Ecojet, Inc. v. Luraco, Inc.
Ecojet, Inc. v. Luraco, Inc.
2016 WL 9000043 (C.D. Cal. 2016)
October 12, 2016
Scott, Karen E., United States Magistrate Judge
Summary
The court granted Plaintiff's motion to compel Defendant Luraco to produce documents in response to Plaintiff's discovery requests, including ESI. The court ordered Defendant to pay Plaintiff's reasonable expenses incurred in making the Motion to Compel in the amount of $4,150.00 and found that the ESI was important to the case and should be produced.
Ecojet, Inc.
v.
Luraco, Inc
v.
Luraco, Inc
Case No. SACV 16-00487-AG (KESx)
United States District Court, C.D. California
Filed October 12, 2016
Counsel
John Shaeffer, Jeffrey H. Grant, Fox Rothschild LLP, Los Angeles, CA, Tom H. Dao, Klein O'Neill and Singh LLP, Irvine, CA, for Ecojet, Inc.Edgar L. Carter, John S. Torkelson, Carter Scholer Arnett Hamada and Mockler PLLC, Dallas, TX, Kent J. Schmidt, Dorsey and Whitney LLP, Costa Mesa, CA, Matthew C. Lapple, Lapple Ubell IP Law LLP, Irvine, CA, Mitchell J. Freedman, Paul K. Schrieffer, PK Schrieffer LLP, West Covina, CA, Warren V. Norred, Pro Hac Vice, Norred Law PLLC, Arlington, TX, for Luraco, Inc.
Scott, Karen E., United States Magistrate Judge
Ecojet's motion to compel production and obtain discovery sanctions (Dkt. 36); Luraco's discovery-related motions (Dkt. 50, 51)
I. PROCEEDINGS
*1 Plaintiff Ecojet filed its Complaint on March 15, 2016, alleging that Defendant Luraco is infringing U.S. Patent No. RE45,844 (“Patent-in-Suit”). (Dkt. 1.) The Patent-in-Suit is for a water jet pump for a “whirlpool foot bath for a pedicure chair” that can be “easily cleaned and sanitized.” (Dkt. 39 at 2.) Defendant's defenses are that: (a) Plaintiff's patent is invalid due to prior art, and (b) Defendant is not infringing Plaintiff's patent's claims. (Dkt. 42 at 4.)
The parties conducted their Rule 26 conference of counsel on June 3, 2016. (Dkt. 22.) Per their Joint Report, the parties exchanged Rule 26(a)(1)(A) initial disclosures on June 9, 2016. (Id. at 3.) The parties also stated that they “do not believe that discovery should be conducted in phases or otherwise limited.” (Id.)
Also on June 9, Plaintiff served its First Set of Requests for Production of Documents (“RFPs”) on Defendant. (Dkt. 36-2 at 5-15.) After receiving initial responses (id. at 17-41) and amended responses (id. at 43-73), on September 13, 2016, Plaintiff filed a motion (“Motion to Compel” at Dkt. 36) to (1) compel Defendant to produce responsive documents and (2) obtain $4,150 in sanctions/expenses pursuant to FRCP 37(a)(5).
On September 14, 2016, the Court ordered the parties to meet and confer over each RFP at issue. (Dkt. 38.) The Court further instructed that if Defendant was withholding relevant, responsive documents on the basis of privilege, then Defendant should serve a privilege log on or before September 23, 2016. (Id.)
On September 26, 2016, Defendant opposed Plaintiff's motion. (“Oppo.” at Dkt. 42.) Defendant attached second amended responses that it served on September 26, 2016. (Dkt. 41-2.) Defendant also produced 706 pages of documents. (Dkt. 46 at 3-4 [summarizing Defendant's production].) Defendant promised additional production during the first week of October. (Dkt. 42 at 5.)
On October 3, 2016, Plaintiff filed its Reply. (Dkt. 46.) Plaintiff pointed out that Defendant failed to serve a privilege log or request an extension of time in which to do so. (Id. at 4.) Plaintiff asserts that while Defendant's second amended responses resolved the dispute over RFPs 9 and 10 (id. at 6, n.1), the 30 other RFPs listed in the motion remain in dispute.
On October 9, 2016, Defendant filed a request to be excused from its inadvertently late compliance with the court-ordered privilege log deadline. (Dkt. 50.) Defendant attached its privilege log which identifies only documents post-dating the start of this litigation. (Dkt. 50-1.) Defendant also filed a 2-page motion seeking to bifurcate discovery between technical/merits issues and damages. (“Bifurcation Motion” at Dkt. 51.) The arguments raised are substantially identical to those raised in Defendant's opposition to the Motion to Compel. (Cf., Dkt. 42.)
On October 11, 2016, the Court conducted a hearing on the Motion to Compel. The Court indicated that it would also reach the Bifurcation Motion because the briefing did not add anything new to the objections and arguments that had already been raised by Defendant as a basis to oppose the RFPs at issue in the Motion to Compel.
II. General Arguments
*2 Regarding the Motion to Compel, the parties raise several arguments that apply to more than one of the RFPs in dispute. For efficiency, the Court addresses them here before discussing each RFP.
A. Protective Order
Judge Guilford has adopted Standing Patent Rules (“S.P.R.”). Per S.P.R. 1.5, “Absent a Court order, discovery cannot be withheld on the basis of confidentiality. The Court's Standing Protective Order shall govern discovery unless the Court enters a different protective order. The Standing Protective Order can be found on Judge Guilford's ‘Frequently Asked Questions' webpage, available on the ‘Judges' Procedures and Schedules' portion of the Central District of California's website.’'
Judge Guilford's Standing Protective Order permits the parties to produce discovery materials designated “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL –ATTORNEY EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE.”
On September 15, 2016, the Court repeated these rules, advising the parties that “No party shall claim that relevant, responsive documents are being withheld based on the lack of a protective order governing the production of documents designated confidential. If the parties would prefer not to rely on Judge Guilford's standing protective order being enforceable ... then the parties may promptly modify Judge Guilford's standing protective order to fit this case and submit it via stipulation to be approved by the Magistrate Judge.” (Dkt. 38.)
To date, neither party has submitted a proposed alternative to Judge Guilford's Standing Protective Order. Based on these rules, any objection based on the purported lack of a protective order is OVERRULED.
B. Motive/Improper Purpose
Defendant argues that it should be excused from producing documents because “Ecojet seeks documents for an improper purpose in order to obtain a competitive advantage.” (Dkt. 42 at 3.) Defendant has failed to demonstrate that producing appropriate documents marked “HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY” would be insufficient to protect its competitive interests. Moreover, parties are entitled to discovery of materials that are relevant to the claims and defenses and proportional to the needs of the case, without any inquiry into their subjective motive. FRCP 26(b)(1). Any objection based on purportedly improper motive is OVERRULED.
C. Undue Burden/Not Proportional to the Needs of the Case
Defendant objected to many of the disputed RFPs on the grounds that responding would impose an undue burden disproportional to the needs of the case. In support of its undue burden argument, Defendant explains, “Luraco is a small company with limited resources ....” (Dkt. 42 at 3.) This kind of generalized statement is insufficient to sustain Defendant's undue burden objections. Defendant may not withhold non-privileged, relevant documents responsive to the disputed RFPs on the grounds that producing them would impose an undue burden; that objection is OVERRULED.
D. Bifurcated Discovery
Defendant argues that “the documents sought include extensive financial documents that are not relevant to the threshold issue [of] infringement and should be deferred to a later date only after liability is established.” (Dkt. 42 at 3; see also p. 5 [“need to prioritize technical issues and to bifurcate them from financial”].)
*3 The Court declines to bifurcate discovery between technical and financial issues. First, Defendant did not propose bifurcation in the joint Rule 26 report. Instead, Defendant stated that it did “not believe that discovery should be conducted in phases or otherwise limited.” (Dkt. 22.) Second, the Court is not persuaded that bifurcation would promote the just, speedy and inexpensive determination of the case, consistent with FRCP 1. Bifurcation would likely lead to disputes over what discovery was merits-related versus damages-related and would require some witnesses to be deposed twice. For these reasons, Defendant's objections based on proposed bifurcation are OVERRULED. Defendant's motion for a protective order based on bifurcation is DENIED. (Dkt. 51)
E. Mootness.
Defendant argues that it “is requesting a re-examination of the United States Patent No. RE45,844, and, if successful, much if not all of the claims asserted here—as well as the discovery sought through the Motion—will be moot.” (Dkt. 42 at 3.)
It is always within the case management discretion of the District Judge to stay an action. If it wishes to do so, Defendant may move the District Judge to stay this entire case, including all discovery, based on the strength of its arguments concerning the likely outcome of re-examination. Until such time as a stay is granted, however, the fact that Defendant has requested a re-examination has no relevance to the parties' discovery obligations. Defendant's objections on this ground are OVERRULED.
F. Place and Manner of Production.
Many of Defendant's supplemental responses offer to make discoverable items available for inspection in Texas. Defendant has not supplied any persuasive reason to impose this restriction, and it was untimely interposed in supplemental responses. For those items that Defendant is ordered to produce, Defendant shall produce copies or make the items available at a location in the Central District of California. For e-discovery, the parties should follow Judge Guilford's standing e-discovery rules.
G. Relevant Temporal Scope.
In its second supplemental responses to the RFPs, Defendants stated, “In responding to the Requests that fail to specify a time period, unless otherwise specified in its response, Luraco will interpret that Request as applying only to the present day.” (Dkt. 41-2 at 6.) As to other RFPs, Defendant limited its response to “the relevant temporal scope of this matter-- September 25, 2012 to present.”
Limiting the RFPs to records dating from September 25, 2012 to present appears consistent with FRCP 26(b)(1), and objections on that basis are SUSTAINED. Limiting the RFPs to “the present day” is not consistent with FRCP 26(b)(1), and Defendant's general objection is OVERRULED.
H. Relevant Geographic Scope.
Defendant stated that it limited its search for responsive documents to “the United States market.” (Dkt. 41-2 at 6.) Again, this seems consistent with FRCP 26(b)(1), and objections on that basis are SUSTAINED.
I. Rule 34(b)(2)(C) - Privilege.
An objection to an RFP must “state whether any responsive materials are being withheld on the basis of that objection.” FRCP 34(b)(2)(C). There are several ways to accomplish this. As to privilege objections, a party withholding relevant, responsive documents on the basis of privilege is required to identify them via a privilege log. FRCP 26(b)(5). Parties often stipulate that neither side needs to log post-litigation documents reflecting attorney-client communications or attorney work product arising out of litigation, because such materials are generally voluminous and there is no serious dispute over their privileged status. Pre-litigation relevant, responsive privileged documents that do not fall within any of the provisions of the Standing Patent Rules, however, should be identified on a log if they are withheld.
*4 Defendant produced a privilege log on October 3, 2016. (Dkt. 50, ¶ 5.) The log identifies only documents that post-date the filing of this lawsuit. (Dkt. 50-1.) The Court GRANTS Defendant's motion to be excused for missing the court-ordered deadline by a few days due to inadvertence, and the privileges asserted in the log are not waived. (Dkt. 50.)
At the hearing, counsel for Defendant indicated that the log may not be complete, because privileged patent prosecution documents relevant to the instant dispute may exist. Defendant shall serve an updated, complete privilege log on or before October 17, 2016. For pre-litigation documents, the log shall separately identify each relevant document withheld on the basis of privilege and provide sufficient information to justify the claim of privilege. The Court does not reach whether or not any privilege claim as to pre-litigation documents not presently logged has been waived.
If a relevant, responsive document does not appear on Defendant's updated log, then it may not be withheld from production on the basis of a privilege objection, with this one exception: the Standing Patent Rules have provisions governing the timing of expert disclosures and discovery related to any “advice of counsel” defense. Defendant was not obligated to produce such materials earlier in response to Plaintiff's RFPs, and Defendant has not waived any privileges attached to such materials by failing to log them prior to the time set for their production by the S.P.R.s.
J. Rule 34(b)(2)(C) - Vagueness.
Defendant raised a number of vagueness objections. For some, Defendant explained how it was interpreting the vague term and for what records its custodians would search. (See Dkt. 41-2 at 4, explaining how Defendant interpreted the defined terms “ACCUSED INSTRUMENTALITIES” and others.) For those terms so explained, Defendant's vagueness objections are SUSTAINED and the RFPs are limited in the manner stated in Defendant's interpretation.
For other RFPs, however, Defendant objected to terms with plain and ordinary meanings (like research, technical drawings, technical specifications, design, etc.). When Defendant made those objections, Defendant failed to explain how it interpreted those terms, or for what it instructed its custodians to search. Such objections are OVERRULED.
K. Rule 34(b)(2)(B) – Identifying Responsive Documents.
Parties responding to RFPs must state in their written response if inspection will be permitted (or copies of documents produced). Here, Defendant stated in response to some RFPs that notwithstanding its objections, it would produce documents. Defendant then stated in general objections (which were incorporated into all of its RFP responses), “By stating that it will produce documents or provide information in response to any particular topic, Luraco makes no representation that any such documents or information exist.” (Dkt. 41-2 at 3.)
This general objection is inconsistent with Rule 34 and it is OVERRULED. Defendant shall not include this general objection in future discovery responses. Within three (3) weeks of this order, Defendant will PROVIDE SUPPLEMENTAL WRITTEN RESPONSES that state, to the best of Defendant's knowledge as of the date of the response and after conducting a reasonable search consistent with its discovery obligations, whether relevant documents responsive to each RFP exist or whether they do not exist. Where relevant, responsive documents exist, Defendant shall indicate whether they have already been produced or PRODUCE THEM WITH ITS SUPPLEMENTAL WRITTEN RESPONSES. When the Court indicates below concerning particular RFPs that Defendant shall provide a Supplemental Response, the Court is referring to the directives in this Paragraph (K).
III. DISPUTED RFPs
REQUEST FOR PRODUCTION NO. 1:
*5 Two samples of each [of] the ACCUSED INSTRUMENTALITIES.[1]
Defendant initially objected that this RFP seeks information “equally available” to Plaintiff. Defendant then offered to make the referenced items available for inspection in Texas, but asserted no obligation “to produce them for indefinite possession by its competitor.”
Plaintiff's motion explains, “Plaintiff of course purchased what it believes to genuine copies of the accused product prior to bringing suit. However, in Request Number 1, Plaintiff demands Defendant to produce genuine copies so that there is no dispute regarding the pedigree of the device that Plaintiff will spend tens of thousands of dollars inspecting for the purposes of infringement and later learn that the device is not genuine. Indeed, in Plaintiff's August 22, 2016, meet and confer letter, Plaintiff offered to reimburse Defendant for any expense associated with providing the sample.” (Dkt. 36 at 12.)
Defendant responded that it “has provided pricing for the products in its Exhibit 1, to alleviate any authenticity concerns.” (Dkt. 41-2 at 6.) The parties confirmed at the hearing that Plaintiff is willing and able to purchase the requested samples from Defendant, and will do so.
For these reasons, no supplemental response to RFP 1 is required.
REQUEST FOR PRODUCTION NO. 2:
All DOCUMENTS, including COMMUNICATIONS, that CONCERN the PATENT-IN-SUIT.
Defendant objected but offered to produce relevant documents dating from September 25, 2012 to present. Defendant produced some documents with its second amended response as Exhibit 2. (Dkt. 41-2 at 7.)
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 4:
All DOCUMENTS CONCERNING the structure, design, and/or operation of the ACCUSED INSTRUMENTALITIES.
Defendant agreed to produce documents “sufficient to show the structure, design, and/or operation of any aspects or elements of an Accused Instrumentality identified by Plaintiffs S.P.R. 2.1.3 chart upon entry of a Protective Order by the Court.” Defendant contends it produced these documents as Ex. 4 to its second supplemental responses. (Dkt. 41-2 at 8.)
A S.P.R. 2.1.3 chart identifies “specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including, for each limitation that such party contends is governed by 35 U.S.C. § 112(6)/ (f), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function, and whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality”
The parties' dispute was initially over the relevant (and thus permissible) scope of design-related discovery. Plaintiff contends that Defendant “improperly limits its response to specific designs elements. Plaintiff has identified whole products as infringing the Patent-in-Suit – not portions thereof. In this patent infringement action, [Defendant] should be ordered to produce documents regarding the design of the accused products.” (Dkt. 36 at 15.)
*6 Defendant counters, “Plaintiff's claims concern only the chamber and impeller of the water jet, two small parts of the jet. However, the discovery seeks technical data for the entire jet manufactured by Defendant.” This documentation “would allow plaintiff to recreate defendant's entire water jet without further development, though the claims in question concern only a small section of part of the pump.” (Dkt. 42 at 8.)
Through its supplemental responses and at the hearing, Defendant clarified that it is no longer objecting that this discovery should be limited by the S.P.R. 2.1.3 chart, making this dispute moot.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 5:
All design files, 3D renderings, 3D printer files, computer-aided design (CAD) drawings, illustrations, design parameters, or lab notebooks related to the ACCUSED INSTRUMENTALITIES.
The dispute over this RFP mirrored the dispute over RFP 4. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 6:
All DOCUMENTS CONCERNING any and all research, development, and/or testing that resulted in development or design of the ACCUSED INSTRUMENTALITIES.
The dispute over this RFP mirrored the dispute over RFP 4. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 7:
All DOCUMENTS CONCERNING technical drawings and technical specifications corresponding to the ACCUSED INSTRUMENTALITIES.
The dispute over this RFP mirrored the dispute over RFP 4. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 8:
DOCUMENTS sufficient to identify articles, advertising and marketing of the ACCUSED INSTRUMENTALITIES including those concerning market approval, benefits, advantages, and superiority of the ACCUSED INSTRUMENTALITIES and features thereof.
Defendant shall provide a Supplemental Response. Defendant may produce exemplars of responsive advertising rather than copies of the same advertising run in different publications, but where it chooses to do so, it shall specify when and where the advertising was published.
REQUEST FOR PRODUCTION NO. 11:
All DOCUMENTS CONCERNING the supply chain, sales, importation, and exportation of ACCUSED INSTRUMENTALITIES.
For this RFP, the phrase “All DOCUMENTS” shall be limited to “DOCUMENTS sufficient to identify.” The phrase “ACCUSED INSTRUMENTALITIES” shall be limited to (1) the cap, and/or (2) wholly assembled devices.
With these limitations, Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 12:
All DOCUMENTS CONCERNING YOUR acquisition of the ACCUSED INSTRUMENTALITIES, including purchase orders, invoices, and design or manufacturing requirements for the ACCUSED INSTRUMENTALITIES.
For this RFP, the phrase “All DOCUMENTS” shall be limited to “DOCUMENTS sufficient to identify.” The phrase “ACCUSED INSTRUMENTALITIES” shall be limited to (1) the cap, and/or (2) wholly assembled devices.
With these limitations, Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 13:
All COMMUNICATION with any third-parties from whom YOU acquired or purchased ACCUSED INSTRUMENTALITIES, including but not limited COMMUNICATIONS CONCERNING the design or manufacturing requirements of the ACCUSED INSTRUMENTALITIES.
For this RFP, the phrase “ACCUSED INSTRUMENTALITIES” shall be limited to (1) the cap, and/or (2) wholly assembled devices.
With this limitation, Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 14:
*7 All advertisements or COMMUNICATIONS with distributors and potential distributors CONCERNING the ACCUSED INSTRUMENTALITIES.
Defendant shall provide a Supplemental Response. Defendant may produce exemplars of responsive advertising rather than copies of the same advertising run in different publications, but where it chooses to do so, it shall specify when and where the advertising was published.
REQUEST FOR PRODUCTION NO. 16:
All DOCUMENTS CONCERNING meeting minutes, notes, documents, and communications related to all meetings, whether in person and/or telephonic, held by YOUR board of directors, officers, shareholders, distributors, employees, and/or investors concerning the ACCUSED INSTRUMENTALITIES.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 17:
All DOCUMENTS concerning revenue generated from the sale or use of the ACCUSED INSTRUMENTALITIES.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 18:
All DOCUMENTS concerning anticipated revenue and sales projections for the ACCUSED INSTRUMENTALITIES.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 19:
All DOCUMENTS relating to sales data for the ACCUSED INSTRUMENTALITIES, including costs, pricing, incentives, rebates, and exchange accounts.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 20:
All DOCUMENTS relating to the costs associated with the ACCUSED INSTRUMENTALITIES, including the costs of goods, and any and all costs associated with selling the ACCUSED INSTRUMENTALITIES.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 21:
All DOCUMENTS CONCERNING budget and business plans for the ACCUSED INSTRUMENTALITIES.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 22:
All DOCUMENTS CONCERNING the market for water jet pumps and the actual and/or projected share for the ACCUSED INSTRUMENTALITIES.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 23:
DOCUMENTS and things sufficient to identify the sales price, retail price, and wholesale price of the ACCUSED INSTRUMENTALITIES.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 24:
DOCUMENTS CONCERNING the commercial success of the ACCUSED INSTRUMENTALITIES, including market approval, consumer approval, competitor praise, awards, articles, and all other indications of the commercial success of the ACCUSED INSTRUMENTALITIES.
As explained above, the Court declines to bifurcate discovery. Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 25:
DOCUMENTS sufficient to show your organizational structure and corporate structure, including parent corporations, subsidiaries, and affiliates.
*8 Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 26:
DOCUMENTS sufficient to identify the hierarchy of YOUR employees, including the identity of any employee involved in the marketing, sales, design, engineering, manufacturing, research, development, importation, exportation, and commercialization of the ACCUSED INSTRUMENTALITIES, including but not limited to the reporting relationships of officers, directors, managers, research scientists, engineers, designers, employees, and agents of YOU whose duties and/or responsibilities relate in any way to the ACCUSED INSTRUMENTALITIES.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 27:
All DOCUMENTS CONCERNING any testing, analysis, deconstruction, engineering, or investigation that YOU conducted into ECOJET UNIVERSAL MAGNETIC JET.[2]
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 29:
All DOCUMENTS CONCERNING the date that YOU first gained knowledge of the PATENT-IN-SUIT, and the circumstances under which YOU first gained knowledge of the PATENT-IN-SUIT, including, but not limited to the identity of the person(s) who gained the knowledge, the circumstances under which YOU gained the knowledge and any actions taken by YOU as a result of YOUR becoming aware of the PATENT-IN-SUIT.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 30:
All DOCUMENTS CONCERNING YOUR knowledge or awareness of the PATENT-IN-SUIT.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 31:
DOCUMENTS sufficient to identify the first instance in which you learned of the existence of the PATENT-IN-SUIT and/or the application giving rise to the PATENT-IN-SUIT.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 32:
DOCUMENTS sufficient to show any licenses, cross-licenses, and/or agreements CONCERNING parts or equipment, including but not limited to water jet pump for use in spa or massage chairs.
The “parts or equipment” shall be limited to those relevant to the devices at issue. With this limitation, Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 33:
DOCUMENTS sufficient to show YOUR document retention policies, including the author(s) of such policy, and the date in which it was implemented.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 34:
All DOCUMENTS CONCERNING any testing, analysis, deconstruction, engineering, or investigation that YOU conducted into ECOJET UNIVERSAL MAGNETIC JET.
Defendant shall provide a Supplemental Response.
REQUEST FOR PRODUCTION NO. 35:
All COMMUNICATION with third-parties concerning this lawsuit.
Defendant shall provide a Supplemental Response.
IV. RECOVERY OF EXPENSES
If the Court grants a motion to compel discovery, or if the discovery requested is provided after the motion is filed, then the Court “must, after giving an opportunity to be heard, require the party ... whose conduct necessitated the motion, the party or attorney advising that conduct, or both to pay the movant's reasonable expenses incurred in making the motion, including attorney's fees.” FRCP 37(a)(5). The Court, however, must not order this payment if “(i) the movant filed the motion before attempting in good faith to obtain the disclosure or discovery without court action” or “(ii) the opposing party's nondisclosure, response, or objection was substantially justified.” Id.
*9 Here, the Court has largely GRANTED Plaintiff's motion to compel. The Court finds that many of the objections proffered by Defendant over time as reasons to withhold discovery (e.g., a proposal to bifurcate discovery that was contrary to the parties' joint Rule 26 report, the lack of a protective order, willingness to produce documents only in Texas, vagueness or overbreadth objections to RFPs that could have been easily modified through a robust “meet and confer” effort) lacked substantial justification. The facts remain that despite serving this discovery in June, Plaintiff had not received any documents when it filed the Motion to Compel on September 13, 2016. Plaintiff had attempted in good faith to obtain responses, but Defendant's first supplemental responses largely withdrew prior promises to produce and attempted to impose new conditions on production, such as the limitation that documents be provided for inspection only in Texas.
Plaintiff requests $4,150, which represents 10 hours of its counsel Mr. Grant's time at a rate of $415/hour. Ten hours does not exceed a reasonable amount of time to have spent on the Motion to Compel given that (1) more than 30 RFPs were in dispute, (2) Plaintiff filed moving papers and a reply, and (3) preparing for, travelling to and attending the 1-hour hearing would represent a substantial portion of this ten-hour request. Mr. Grant's rate is reasonable for an intellectual property litigator in the greater Los Angeles legal market who has been admitted to the California Bar more than ten years ago.
For these reasons, consistent with FRCP 37(a)(5)(A) and (C), the Court orders Defendant Luraco to pay Plaintiff's reasonable expenses incurred in making the Motion to Compel in the amount of $4,150.00.
IT IS SO ORDERED.
Footnotes
The term “ACCUSED INSTRUMENTALITIES” was defined to mean product, process, or technique that practices the invention claimed in the Patent-in-Suit and includes, without limitation, the water jet pumps identified by YOU on YOUR website as “Magna-JET,” “Dura-JET III,” and “Dura-JET 4,” “Magna-JET with built in LED Lights” and “Dura-JET III with built in LED Lights.” (Dkt. 36-2 at 6.)
The term “ECOJET UNIVERSAL MAGNETIC JET” was defined to mean the product marketed, distributed, and/or sold by PLAINTIFF under the title Universal Magnetic Jet. (Dkt. 36-2 at 7.)