LABORATOIRES MAJORELLE SAS, MAJORELLE INTERNATIONAL SARL (dba Majorelle Luxembourg), Plaintiffs, v. APRICUS BIOSCIENCES, INC., NEXMED (USA), INC., FERRING INTERNATIONAL CENTER SA (dba Ferring Pharmaceuticals), Defendants 17cv06625 (AT) (DF) United States District Court, S.D. New York Filed March 08, 2018 Freeman, Debra, United States Magistrate Judge ORDER *1 In this action, which has been referred to this Court to address all discovery-related disputes, including discovery deadlines and scheduling (Dkt. 98), the parties have placed a number of discovery-related disputes before the Court. Initially, the parties filed a joint letter motion (Dkt. 78), setting out their respective positions on a number of disputes, largely involving the scope of document production; this Court held a discovery conference with counsel on January 19, 2018, and resolved certain of those disputes on the record (see Dkts. 87 (Text Order), 90 (transcript of conference)), instructing the parties to return with a further joint submission if they were unable to resolve the remainder after additional discussion between counsel. The parties have since returned to this Court with another joint letter motion, setting out their positions on issues that remained unresolved. (Dkt. 97.) In addition, the parties have now raised a new dispute regarding the scheduling and scope of depositions noticed by Plaintiff pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure. (Dkts. 92, 96, 100.) Finally, the parties have raised a dispute regarding the overall discovery schedule in this case, with both parties requesting an extension of the deadline for completion of discovery, but disagreeing wildly as to how lengthy such an extension should be. (Dkts. 101, 102.) The issues raised by the parties in these various submissions are addressed below, in turn. The Parties’ Remaining Disputes Regarding Document Production (Dkt. 97) The parties’ joint letter motion dated February 5, 2018 (“2/5/18 Joint Mtn.”) (Dkt. 97), which follows up on their earlier letter motion of December 21, 2017 (Dkt. 78), essentially raises two discovery disputes, in each instance somewhat narrowed from the disputes as originally presented: (1) the appropriate date ranges for certain categories of documents that plaintiff Laboratoires Majorelle SAS (“Majorelle”) has requested be produced by defendants Apricus Biosciences, Inc. (“Apricus”) and Ferring International Center SA (“Ferring”) (together, “Defendants”); and (2) whether Majorelle is entitled to the production of third-party license agreements for the topical erectile dysfunction (“ED”) medication “Vitaros” that are in Defendants’ possession, custody, or control. A. Background In this action, Majorelle, as licensee, seeks a declaratory judgment (1) holding unenforceable certain portions of a non-compete clause found in its 2013 license agreement with Apricus (the “License Agrement”) (see Notice Regarding Exhibit, dated Dec. 20, 2017 (Dkt. 72), Ex. 3 (License Agreement (filed in redacted form)); and (2) voiding the attempted assignment, by Apricus to Ferring, of the License Agreement, a related manufacturing and supply agreement entered into by Majorelle and NexMed (Apricus's subsidiary) (the “MSA”) (see Notice Regarding Exhibit, dated Dec. 11, 2017 (Dkt. 69), Ex. 4 (MSA)), and associated European patents and trademarks. (First Amended Complaint, dated Oct. 16, 2017 (“Am. Compl.”) (Dkt. 40) ¶¶ 2-3.) Majorelle also seeks damages arising from alleged breaches of the MSA by NexMed and/or Apricus, and from their alleged fraudulent misrepresentation regarding the shelf life of Vitaros. (Id. ¶ 4.) *2 Under the terms of the License Agreement, Majorelle, a French pharmaceutical company, was granted an exclusive license for the sale of Vitaros in France, Monaco, and francophone Africa (the “Territory”). (2/5/18 Joint Mtn., at 5; Am. Compl. ¶ 17; License Agreement §§ 1.65, 2.1.) The non-compete clause in question would bar Majorelle from commercializing (defined as importing, exporting, offering for sale, selling, marketing, and promoting (License Agreement § 1.16)) generic ED medications for three years beyond the termination of the License Agreement. (2/5/18 Joint Mtn., at 4-5; Am. Compl. ¶¶ 18-19; License Agreement § 6.1.) B. Appropriate Date Ranges for Categories of Documents Requested from Defendants As a preliminary matter, this Court notes that, in opposing Majorelle's position as to the appropriate scope of the document requests at issue, Defendants repeatedly argue, as they have in their pending motions to dismiss (Dkts. 55, 58), and as they did in previously requesting a stay of discovery (Dkt. 95), that Majorelle's Amended Complaint is defective (see generally 2/5/18 Joint Mtn., at 6-11). At this point, however, none of Majorelle's claims have been dismissed, and the Honorable Analisa Torres, U.S.D.J., has twice denied Defendants’ requested stay (Dkts. 49, 99). Moreover, after hearing from the parties regarding the nature of the case, Judge Torres set a fairly brief schedule for the completion of all discovery in this case, with a fact discovery cut-off of March 7, 2018. (See Civil Case Management Plan and Scheduling Order, dated Nov. 7, 2017 (Dkt. 49) ¶ 6.) Majorelle is therefore entitled to the production of documents relevant to its claims and proportional to the needs of the case, and this Court denies any request that discovery, at this juncture, be “staged.” (See, e.g., 2/5/18 Joint Mtn., at 9 (Defendants arguing that “[a]t most, the Court should stage discovery on Majorelle's requests for a broader date range” (emphasis in original)).) 1. Majorelle's RFPs to Apricus Majorelle's Requests for Production (“RFP”) Nos. 4-6 to Apricus concern its fraud claim that, “in documents submitted for obtaining marketing authorizations in Europe,” Apricus “made false representations ... that the shelf life of Vitaros was 18 months.” (Joint Letter, at 4.) As summarized by the parties, Majorelle's RFP No. 4 seeks “documents concerning the shelf life of Vitaros, including any communications, tests, evaluations, [or] reports”; RFP No. 5 seeks “all documents concerning the marketing authorizations for Vitaros in Europe, France and/or Monaco”; and RFP No. 6 requests “all documents submitted to or received from any third party for obtaining market authorization for Vitaros in Europe, France and/or Monaco.” (Id., at 4-5 and Ex. D (Majorelle's Modified Request for Production of Documents and Things to Apricus Biosciences, Inc.), at 6.) Majorelle argues that, in response to these requests, Apricus should be compelled to search for documents dated as early as January 2011, as “[p]ublicly-available press releases indicate that Apricus made [representations regarding the shelf life of Vitaros] in or around April 2011,” and “[r]esponsive documents prior to April 2011 (when the marketing authorization requests were submitted [to the European Medicines Agency] ) are relevant because they likely reflect Apricus’[s] true knowledge regarding the shelf life of Vita[r]os and/or the bases upon which Apricus represented that the shelf life of Vitaros was 18 months.” (Id., at 4 (emphasis in original).) Apricus objects that the RFPs are irrelevant and not proportional to the needs of the case. (Id., at 9.) *3 With respect to RFP No.4, this Court finds that Majorelle is entitled to the production of documents dating back to January 1, 2011, as it appears reasonably likely that Apricus would have evaluated the shelf life of Vitaros during that time in preparing its marketing authorization requests to the European Medicines Agency, and such information would be relevant to Majorelle's fraud claim. As to RFPs Nos. 5 and 6, Apricus is also directed to produce documents dating back to January 1, 2011, but only to the extent such documents concern the shelf life of Vitaros; otherwise, based on Majorelle's explanation of relevance, these requests are overbroad. As described by the parties, Majorelle's RFPs Nos. 14-16 to Apricus “request documents that describe the relevant market for Vitaros and identification of competitors to Vitaros,” as purportedly relevant to Majorelle's antitrust claim and other claims seeking to invalidate the non-compete clause. (Id., at 5; id, Ex. D, at 9-11.) With respect to these requests, Majorelle argues that Apricus should produce documents dated as early as January 1, 2010, on the basis that “it is likely that Apricus conducted market analyses for Vitaros in the 2010-2012 time frame because Apricus filed for patent applications in 2007/2008 ... and sought market authorizations in Europe in April 2011 ....” (Id., at 5.) Majorelle, however, does not explain the connection between the January 1, 2010 date that it contends would be appropriate to commence the time period for production and the much earlier and later dates that it contends Apricus filed relevant patents and sought market authorizations in Europe. Apricus, for its part, has offered to produce responsive documents going back to March 1, 2013, when, it asserts, it “began considering finding a business partner in France” that ultimately led to the execution of the License Agreement and MSA. (Id., at 8.) This Court finds that Apricus's market analyses regarding Vitaros and any potentially competitive ED medications (topical or otherwise) would be relevant to Majorelle's antitrust claim and claims regarding the non-compete clause, but only to a limited extent. Market analyses regarding such medications should be produced by Apricus without specific date range, but only to the extent Apricus conducted and/or reviewed such analyses in connection with its negotiation of, and entry into, the License Agreement and MSA at issue. To the extent the RFPs call for production of market analyses that were not reviewed by Apricus in connection with its decision to enter into licensing negotiations with Majorelle, relating to the sale or distribution of ED medication in the Territory, those RFPs are overbroad. 2. Majorelle's RFPs to Ferring Similar to its RFPs Nos. 14-16 to Apricus, Majorelle's RFPs Nos. 8 and 13-15 to Ferring are described by the parties as seeking “production of documents concerning market assessments and evaluations and identifying products that compete with Vitaros.” (Id., at 6; id., Ex. E (Majorelle's Modified Request for Production of Documents and Things to Ferring International Center S.A.).) Majorelle takes the position that Ferring should locate and produce documents responsive to RFPs Nos. 8 and 13-15 dating back to January 1, 2013, “because Ferring first acquired rights to Vitaros in October 2013, and it is likely that Ferring evaluated the market for Vitaros and identified products competitive to Vitaros prior to first acquiring rights.” (Id., at 6.) In taking this position, Majorelle challenges Ferring's earlier-asserted contention that any of its market analyses dating back to 2013 would be irrelevant here, as they would have pre-dated Ferring's 2017 involvement in the Territory at issue in this case. (See Dkt. 78, at 8.) Majorelle argues that, to the contrary, “Ferring's determination of whether tablet-based [ED] medications are competitive with the cream-based topically-applied Vitaros product is relevant regardless of the country,” and, further, that “there is no reason to believe that Ferring's assessment of competitive products in 2013-2015 was limited to particular geographic areas.” (2/5/18 Joint Mtn., at 6 (emphasis in original).) Ferring essentially relies on its earlier-stated position, now contending only that Majorelle has failed to provide any “new or compelling basis for expanding the time frame with respect to Requests 13, 14 and 15.”[1] (Id., at 11.) *4 With respect to Majorelle's RFPs to Apricus, this Court again perceives the problem here to be the substantive scope of Majorelle's request, not the time frame when documents were generated. Certainly, geographical territory is an important factor in identifying the markets relevant to Majorelle's claims.[2] Nonetheless, it is possible, as Majorelle posits, that Ferring considered the results of market analyses conducted in other locations, beyond the Territory identified in the License Agreement, in considering whether to enter the market for ED medications in that Territory. Under the circumstances, Ferring is directed to produce documents responsive to RFPs Nos. 8 and 13-15, without date limitation, to the extent Ferring conducted and/or reviewed such documents in connection with its negotiation of the assignment of the License Agreement and MSA. To the extent the RFPs call for production of market analyses that were not reviewed by Ferring in connection with its decision to enter into that assignment, the RFPs are rejected as overbroad. B. Third-Party License Agreements As summarized in the Joint Letter, the parties disagree on the interpretation of this Court's directive, made during the January 19, 2018 teleconference, that Defendants identify “any other license agreements for generic tablet-form Cialis that covers that product in France.” (Id., Ex. F (transcript) 42:9-11.) Defendants incorrectly, and somewhat disingenuously, argue that they are only required to confirm “whether Defendants have any other license agreements with third parties that grant rights to Vitaros in France.” (Id, at 14.) It is undisputed that the License Agreement grants Majorelle an exclusive license for Vitaros in France. The relevant question, as correctly paraphrased by Majorelle, is whether any of the approximately 10 license agreements for Vitaros that Defendants have entered into with third parties, in other markets, allow the third-party licensees to commercialize (or preclude them from commercializing) other ED medications, such as generic tablet-form Cialis, in France. This question is relevant to establishing, or refuting, Majorelle's claim that the non-compete clause in the License Agreement should be invalidated for failing to serve Defendants’ legitimate business interest. In order to determine whether, and the extent to which, Defendants should produce other license agreements, they are directed to submit each of the approximately 10 license agreements for Vitaros to this Court, for in camera review. The Parties’ Disputes Regarding Rule 30(b)(6) Depositions Noticed by Majorelle (Dkts. 92, 96, 100) Majorelle complains that Defendants have failed to schedule the depositions that it duly noticed pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure, and have improperly objected to numerous deposition topics listed in the Rule 30(b)(6) notices. (See Letter to the Court from Monte L. Falcoff, Esq., dated Feb. 1, 2018 (Dkt. 92).) Defendants – apart from, once again, seeking a stay of discovery that has already been denied – seem to take the position that the depositions should not go forward until after document production has been completed, and also assert that the parties have not yet conferred fully, in good faith, regarding the propriety and scope of the listed deposition topics. (See Letter to the Court from John T. Ryan, Esq. and Gary J. Mennitt, Esq., dated Feb. 5, 2018 (Dkt. 96).) In reply, Majorelle blames Defendants for delay, and accuses Defendants of rendering the “meet and confer” process pointless by flatly refusing to schedule the depositions. (See Letter to the Court from Monte L. Falcoff, Esq., dated Feb. 6, 2018 (Dkt. 100).) *5 Having reviewed the parties’ submissions, this Court perceives a glaring lack of cooperation among counsel. The parties are directed to submit to this Court, to be “so ordered,” agreed dates for the Rule 30(b)(6) depositions, to be held within 45 days of the date of this Order. This Court expects full, good-faith discussion among counsel regarding the scope of each and every topic listed in the deposition notices as to which Defendants have an objection, with an eye to what is reasonable and proportional to the needs of this case. This Court will not consider any disputes regarding those topics unless counsel first satisfy that good-faith conference requirement. The Parties’ Differing Requests for an Extension of the Discovery Deadline (Dkts. 101, 102) Fact discovery in this action was supposed to have been completed by March 7, 2018. Given that this Court did not immediately rule on the discovery disputes placed before it, and that both parties seek an extension of that deadline, this Court will grant an extension. Plaintiff has only request a 30-day extension (although that request was made over a week ago), whereas Defendants seek fully nine more months. (See Letter to the Court from John T. Ryan, Esq., and Gary J. Mennitt, Esq., dated Feb. 27, 2018 (Dkt. 101); Letter to the Court from Glenn E. Forbis, Esq., dated Feb. 28, 2018 (Dkt. 102).) The inappropriateness of Defendants’ request is readily apparent. At the initial pretrial conference in this case, Defendants sought a stay of discovery or, alternatively, a lengthy discovery schedule, and Judge Torres considered and rejected both, setting a total of four months for the completion of all fact discovery. (See Dkt 49.) This Court will not now undermine Judge Torres's rulings by more than tripling the discovery period she set. Moreover, Defendants’ proffered rationale for the additional time they seek – that the dates for discovery should “align with the typical time it takes an antitrust case in the Southern District of New York to reach summary judgment – between 2 and 2.5 years” (Dkt. 101, at 1) is obviously flawed. This case concerns the validity or enforceability of a non-compete clause. Merely because one asserted claim is that the clause should be held unenforceable under antitrust laws does not transform the case into one equivalent, in its discovery needs, to the “typical” antitrust case in this District. Although Defendant requested a discovery conference to determine an appropriate extension (Dkt. 101), this Court sees no need for a conference at this time. Fact discovery is hereby extended by 60 days, to May 7, 2018. All expert discovery shall be completed no later than June 20, 2018. The license agreements required to be submitted for in camera review shall be provided to this Court no later than two weeks from the date of this Order. All documents required to be produced pursuant to this Order shall be produced no later than three weeks from the date of this Order. The Clerk of Court is directed to close the following motions on the Docket of this action: Dkts. 92, 97, and 101, each of which are granted in part and denied in part, as set out herein. In addition, Dkt. 94 (by which the parties had jointly sought more time to submit the joint motion eventually filed at Dkt. 97) should be closed as moot. SO ORDERED Footnotes [1] Ferring did not list RFP No. 8 in its response to Majorelle's framing of the issue in the Joint Letter, in what this Court assumes was inadvertent error. [2] See, e.g., In re Aluminum Warehousing Antitrust Litig., 95 F. Supp. 3d 419, 454 (S.D.N.Y. 2015) (for the purpose of antitrust claims pursuant to § 1 of the Sherman Act, 15 U.S.C. § 1, “[t]he relevant market is the ‘area of effective competition,’ which is determined by defining relevant product and geographic markets.”) (citing PepsiCo, Inc. v. Coca-Cola Co., 315 F.3d 101, 105, 108 (2d Cir. 2002); AD/SAT v. Associated Press, 181 F.3d 216, 226 (2d Cir. 1999)); Ashland Mgmt. Inc. v. Altair Investments NA, LLC, 869 N.Y.S.2d 465, 470 (App. Div. 2008), aff'd as modified, 14 N.Y.3d 774 (2010) (under New York common law, “restrictive covenants ... are subject to specific enforcement to the extent that they are,” inter alia, “reasonable in time and area ....” (citations and internal quotation marks omitted)).