Discovery of Licensing Negotiations Occurring Outside of Litigation is Permitted, But Not Negotiations of Agreements That Settle Law Suits

Defendant's motion to compel the production of documents regarding negotiations with licensees of the patent-in-suit was granted in part. "[T]he Court finds [ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010)] has not upset this district’s case law regarding discoverability of settlement negotiations. . . . The Court declines to upset its traditional approach to this issue absent clear precedent compelling a new tack. Continuing to exclude underlying negotiations is consistent with this Court’s past decisions. . . And is most appropriate given the chilling effect such discovery would have on settlements. While the Court recognizes internal settlement strategy may be protected by attorney-client privilege or work-product immunity, the possibility of some negotiation materials being discovered could hamper negotiation efforts and interfere with settlement discussions. . . . The Court permits discovery of negotiations pertaining to agreements and licenses entered into outside the context of litigation, but not of negotiations pertaining to agreements that settle law suits."

Software Tree LLC v. Red Hat Inc. et al., 6-09-cv-00097 (TXED June 24, 2010, Memorandum Opinion & Order) (Love, M.J.)