inventors who reside in the United States have not yet scheduled discoveries but there is no clear indication that they will refuse to cooperate.

Trial date set and to be confirmed

The parties disagree on when a trial date should be set, and the length of trial required. This is largely due to the uncertainty of timing for a counterclaim for infringement. Associate Justice Horne states that the PM NOC Regulations limit trials to 10 days and that should be sufficient even with multiple validity attacks. A trial date was set as the Court determined that Samsung should not have to wait for a date until regulatory approval. The ability for Janssen to move for summary judgement or summary trial is still left open.

The trial is currently set for March 16-26, 2026, and April 7, 2026, and will become fixed on March 15, 2025, dependent on the timing of regulatory approval. The Court states that this will allow for certainty for the parties and more efficiency for the court’s scheduling.

A copy of Associate Judge Horne’s reasons may be found here.