In this patent infringement action, Plaintiff Eagle Eyes Traffic Industry USA Holding LLC (“Eagle Eyes”) filed a motion for an order compelling Defendant E-Go Bike LLC (“E-Go”) to provide responses to Eagle Eyes’ requests for production of documents (“RFPs”), interrogatories (“rogs”), and requests for admission (“RFAs”). After noting that E-Go’s counsel conceded that the requests were properly served by e-mail, the court addressed E-Go’s explanation for failing to respond to the discovery:
E-Go’s explanation for its failure to respond is that the company ceased operations toward the end of last year, and it was difficult for U.S.-based counsel to obtain information from the pertinent former E-Go employee due to Covid lockdown in Shanghai and surrounding cities. That is a reasonable explanation for why it was difficult to produce documents or provide substantive information that counsel did not possess. But it does not constitute an explanation for why U.S. counsel based in Pleasanton, California did not serve written responses and objections. Drafting objections is an exercise of legal judgment under U.S. law, and a Chinese ex-employee would have been no help with that anyway.
The court then turned to appropriate remedies. The court noted that there was no good cause for failing to submit objections to requests (even if substantive responses could not have been provided) and therefore found that any objections to requests were now waived.
With respect to the RFAs, the court also noted that Rule 36 makes clear that the RFAs are all admitted: “A matter is admitted unless, within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney.” Fed. R. Civ. Proc. 36(a)(3).
But here, with respect to the RFAs, the court concluded that there was a significant different in the ability to provide responses without client input:
The RFAs differ in one respect from the rogs and RFPs. As noted above, U.S. counsel could have served timely objections to the rogs and RFPs, but to actually answer the rogs and produce the requested documents did require assistance from someone based in China. That doesn’t seem to be true of the RFAs. Twenty of them ask E-Go to admit allegations in the complaint that E-Go had already denied in the answer it filed on October 18, 2021. Two of them ask E-Go to admit that it has no evidence supporting the affirmative defenses it pleaded in that same answer and that all those affirmative defenses are baseless. Assuming E-Go complied with Rule 11 when it filed its answer, its counsel did not need any further information from his client to respond to those RFAs. That leaves RFA 3 (“Admit that YOU have sold or distributed ACCUSED PRODUCTS”).
The court then explained that “[a] decent patent lawyer would have noticed that this RFA was vague as to location, that asking about sales outside the U.S. might be objectionable as irrelevant, and that E-Go’s answer to paragraph 5 of the complaint would have enabled counsel to serve a lack-of-knowledge response as to sales in the U.S. The Court is skeptical that U.S. counsel needed any information not already on file in this matter to answer these RFAs. Regardless, even if counsel did not feel comfortable substantively answering these RFAs until he could confer with his client, he still could have served a bunch of objections simply to avoid defaulting.”
To emphasize the point, the court further explained that this ruling was not based on technicalities: “Despite repeated threats by Eagle Eyes that it intended to move to compel, 80 days after E-Go’s counsel acknowledged receipt of the discovery requests, he still had not served any responses. He didn’t miss the deadline by just a little bit.”
Eagle Eyes Traffic Industry USA Holding LLC v. E-Go Bike LLC, Case. No. 21-cv-07097-JST (TSH) (N.D. Cal. July 1, 2022)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.