DNA GENOTEK INC., a Canadian Corporation, Plaintiff, v. SPECTRUM SOLUTIONS L.L.C., a Utah Limited Liability Company, Defendant Case No.: 21-cv-516-RSH-DDL United States District Court, S.D. California Signed January 10, 2023 Counsel Brian M. Kramer, Candice F. Heinze, Drew Alan Hillier, John R. Lanham, Morrison & Foerster LLP, San Diego, CA, David D. Cross, Pro Hac Vice, Morrison & Foerster LLP, Washington, DC, for Plaintiff. Benjamin B. Anger, Knobbe Martens, San Diego, CA, Brandon Geoffrey Smith, Stephen W. Larson, Joseph F. Jennings, Nicholas M. Zovko, Ali S. Razai, Knobbe Martens Olson and Bear LLP, Irvine, CA, for Defendant. Leshner, David D., United States Magistrate Judge ORDER GRANTING MOTION TO COMPEL [Dkt. No. 193] *1 Plaintiff DNA Genotek, Inc. (“Genotek”) moves to compel defendant Spectrum Solutions, L.L.C. (“Spectrum”) to designate a witness pursuant to Fed. R. Civ. P. 30(b)(6) on two topics: topic number 4, which seeks testimony on Spectrum's reliance on counsel as a defense to willful infringement, and topic number 27, which seeks testimony on the facts and circumstances pertaining to specific work performed by law firms on Spectrum's behalf. See Dkt. No., 193-2 at 32-33 (deposition notice). Having considered the parties’ briefs, the applicable law and the arguments of counsel on January 9, 2023, the Court GRANTS the motion. Genotek's Second Amended Complaint (“SAC”) alleges that Spectrum has infringed two patents, the “’187 patent” and the “’646 patent,” owned by Genotek. Dkt. No. 20 at 3. Genotek argues that the SAC pleads willful infringement by Spectrum and that any reliance by Spectrum on an advice of counsel defense is the proper subject of discovery. In opposing the motion, Spectrum contends the deposition topics seek impermissible testimony because the SAC “does not include any allegation of willful infringement” and that “the advice of counsel defense is not at issue in this case.” Dkt. No. 198 at 5. The Federal Rules of Civil Procedure permit a broad scope of discovery: “Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case....” Fed. R. Civ. P. 26(b)(1). “Information within this scope of discovery need not be admissible in evidence to be discoverable.” Id. “Evidence is relevant if: (a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action.” Fed. R. Evid. 401. The Federal Circuit recognizes that “willfulness requires deliberate or intentional infringement.” Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 988 (Fed. Cir. 2021); see also Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020) (“the concept of ‘willfulness’ requires a jury to find no more than deliberate or intentional infringement”) (citation omitted). Here, the SAC alleges that Spectrum was “aware” of Genotek's ’187 and ’646 patents and, despite that knowledge, “engage[d] in [the] knowing and purposeful activities” described in the SAC with awareness that “the making, using, selling, or offering for sale of the Spectrum Product or services incorporating the Spectrum Product constituted an act of infringement” as to both patents. Dkt. No. 20 at 6. The Court finds that these allegations suffice to entitle Genotek to the requested discovery under Rule 26.[1] *2 Spectrum contends a plaintiff pleading willful infringement must allege not only that the defendant knew about the patent but also that the defendant “acted egregiously.” Dkt. No. 198 at 7. But the cases upon which Spectrum relies predate the Federal Circuit's holding that “willfulness requires deliberate or intentional infringement.” Bayer Healthcare LLC, 989 F.3d at 988; accord Core Optical Technologies, LLC v. Juniper Networks Inc., 562 F. Supp. 3d 376 (N.D. Cal. 2021) (rejecting argument that willfulness required plaintiff to “plead both knowledge and egregiousness”); Therabody, Inc. v. Tzumi Elecs. LLC, No. 21CV7803PGGRWL, 2022 WL 17826642, at *5 (S.D.N.Y. Dec. 19, 2022) (under Federal Circuit law, “alleging egregiousness is not necessary at the pleadings stage”) (citation omitted). For the foregoing reasons, the Motion to Compel [Dkt. No. 193] is GRANTED. The January 6, 2023 fact discovery cutoff is extended for the sole purpose of allowing Genotek to take the deposition of Spectrum's Rule 30(b)(6) designee on topics 4 and 27. IT IS SO ORDERED. Footnotes [1] This Court's determination is limited to whether the deposition testimony that Genotek seeks is within Rule 26’s broad scope. Other issues the parties may raise pertaining to the sufficiency of Genotek's pleadings, including its allegations of willful infringement, are properly considered by the District Judge.