Katrinecz v. Motorola Mobility LLC
Katrinecz v. Motorola Mobility LLC
2014 WL 12160772 (W.D. Tex. 2014)
August 11, 2014

Lane, Mark,  United States Magistrate Judge

Failure to Produce
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Summary
The court granted Plaintiffs' Motion to Compel Regarding Deficient Interrogatory Responses, Identification of Email Custodians and Cooperation Under Order Regarding E-Discovery in part, and granted Motorola's Motion to Compel Complete Interrogatory Responses. The court also dismissed Motorola's Motion to Compel Production of Plaintiffs' Individual Tax Returns as moot, and granted Plaintiffs' Motion for Leave to File Under Seal Plaintiffs' Motion for Extension of Time to Respond to Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction, ordering Exhibits One and Two to be filed under seal.
Additional Decisions
Andrew Katrinecz and David Byrd, Plaintiffs,
v.
Motorola Mobility LLC, Defendant
A-12-CV-235 LY
Signed August 11, 2014

Counsel

Cabrach J. Connor, Jennifer Tatum Lee, Sergio R. Davila, Isabelle Maria Antongiorgi, David E. Dunham, Taylor Dunham and Rodriguez LLP, Christopher R. Johnson, Yetter Coleman LLP, Willem G. Schuurman, Eric B. Meyertons, Ryan Tyler Beard, Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C., Austin, TX, Marc S. Tabolsky, Yetter Coleman LLP, Houston, TX, for Plaintiffs.
Andrew R. Sommer, Winston & Strawn LLP, Washington, DC, David Enzminger, Winston & Strawn LLP, Los Angeles, CA, James Winn, Jonathan E. Retsky, Kurt Mathas, Stephen Wurth, Winston & Strawn LLP, Chicago, IL, Paige Arnette Amstutz, Stephen E. McConnico, Steven J. Wingard, Scott, Douglass & McConnico, LLP, Austin, TX, for Defendant.
Lane, Mark, United States Magistrate Judge

ORDER

*1 Before the Court are Plaintiffs' Motion to Compel Regarding Deficient Interrogatory Responses, Identification of Email Custodians and Cooperation Under Order Regarding E-Discovery, filed July 17, 2014 (Clerk's Dkt. #79); Defendant's Motion to Compel Complete Interrogatory Responses, filed July 21, 2014 (Clerk's Dkt. #81); Motorola Mobility LLC's Motion to Compel Production of Plaintiffs' Individual Tax Returns, filed July 23, 2014 (Clerk's Dkt. #84); Plaintiffs' Motion for Leave to File Under Seal Plaintiffs' Motion for Extension of Time to Respond to Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction, filed July 28, 2014 (Clerk's Dkt. #92); and the responsive pleadings thereto. The undersigned conducted a hearing on the matters on August 8, 2014 and hereby issues the following orders:
I.
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense, including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter. FED. R. CIV. P. 26(b)(1). For good cause, the court may order discovery of any matter relevant to the subject matter involved in the action, and relevant information need not be admissible at the trial if the discovery appears “reasonably calculated to lead to the discovery of admissible evidence. Id. If a party fails to fully answer an interrogatory or request for production of documents, the party seeking the discovery may move for an order compelling an answer to that discovery request. FED. R. CIV. P. 37(a)(3)(B).
II.
By way of Plaintiffs' Motion to Compel Regarding Deficient Interrogatory Responses, Identification of Email Custodians and Cooperation Under Order Regarding E-Discovery, Plaintiffs raise three issues. Specifically, Plaintiffs contend: (a) the response of Defendant Motorola Mobility LLC (“Motorola”) to Interrogatory No. 14 is deficient; (b) Motorola should be compelled to provide e-discovery from more than twelve email custodians; and (c) Motorola should be compelled to identify key words for email searches.
As to the first issue, Plaintiffs' Interrogatory No. 14 asks Motorola to “identify all persons you believe have knowledge of relevant facts and identify the issues upon which you believe they have knowledge. For each person who assisted or provided information included in [y]our interrogatory responses, identify the specific interrogatory and the information they requested.”
Motorola has raised numerous objections to this interrogatory, but has responded by identifying approximately thirty individuals. As made clear at the hearing, the core issues underlying Plaintiffs' contention that Motorola's response is inadequate are two-fold. First, Motorola has apparently limited its response solely to current employees. Second, Plaintiffs complain Motorola did not identify any persons related to marketing, sales, or quality assurance/testing until two days before the hearing via e-mail, rather than supplementation of the interrogatory answer.
*2 As to the first issue, counsel for Motorola conceded the response was limited to current employees, contending any other reading of the interrogatory would be unduly burdensome. The undersigned has little trouble concluding Motorola's position is not well-founded. As counsel for Plaintiffs pointed out, the development of Motorola's allegedly infringing products dates back nearly a decade. Motorola cannot escape its discovery obligations by the convenient fortuity that some of those persons with potentially the largest involvement, and thus greatest knowledge of relevant facts, are no longer employed by Motorola.
As to the second issue, Motorola contends Plaintiffs' request for discovery related to sales, marketing and quality assurance/testing seeks irrelevant information. Motorola is correct that Plaintiffs' request is limited to discovery of those with “relevant” facts. However, the undersigned is not convinced that Motorola is the proper aribter of relevance. Plaintiffs contend discovery related to sales, marketing and quality assurance/testing may reveal the value and emphasis Motorola placed on the technology at issue in this case and would thus be relevant to damages at a minimum. Plaintiffs' position is not without support. See Rockstar Consortium US LP v. LG Electronics, Inc., 2014 WL 3795450, at *3 (E.D. Tex. July 30, 2014) (suggesting relevant evidence in patent case includes “sales agreements, marketing documents and marketing strategy reports”); MGT Gaming, Inc. v. WMS Gaming, Inc., 978 F. Supp. 2d 647, 669 (S.D. Miss. 2013) (suggesting relevant documents in patent case include “those related to the design, development, manufacture, marketing, advertising, and financial-related information” for accused products). See also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (patent owner must show that “sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter”).
The undersigned is also not unsympathetic to Motorola's explanation that, as a very large corporation, a large burden is likely imposed by Plaintiffs' interrogatory. Motorola should not be tasked with identifying potentially thousands of persons with only limited knowledge of relevant facts. Indeed, Plaintiffs likely do not want to have to sort through such a voluminous list and determine which persons are truly key to these proceedings. Accordingly, this portion of Plaintiffs' motion to compel is granted, but Motorola is ordered to amend its interrogatory to identify at least to five persons with knowledge of relevant facts regarding marketing and/or sales, and at least five persons with knowledge of relevant facts regarding quality assurance/testing.
The second issue concerns implementation of the Order Regarding E-Discovery entered by the undersigned on June 24, 2014. In pertinent part, the order states:
Each requesting party shall limit its e-mail production requests to a total of twelve (12) custodians per producing party for all such requests. The parties may jointly agree to modify this limit without the court's leave. The court shall consider contested requests for additional or fewer custodians per producing party, upon showing a distinct need based on the size, complexity, and issues of this specific case.
(Order ¶ 7). The undersigned notes this language was jointly agreed to by the parties.
Plaintiffs now argue they need Motorola to increase its production requests to sixteen custodians to allow for searches to include marketing and sales information. As Motorola points out, Plaintiffs have not even suggested this request satisfies the need to make the “showing of distinct need based on the size, complexity and issues of this specific case” required by the e-discovery order entered in this case. Moreover, Plaintiffs conceded at the hearing that they were aware of their professed need for searches to include marketing and sales information at the time they agreed to the limit of twelve custodians. This portion of the motion to compel is therefore denied.
*3 Finally, Plaintiffs conceded during the hearing that Motorola had been cooperating on identifying key words for email searches. As a result, they agreed to withdraw this portion of the motion to compel. Accordingly, Plaintiffs' motion to compel is granted in part and denied in part.
III.
By way of Defendant's Motion to Compel Complete Interrogatory Responses, Motorola seeks to compel full answers to two related interrogatories. Motorola's Interrogatory Nos. 1 and 3 respectively ask for: (a) identification of each claim which Plaintiffs contend is not rendered obvious by the prior art identified by Motorola and the basis for that contention; and (b) all facts concerning alleged evidence of secondary considerations of non-obviousness. Motorola argues these “contention” interrogatories seek the factual basis of any contentions Plaintiffs are making concerning why the patent at issue in this case is not the obvious result, or the related secondary considerations, of prior art.
Plaintiffs have objected to responding to both interrogatories on the basis that they have not reviewed the prior art and are leaving that review to their expert(s). They contend the answers will be contained in their expert report(s), not due to be filed until August 26, 2014. Plaintiffs also object to Interrogatory No. 3 as premature, that is they contend Motorola has to prove non-obviousness first. Despite the objection, Plaintiffs provided a brief, although rather unhelpful, response to Interrogaroty No. 3.
As Motorola points out, facts are unquestionably discoverable, as are contentions that relate to facts. See FED. R. CIV. P. 33(a)(2) (interrogatory not objectionable merely because it asks for contention that relates to fact). Motorola is further correct that the failure to disclose the facts underlying an expert's opinion may prevent a party from later using those facts. See FED. R. CIV. P. 37(c)(1) (if party fails to provide information as required by discovery rules, party is not allowed to use that information to supply evidence on motion, at hearing or at trial).
The undersigned finds persuasive the authorities cited by Motorola which have compelled responses to similar “contention” interrogatories. See, e.g., Layne Christensen Co. v. Purolite Co., 2011 WL 231400, at *1 (D. Kan. Jan. 24, 2011) (ordering plaintiffs to respond to interrogatory seeking basis for claim of patent validity, including “factual bases” that would either support or refute defense of invalidity and “factual bases for secondary considerations of non-obviousness”); Gen-Probe Inc. v. Becton, Dickinson & Co., 2010 WL 3516926, *2 (S.D. Cal. Sept. 7, 2010) (ordering patentee to answer interrogatories relating to contentions of unexpected success and secondary considerations it might rely on to rebut obviousness); Duhn Oil Tool, Inc. v. Cooper Cameron Corp., 2010 WL 716306, at *2-4 (E.D. Cal. Mar. 2, 2010) (ordering plaintiffs to fully respond to interrogatory seeking identification of each limitation of patent not found in prior art patent); Gardner v. Toyota Motor Corp., 2009 WL 8732016, at *1 (W.D. Wash. May 6, 2009) (ordering response to contention interrogatory requiring plaintiff to “distinguish his claims from specific prior art identified by the Defendants” because information sought “is a proper and relevant subject of discovery”). In addition, the undersigned notes Plaintiffs propounded similar “contention” interrogatories on Motorola, to which Motorola provided responses without objection. Accordingly, Motorola's motion to compel complete interrogatory responses is granted.
IV.
*4 By way of Motorola Mobility LLC's Motion to Compel Production of Plaintiffs' Individual Tax Returns, Motorola seeks production of Plaintiffs' individual tax returns for the purpose of evaluating damages. Specifically, Motorola seeks to confirm the amount of royalties received from licensees for the technology at issue in this suit.
During the hearing, counsel for Plaintiffs stated Plaintiffs had agreed to produce the portions of their tax returns which reflect the royalty income they received. Motorola agreed such production would be satisfactory. Accordingly, Motorola's motion to compel production of tax returns is dismissed as moot.
V.
By way of Plaintiffs' Motion for Leave to File Under Seal Plaintiffs' Motion for Extension of Time to Respond to Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction, Plaintiffs seek leave to file a motion for extension of time to file a response to Motorola's motion to dismiss. The motion to dismiss was filed on July 24, 2014. Plaintiffs' response is due fourteen days later. See W.D. TEX. LOCAL R. CV-7(e) (response to dispositive motion due not later than fourteen days after filing of motion).
The initial matter to be addressed is Plaintiffs' request to seal the underlying motion for extension of time. Plaintiffs seek to have the entire motion filed under seal. As discussed during the hearing, Exhibits One and Two to Plaintiffs' motion contain confidential information. Both the parties and the undersigned agreed only those portions of the motion need to be sealed. Accordingly, Plaintiffs' motion to seal is granted in part.
The remaining matter is Plaintiffs' underlying request for additional time to respond to Motorola's motion to dismiss. Plaintiffs state they need additional time to seek discovery regarding the factual assertions on which Motorola's motion is based. Specifically, they maintain they need sufficient time to depose Terri Cothern (“Cothern”), a witness whose declaration is attached to Motorola's motion and whose knowledge forms the core of the motion. Plaintiffs also contend they need time to seek discovery from Motorola and Motorola's parent corporation concerning their dealings with Cothern.
In Motorola's response to the request for additional time, Motorola asserts discovery was not necessary. According to Motorola's response, Plaintiff Andrew Katrinecz is fully aware of the facts concerning Cothern's interest in this litigation and has been so for many years. Motorola further contends any discovery into the dealings between Cothern and Motorola and its parent corporation are not relevant to the issues in the motion to dismiss and thus there is no need for delay on that basis. Finally, Motorola maintains the delay sought by Plaintiffs is longer than needed.
The parties announced during the hearing that they had agreed to conduct Cothern's deposition on August 21, 2014. Motorola's contention of the lack of need for discovery and a delay in responding to the motion to dismiss is belied by its own conduct. Moreover, as counsel for Plaintiffs stated during the hearing, the parties had agreed to conduct other depositions in the latter part of August, thus undercutting Motorola's position that Plaintiffs could respond to the motion to dismiss within a few days of the date of Cothern's deposition. The undersigned thus finds Plaintiffs' have shown cause to extend the filing of their response to the motion to dismiss until September 15, 2014.
*5 Accordingly, Plaintiffs' Motion for Leave to File Under Seal Plaintiffs' Motion for Extension of Time to Respond to Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction is GRANTED IN PART. The Clerk's Office is directed to file Exhibits One and Two to the motion under seal. The motion and remaining exhibits are to be filed unsealed. Further, once filed, Plaintiffs' Motion for Extension of Time to Respond to Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction is GRANTED. Plaintiffs' response to the motion to dismiss is due on or before September 15, 2014.
VI.
As set forth above:
(1) Plaintiffs' Motion to Compel Regarding Deficient Interrogatory Responses, Identification of Email Custodians and Cooperation Under Order Regarding E-Discovery (Clerk's Dkt. #79); is GRANTED IN PART and DENIED IN PART.
(2) Defendant's Motion to Compel Complete Interrogatory Responses (Clerk's Dkt. #81) is GRANTED.
(3) Motorola Mobility LLC's Motion to Compel Production of Plaintiffs' Individual Tax Returns (Clerk's Dkt. #84) is DISMISSED as moot.
(4) Plaintiffs' Motion for Leave to File Under Seal Plaintiffs' Motion for Extension of Time to Respond to Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction (Clerk's Dkt. #92) is GRANTED IN PART. The Clerk's Office is directed to file Exhibits One and Two to Plaintiffs' Motion for Extension of Time under seal. The motion and remaining exhibits are to be filed unsealed. Once filed, Plaintiffs' Motion for Extension of Time to Respond to Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction is GRANTED and Plaintiffs' response to the motion to dismiss is due on or before September 15, 2014.
All other relief sought by way of the motions before the Court which is not expressly granted herein is denied.
SIGNED on August 11, 2014.