Articles Posted in Discovery

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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 https://patentlaw.jmbm.com/files/2019/04/white-vintage-wheel-retro-old-bicycle-519554-pxhere.com-cc0-04.09.2019-crop-300x300.jpgsidestep 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.”

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8-o-clock-alarm-clock-analogue-1198264-300x200In this patent infringement action, the defendant, Playmonster LLC (“Playmonster”), requested that the district court stay discovery during the pendency of its forthcoming dispositive motion. As part of its request, Playmonster contended that a dispositive motion “would be the most efficient resolution of this case,” and that a stay of discovery would promote judicial efficiency and conserve the Parties’ resources, which would include reducing the attorney’s fees that would be spent on the case should the dispositive motion be granted.

The plaintiffs, Quality Innovative Products, LLC (“Quality”), opposed the stay of discovery in the case.  As its main argument, the plaintiffs asserted that the case was filed over a year ago, “and the Defendant has enjoyed substantial delay already while it pursued a first dispositive motion” that it used “as an excuse not to comply with its discovery obligations.”  Quality further argued that they “should not have to piece meal litigation for the convenience of the Defendant.” Quality also asserted that they oppose filing of dispositive motions until discovery closes.

The district court concluded that a stay of discovery was inappropriate.  “The court is disinclined to stay discovery pending the filing of a dispositive motion. While Defendant may file a dispositive motion at any time it deems appropriate on or before the set deadline, the court’s practice standards do limit parties to one dispositive motion without leave of the court. See NYW Civ Practice Standards 56.1. In addition, leave to file additional dispositive motions is only granted in exceptional circumstances. See id. Further, stays of discovery in this District are generally disfavored, see Church Mut. Ins. Co. v. Coutu, No. 17-CV-00209-RM-NYW, 2017 WL 3283090, at *2 (D. Colo. Aug. 2, 2017), and nothing in the record before the court at this juncture justifies a stay.”

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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.

171030-JMBM-14-Jill-Skinner-001-300x269During 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.

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https://patentlaw.jmbm.com/files/2019/01/background-close-up-court-1415558-pexels-CC0-01.14.2019-1-300x201.jpgIn this patent infringement action, the plaintiff, Whirlpool Properties (“Whirlpool”) noticed several depositions of third-party witnesses near the discovery cut-off.  The defendant, Filters Fast, moved for an order to stop the depositions.

As explained by the district court, “[t]he crux of the pending motion is that the Whirlpool Plaintiffs emailed Defendant on November 28, 2018, the dispositive motions deadline, attaching two third-party deposition subpoenas that noticed depositions for December 6 in Windsor, Va. and December 7 in Simpsonville, S.C.  Defendant contends that Plaintiffs had never identified these potential witnesses, nor even disclosed the possibility of deposing them.  Moreover, Defendant notes that these newly noticed depositions overlapped with already scheduled depositions of Whirlpool witnesses to be held in Chicago, Il. on December 5, 7, and 11. According to Defendant, Whirlpool Plaintiffs then emailed a notice on December 2, regarding a third third-party witness it intended to depose in Texas on December 11 or 12.”

In opposition, Whirlpool asserted that witnesses in question “were disclosed within three days of confirming them for depositions.”  Whirlpool argued that the notice of depositions in dispute here was “reasonable under the circumstances.” ((citing Fed.R.Civ.P. 30(b)(1)).  Whirlpool further argued that the third-party depositions could have been conducted by the parties’ stipulated extension of the discovery deadline – December 12, 2018. Whirlpool also contended that the depositions address non-complicated issues that would require minimal preparation.

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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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In this patent infringement action, IBM filed a motion to compel production of certain documents that were withheld as privileged. IBM contend that time was of the essence when it filed its motion.

The district court was not persuaded by the urgency of the request or that time “was of the essence” because the motion was filed late. As explained by the district court, “IBM’s urgency is belied by the fact that its request is late. Fact discovery closed November 18. Under Civil Local Rule 37-3, IBM’s motion to compel discovery was due within 7 days after the fact discovery deadline. Yet IBM filed its discovery motion on December 13, more than two weeks late.”
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Dexcel filed a motion to compel contending that Takeda has refused to provide any fact discovery concerning Takeda’s methods for particle size analysis used in prior litigations or underlying the data in the patents-in-suit. Dexcel asserted “that this information was relevant because it targets whether Takeda’s position as to test methods to assess the literal infringement of Takeda’s particle size limitations by Dexcel’s product is consistent with positions Takeda has taken in the past.”

Takeda objected arguing that any discovery into test methods for particle size that were employed in prior litigations “implicates the confidential and highly confidential information” of the defendants in those suits. Takeda also contended that the Discovery Confidentiality Orders entered in those matters prohibit it from disclosing information designated confidential by those defendants.
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Plaintiff Synopsys, Inc. (“Synopsys”) filed a motion to compel defendant, ATopTech, to respond to interrogatories. ATopTech opposed the motion by arguing that it had already answered Synopsys’s Set One, Interrogatory Nos. 1-5, which contained at least 21 discrete subparts. ATopTech therefore contended that it was “not required to respond to any of the interrogatories in Set Two, Interrogatory Nos. 6-25, because the Set Two interrogatories also contain discrete subparts, and even responding to Interrogatory No. 6 would require ATopTech to exceed the 25 interrogatory limit under Federal Rule of Civil Procedure 33(a)(1).”

The district court began its analysis by noting that “[p]atent cases present unique challenges with respect to the application of Rule 33’s numerical limit on interrogatories. A circuit judge for the Federal Circuit, sitting as the district court in a patent case, recently devoted an entire opinion to the issue of what constitutes a ‘discrete subpart’ for purposes of Rule 33(a)(1). See Erfindergemeinschaft Uropep GbR v. Eli Lilly & Co., 315 F.R.D. 191 (E.D. Tex. 2016).
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