Articles Posted in Discovery

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. Continue reading

Plaintiff, Fox Factory, moved to amend its final infringement contentions, asserting that the defendant, SRAM, LLC, had failed to produce relevant information regarding its custom “BRAIN” product that had delayed Fox Factory from learning that the BRAIN product infringed the patent-in-suit. SRAM opposed the motion and contended that Fox Factory was well aware of the BRAIN product before the amendment deadline and that SRAM had no obligation to craft or intuit Fox Factory’s infringement position.

In analyzing whether there was good cause to permit the amendment, the court first looked at whether Fox Factory was diligent—and found that it was not. “Strikingly, Plaintiff’s arguments sidestep its own knowledge—and when it gained such knowledge—about the existence and functionality of Defendants’ customized BRAIN shock for Specialized. Instead, FOX Factory seeks to direct the court’s attention to Defendants’ discovery shortcomings. But in considering good cause, this court first focuses on whether the original deadline could have been met with reasonable diligence by Plaintiffs, not any bad faith by Defendants. Colorado Visionary Academy, 194 F.R.D. at 687. Using this framework, based on the record before it, this court is not persuaded that FOX Factory exercised adequate diligence to warrant amendment of its Final Infringement Contentions at this late juncture.”

In reaching the conclusion that Fox Factory was not diligent, the court specifically noted that “FOX Factory carefully never argues it only learned of Defendants’ BRAIN shock at the end of the discovery period. Indeed, the record before this court belies any suggestion that FOX Factory’s knowledge of the BRAIN shock was dependent upon Defendants’ disclosures late in discovery. And while FOX Factory vigorously argues that it was diligent in pursuing Defendants’ identification of all its rear shock products so that it could pursue discovery and understand the full scope of infringement, Plaintiff never cogently explains why its own internal document related to competitive analysis from September 28, 2017 is insufficient to constitute knowledge of the BRAIN product and trigger its own independent obligation to diligently pursue discovery on the topic.”

TC Technology filed a patent infringement action against Sprint alleging that Sprint infringed a patent pertaining to wireless services used on an LTE network. The complaint did not allege willful infringement.

During discovery, Sprint responded that it had received an email several years before the lawsuit was filed with an offer to purchase the patent-in-suit. An attachment to the email identified and described the patent-in-suit. Although the general counsel for Sprint forwarded the email and attachment to several Sprint employees, Sprint explained that it believed the attachment was never opened. TC Technology took the deposition of one of these employees and then filed a motion to amend the complaint to add a claim for willful infringement. Because the motion was filed after the cut-off established to amend the pleadings, TC Technology could not amend the complaint without a showing of good cause.

During deposition, the Sprint witness (Mr. Ball) testified that “there was no way to verify one way or the other” whether the attachment had been opened, other than the recollections of himself, Mr. Wunsch, and Mr. Cowan that it was not opened. As explained by the district court, Mr. Ball also testified that he did not think he, Mr. Wunsch, or Mr. Cowan would have opened the attachment in the normal course of business.

In this patent infringement action, Teva inadvertently produced documents to Sunovion. Teva subsequently attempted to claw back the documents under the parties’ protective order. Sunovion moved to compel the inadvertently produced documents.

In analyzing the motion to compel, the district court noted that it had “reviewed the parties’ submissions, the Discovery Confidentiality Order (DCO), and, in particular, paragraphs 28 and 30 of the DCO.” The district court further noted that “[t]hese paragraphs are applicable to the instant matter insofar as they refer to notice ‘promptly after its discovery’ and ‘prompt remedial action’ in the event of an inadvertent disclosure.”
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Plaintiff Krausz Industries Ltd. (“Krausz”) filed a motion for an order compelling Defendants Smith-Blair, Inc. and Sensus USA, Inc. (collectively “Smith-Blair”) to allow discovery into various attorney-client communications and work product related to an advice of counsel defense.

Although the parties agreed that raising an advice of counsel defense can result in a waiver of the attorney-client privilege and work product doctrine, the parties disagreed about the scope of the waiver. Smith-Blair asserted that any waiver should be limited to communications and related work product between Smith-Blair and its opinion counsel on the issue of noninfringement that occurred before litigation began.
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The plaintiff filed an ex parte application to be relieved of admissions that were deemed admitted for failure to respond.

In analyzing the ex parte application, the district court first concluded that the plaintiff had not justified the filing of an ex parte application rather than a noticed motion. “Plaintiff has not shown Plaintiff’s ‘case will be irreparably prejudiced if the underlying motion is heard according to regular noticed motion procedures.’ Mission Power, 883 F. Supp. at 492. To the contrary, there is no mention anywhere in the Application or supporting declaration that there is any crisis or emergency warranting ex parte relief, nor does it appear to the Court that Plaintiff’s case would be ‘irreparably prejudiced’ if the underlying motion were heard according to regular noticed motion procedures. Moreover, to the extent there is any crisis, Plaintiff has not shown it is ‘without fault in creating the crisis that requires ex parte relief, or that the crisis occurred as a result of excusable neglect.’ Id. ”
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