Magistrate Judge Burke recently issued an interesting memorandum order addressing requests for admission and the parties’ disputed objections to those requests. Judge Burke first addressed several RFAs seeking “admissions regarding features of certain chemical structures from the prior art, namely whether those structures read on certain limitations found in the claims at issue.” Integra Lifesciences Corp., et al. v. Hyperbranch Medical Tech., Inc., C.A. No. 15-819-LPS-CJB, Memo. Or. at 2 (D. Del. Sept. 27, 2017). Plaintiffs objected to these RFAs as improperly directed to legal conclusions, but Judge Burke found that this objection was not justified. Judge Burke explained that although “[t]his Court has explained that RFAs that ‘seek legal conclusions are not allowed,’ . . . [w]hether a prior art reference anticipates the claim limitations of a patentee’s invention is a question of fact . . . [and obviousness] is a question of law, but it is based on underlying factual determinations as to matters including the differences between the claims and the prior art.” Id. at 2-4. Thus, the RFAs at issue “seek admission as to whether certain chemical structures from asserted prior art include particular features found in the relevant claim language. To be sure, such admissions could indeed ultimately be used to help prove up an ultimate legal issue in the case, but that does not change the fact that they themselves are directed to factual questions.” Id. at 4-5. Judge Burke further determined that it was possible for Plaintiffs to provide a substantive response to several of the disputed RFAs because the RFAs were sufficiently clear, and for the RFAs on which the Court could not determine a response was possible, the Defendant has the remedy of seeking reasonable expenses incurred in proving a matter that Plaintiffs refused to admit. Id. at 5-8, 11-12. Similarly, Judge Burke ordered a response to RFAs asking Plaintiffs to admit they were “aware” of off-label uses, overruling Plaintiffs’ objection, advanced only in their letter-briefs, that the word “aware” is ambiguous. Id. at 9-11.
For other RFAs, however, Judge Burke denied the motion to compel a response because he agreed with Plaintiffs’ objection that the RFA sought admission of multiple facts rather than a singular fact than can be admitted or denied. Id. at 8, 12-13. Finally, Judge Burke granted Defendant’s motion to compel responses to RFAs regarding “former customers” of Plaintiffs because the RFAs were not overly vague, incomplete, or directed to multiple facts to be admitted or denied. Id. at 13-16.
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