Steifel Lab., Inc. v. Brookstone Pharm., LLC
Steifel Lab., Inc. v. Brookstone Pharm., LLC
2011 WL 13136939 (N.D. Ga. 2011)
June 17, 2011
Fisher, Michael E., Special Master
Summary
The court ordered the defendant to search for and produce any and all documents related to the dispute, including emails, training materials, policies, procedures, and guidelines. The court also ordered the defendant to admit or deny certain statements in the Plaintiff's Request for Admissions. This ruling is important as it ensures that the defendant is not withholding any relevant information and allows the plaintiff to access any information which could be used to prove their case.
Additional Decisions
In re: Stiefel Laboratories Inc.
v.
Brookstone Pharmaceuticals, L.L.C
v.
Brookstone Pharmaceuticals, L.L.C
Civil Action No. 1:08-CV-03773-CAP
United States District Court, N.D. Georgia, Atlanta Division, Atlanta Division
Signed
June 17, 2011
Filed June 17, 2011
Counsel
Joseph A. Bourbois, Katharyn A. Grant, Saul Perloff, Norton Rose Fulbright, Dallas, TX, Bradley S. Wolff, Swift Currie McGhee & Hiers, Atlanta, GA, for Stiefel Laboratories Inc.L. Matt Wilson, The Wilson Law Firm, P.C., Atlanta, GA, for Brookstone Pharmaceuticals, L.L.C.
Fisher, Michael E., Special Master
Report, Order and Recommendations of the Special Master Regarding Cross Motions to Compel Discovery And Attendant Matters
*1 This matter was referred to the Special Master by Order of Hon. Charles A. Pannell, Jr. dated February 23, 2011. Pending at the time of the Court's Order were cross motions to compel regarding numerous discovery disputes between the parties. After the Order, counsel for both parties continued to discuss and supplement the unsettled items presented by the motions thus reducing those for which rulings were needed. In light of that progress, the Special Master held an informal hearing where all outstanding discovery was addressed. Some matters were mediated and apparently solved by agreement, but not all. Additional electronic searches stimulated new debate and disagreement concerning the completeness and appropriateness of respective discovery responses. Subsequent to that session and before the Special Master had ruled and reported, correspondence between counsel made it clear to the Special Master that a formal hearing was needed and thus one was ordered.
A formal, reported hearing was held from 9:30 a.m. to 5:30 pm, June 1, 2011 at which time the Special Master heard arguments based on previously submitted evidence as supplemented by new evidence. One in-person witness examination was conducted and another presented by sworn affidavit. The Plaintiff introduced 19 Exhibits and the Defendant 3. The Special Master was also provided with all correspondence between counsel regarding the discovery dispute and limited written position statements were received from both parties. The Special Master relies on all documents arguments and testimony in rendering the following decisions, orders and in making this report to the Court.
Defendant's Motion to Compel Discovery
At the time of the hearing the Defendant's Motion to Compel was narrowed to the following numbered Requests for Admission made pursuant to Rule 36.
Defendant's Request No.9
Plaintiff's Objection/ Response
Ruling:
1. The SM agrees with the Defendant that a party my use an admission to establish a fact contained within a document rather than introduce the whole document. To the extent an opposing party believes the fact must be understood in context it may use the full document accordingly. The Special Master has considered the argument that an admission of Request No. 9 “gives the impression that the point cited is the most important point in [the] lengthy document,” but he does not find any basis to support such an objection. It is a common occurrence at trial for counsel to refer only to specific items in a lengthy document and to the extent one feels strategically prejudiced of fears the jury confused, remedies of advocacy are available.
*2 2. The Plaintiff's objections are over-ruled and Plaintiff is ordered to admit the statement proffered by Defendant. There appears no basis in the record upon which the words of the document may legitimately be denied, particularly in light of the Plaintiff's recognition that the document “speaks for itself.” There is no inherent unfairness in a request to admit the contents of a document though the Defendant's ability to use the admission at trial may well be reviewed for relevance or the propriety of how such admission may be phrased. The Special Master notes that the Plaintiff is not asked to admit whether the items in Exhibit A are true or correct, but only that they are contained in the document referenced.
3. The Plaintiff argues the document at issue is a patent application not a patent. The Special Master finds this to be a difference without a distinction as to the propriety of a Request for Admission under Rule 36. There may in fact be no patent for benzyl alcohol as counsel states, but Request No. 9 fairly describes the document as an application. Feared inferences are not a proper basis for objections to production.
Guidance Concerning Plaintiff's General Objections to Requests for Admission
4. Plaintiff argues Requests for Admissions permitted by Rule 36 are not a true discovery device, but rather “a special tool” more limited in permissible breadth. The Special Master agrees in part and disagrees in part. Rule 36 is contained within the Rules section denoted Deposition and Discovery. Admissions of facts not reasonably related to the matters being litigated and particularly to a party's preparation to prosecute or defend claims, are improper. But any fact, so related on its face, which is capable of being admitted, must be. Admissions limit the efforts of the Court, at least one party and potentially all parties in establishing uncontested matters. One may argue Requests for Admission are not pure discovery, but the result is the same. They create a simplified means to establish facts, or the application of law to facts favored by the Court.
5. The collective arguments of Plaintiff against Requests such as Defendant's No.9 suggest an unfairness the Special Master does not find. Such admissions are a common strategic method of prosecuting and/or defending. Rule 37 appears to promote such methods. The Special Master agrees with the Defendant's position that it has the right to determine before trial what position the Plaintiff may later disclose on a particular point and to do so through the “shortcut” of an admission rather than protracted discovery. The Plaintiff made a similar argument in support of its Requests for Admission.
6. The Special Master agrees with the Defendant that a party my use an admission to establish a fact contained within a document rather than introduce the whole document. To the extent an opposing party believes the fact must be understood in context it may use the full document accordingly. The Special Master has considered the argument that an admission of Request No. 9 “gives the impression that the point cited is the most important point in [the] lengthy document,” but does not find any basis to support such an objection. It is a common occurrence at trial for counsel to refer only to specific items in a lengthy document and to the extent one feels strategically prejudiced or fears confused, remedies of advocacy are available.
7. Plaintiff argues the document speaks for itself and witness can be examined as to the document. The Defendant does not seek to authenticate the document, but rather the fact contained in the document. Whether such fact can be used at trial will depend on a later ruling by the Court on a motion or objection. In discovery, the only issue is whether the Request is permitted by the Rule and whether the response is appropriate.
Concerning Defendant's Requests 54 thru 60
*3 Through these numbered Requests to Produce, the Defendant seeks to establish that the Plaintiff has no right to prohibit the Defendant from using seven identified ingredients. The Plaintiffs several objections are over-ruled. Each question seeks to establish a fact by applying law to fact. As discussed at the hearing, the Defendant wishes to establish that the
Plaintiff does not have exclusive rights to such ingredients or better said, that it is not in a position to prohibit the Defendants use of such ingredients in making its products. Whether the Plaintiff has made the claim or not, the Defendant has the right to know in advance of trial whether or not the Plaintiff may in some way later suggest or claim it has superior rights to ingredients. The ingredients named are fundamental to the jury's understanding of the case and are therefore relevant enough to render the specific requests appropriate.
The Plaintiff may caveat any admission with a reasonable explanation. Taken to a logical conclusion, were the Plaintiff to prevail on its Lanham Act claims and prayer for equitable relief, it would then have a legal right to prevent the Defendant from using the certain ingredients in a certain way. The Defendant seeks to confirm that the Plaintiff does not claim a similar right under present circumstances.
Whether or not the statements (admissions) will be relevant and admissible at trial will be for the Court to weigh and decide at a later time.
Concerning Defendant's Requests 61 thru 74
Defendant's Request No. 61
Ruling: The Defendant's argument in support of its Request is accepted. Plaintiff's objections are over-ruled. The phrases to which objections have been made are to be given a common meaning (within the context of this litigation) and then a response shall be required. The Plaintiff may elaborate on the meaning given, but the Defendant is entitled through a Request for Admission to determine in advance of trial whether the Plaintiff contends or will contend that it has the rights in question as against this Defendant.
Defendant's Request No. 62
Ruling: Plaintiff appears to have already made an admission, but for guidance on all such Requests the terms are to be given common meaning. Plaintiff may caveat and define the limits of its response, but may not stand on objections to phrases for which there is a common meaning in the context of the subject matters at issue.
Defendant's Request No. 63
Ruling: Plaintiff's objections are over-ruled. Objections as to terms are to be guided by the statement above. The existence or absence of a right (meaning a legal right) is a fact or at least the application of law to fact. Plaintiff, for instance, may have a contractual right or a right by virtue of equitable relief to prevent a certain competitor from communicating with databases. Though it is not likely and though the Special Master questions the practical need for the admission requested, it is permissible under Rule 36.
As to Defendant's Requests 64, 65, 66, 67, 68
*4 Ruling: The Special Master does not find the several terms to which Plaintiff objects vague or ambiguous in the context of the subject matter at issue.
Defendant's Request Nos. 66, 67
Ruling: Although the Special Master questions the practical need for the Defendant to acquire such admission, the existence or absence of a right is a fact or an application of law to fact and therefore is an appropriate subject for admission. Plaintiff' objections are over-ruled and Plaintiff is directed to respond.
Defendant's Request No. 69
Ruling: Plaintiff shall not be required to respond to the request made as the statement encompasses so much of the ultimate issues to be tried that it is in effect vague and ambiguous and not fairly capable of an admission or denial.
Defendant's Request Nos. 70, 71, 72, 73 and 74
Ruling and Comments: Plaintiff's objections are over-ruled and the Plaintiff is directed to admit or deny the statements made. The Special Master notes the duplicity of this request to No. 71, but sees enough difference to allow it to stand alone. Again, the Special Master is uncertain as to the practical need of the Defendant to have these admissions made, but the preparation of a lawyer's case is left to him where the discovery sought is proper. Plaintiff is directed to respond to Requests 70, 71, 72, 73 and 74, may not stand on its objections, but may caveat its responses as necessary to avoid confusion or misuse of the response.
Plaintiff's Motion to Compel Discovery
Plaintiff's First Request for Production
General Discussion and Request for Sanction
It is apparent to the Special Master and the record, inclusive of correspondence, reflects that the Defendant has made substantial efforts to comply with the Plaintiff's First Requests for the Production of Documents. Substantial portions of the information sought were expected to be stored electronically and Defendant conducted several searches of its electronic data. As substantial as the efforts may have been, however, the Special Master finds the production falls short of that required by the rules. The Defendant's inability to conduct thorough searches which produced all available documents subject to the various requests has clearly caused the Plaintiff substantial trouble and expense in (a) repeatedly contesting the production in general and specific terms (b) assisting the Defendant with its compliance and (c) having in essence to pursue some discovery multiple times. The record clearly demonstrates each new search at the Plaintiff's insistence has produced new information right up to the time of the hearing and then beyond.
The Special Master notes the following and troubling comments from Aruna Srinivasan's Supplemental Affidavit (Some citations are omitted):
■ Plaintiff's continuing complaints about the Defendants data searches are “baseless.”
■ The vast majority of Ascella's information is electronic
*5 ■ Even after litigation (pre-dating this litigation) commenced electronic data was kept with no back-up.
■ Installation of a new central server “solved all... retrieval problems.
■ “I supervised the migration from employee computers onto the central server... I also did the same for Ascella's old hard drive.”
■ “As custodian of records, I have directed and coordinated all document production...”
■ “...production is finalized and complete (emphasis added) and there are further responsive documents to be produced at this time.”
The Special Master notes the following sworn testimony*from Srinivasan:
*Transcript references are from the draft transcript and may be four or five pages remote from the final version.)
• “I oversee...anything in regards to information systems, IT. T-116
• “[I have n]o specific training [in both the limitations and capabilities of the Microsoft internet OS search function.]” T-146
• “I'm not a techo person.” T-139
• As to whether was deleted at Arctic after it was downloaded: “My understanding, sir, is it's pushed into the server... I don't know how it works on the back end.” T-137
• “There is no written document retention policy at Acella. T-116
• (First employed October or November 2009, but was a consultant for the Defendant before then.) T-(Cite to be supplied)
• Defendant used an outside e-mail system (“Arctic Design”) at the time of the migration. They are a “web mail hosting company.” Arctic hosted the Defendant's email server and domain name. T-(Cite to be supplied)
• “Unfortunately I was not successful as successful in my attempts to migrate emails from Acella's outsourced mail server to its new central server... data from the outsourced mail server failed to import...and were corrupted and irretrievably lost.
• Was not aware whether Arctic backed up its servers. T-127
• There will sometimes be a loss of data during a migration from one system to another. T-128
• Ordinarily it is prudent for a company to backup all of its data before it does a migration. T-128
• In the Defendant's migration “emails were irretrievably corrupted and lost”... T-(Cite to be supplied)
• Defendant never contacted Arctic to alert them before the migration and ask that emails be backed up. T-129
• “...the PST files were corrupted...” T-130
The Special Master does not find, and the Plaintiff is not suggesting, that the Defendant has intentionally conducted insufficient searches. The evidence does, however, demonstrate numerous shortcomings and related problems with the Defendant's production for which the Defendant must bear responsibility. On several occasions Defendant represented to Plaintiff that it had produced all covered documents in its possession when in fact it had not. Hence, it is concluded that the data searches were inadequate and that the Defendant was repeatedly put on notice that they were inadequate.
Plaintiff appropriately notes that it is only because its counsel is counsel in other cases involving this Defendant that it knew of the defect in Defendant's data searching. Plaintiff has been justified not accepting representations that all available documents have been produced. The fortuitous circumstance described above has justifiably led Plaintiff to reject new such representations as demonstrated in recent correspondence between counsel.
*6 Defendant's responses to notice of inadequate data search were less than complete and thus wrongfully left the Plaintiff in the lurch of having the Defendant represent all documents have been produced while having proof to the contrary. (See next paragraph.) This circumstance generated continued discovery efforts with attendant fees and expenses for Plaintiff. The Defendant's arguments against its accountability simply fail. A party may not underperform production and its duty to the requesting party.
Of major concern are the several instances in which the Plaintiff “produced” example documents (alternately referred to as “model” documents) to Defendant demonstrating documents known to exist, but which were not produced. The gravity of Defendant's subsequent failure to produce is demonstrated. Ms. Aruna Srinivasan, Defendant's Senior Operations and Information Systems Manager and Defendant's custodian of records, admitted under sworn examination that several of these documents should have been retrieved and if not, she had no explanation why not. T-(Cite to be supplied)
Not long after the filing of this action, Defendant attempted what was referred to at the hearing and otherwise as a “migration” of its data. The use of that term has suggested at least to the Special Master and apparently to the Plaintiff, that data was being retrieved from the Defendant's outside third party web server, Artic. Data was lost in that process. Counsel for Defendant is now arguing to the contrary, but his client's testimony is what it is.
In the final analysis, however, it does not matter from where data was being imported or just how a “migration” undertaken. A party to litigation must take affirmative steps to protect its records. The burden via the Rule is upon the party of whom production has been requested to use reasonable efforts and ‘reasonable” denotes a high standard to protect and discover one's own records, electronically stored or other. Defendant's argument that a party served with request pursuant to Rule 36 is bound to produce documents, but “not every document” (T-cite to be supplied) is both disingenuous and attempts to skirt if not obscure its failures. Defendant's electronic data searches which did not produce known documents (including documents produced by it in other cases) should have immediately put the Defendant on notice that its searching capabilities were deficient. Defendant left it to Plaintiff, however, to push the issue (repeatedly) as if there is a burden upon the requesting party beyond properly stating requests pursuant to Rule 36. There is no such a burden.
As of this writing unknown documents are considered lost and irretrievable. Such loss is attributable to negligent omissions of Defendant and aggravated by its admission that such losses are to be expected with migration. The Special Master finds the Defendant acted haphazardly and risked the loss of records which then occurred at a presently indeterminable level. Plaintiff now suffers an absence of the full production to which it is entitled. It is of no small import that the material lost dates to a time when it was likely if not most likely that emails would address issues embodied in Plaintiff's Lehman Act claim.
The success of any claim can be made by a single document or frustrated by the absence of one. Therefore, it is incumbent upon the searching party to fully and timely disclose any matter material to production after known destruction. The record shows, however, that the Plaintiff was not informed of the data loss until the day before the formal hearing through the Amended Affidavit of Aruna Srinivasan. Defendant did not alert Plaintiff before depositions as it should have. The Special master gleans from the record that Plaintiff was put to considerable and largely unnecessary expense before this critical fact was disclosed.
*7 Electronic data retrieval, especially in the context of litigation's demands for document production is both an art and a science. Where, as here, a party feels itself competent to conduct its own search, but does so negligently, it may not be heard to defend shortcomings in production by a showing of substantial effort. A remedial sanction is justified by (a) the proven and repeated inadequacy of Defendant's searches (b) Defendant's failure to protect data from loss and (c) Defendant's failure to timely alert the Plaintiff that it had in fact lost data likely covered by the Plaintiff's initial and second discovery.
Order of Sanctions:
Sanction: Depositions
Plaintiff may take further deposition testimony in the event production subsequent to an original deposition reasonably generates the need for further inquiry. All costs other than attorney's fees shall be born by Defendant. The Special Master encourages, but does not order further deposition by telephone where that method may obviate plane travel.
Sanction: Third Party Vendor for Electronic Data Search
Defendant shall, within fourteen business days from the date of this Report and Order, submit its electronically stored data to a search by a private forensic vendor which specializes in such searches and shall bear the cost of same. The vendor shall be chosen by mutual agreement of the parties. In the event such agreement is not reached within three days of this Order each party shall submit its choice of vendor to the Special master will make the selection after inquiry.
Plaintiff shall inform Defendant within three business days from the date of this report of the all critical search terms it wishes to add to the list communicated to Defendant by correspondence to Defendant's Counsel, dated May 20, 2011. Defendant shall maintain ultimate control of electronic searches, but shall make detail reports (in writing at least by email) to Plaintiff designed to inform Plaintiff as to all facets of the search. Previous searches have repeatedly been defective in material ways such that it is the intent of this order to ensure completeness of any search hereafter conducted. The involvement of a professional, disinterested third party skilled at data retrieval is ordered and mandated. It is further ordered that Plaintiff, as an aggrieved party, shall have reasonable direction and oversight of the third party vendor's efforts. Only through this method does the Special Master believe the continuing dispute as to data search thoroughness can be fairly resolved. Defendant shall, of course, be first privy to documents retrieved and given time to review for privilege.
Plaintiff requests the following stipulation which shall be incorporated into this sanction:
Vendor must make efforts to “de-duplicate” documents prior to production, and that responsive documents resulting from the search must be produced in single page TIFF format with a Ringtail load file to indicate the location of document breaks.
Sanction: Spoliation Charge: Recommendation to the Court
The Plaintiff seeks a charge on spoliation. Although it is for the Court not a Special Master to charge the jury it is the opinion of the Special Master that the record to date justifies such a charge. This recommendation is based on the totality of the record concerning the loss of documentation after service of the Complaint. The Special Master recommends a spoliation charge unless these documents are retrieved and made available to the Plaintiff. It is the Special Master's opinion that the Plaintiff has been is and will continue to be unfairly and particularly disadvantaged by not being able to examine documentation likely to relate to the gravamen of its Complaint. Documents dating from the inception of the company's competition with Plaintiff may well have recorded knowledge and intent bearing on the core of the Lanham Act claims. Unless retrieved (despite evidence that it cannot be retrieved) Plaintiff will never know if and to what extent relevant documents existed or what they recorded.
Sanction: Privilege Log
Limitation of Rulings as to Objections:
No ruling of the Special Master which broadly states that objections are over-ruled shall abridge the Defendant's right to maintain its several objections based in privilege or attorney work product. At the specific request of either party the Special Master will examine any or all documents listed on a log and make a determination as to privilege.
Note as to Defendant's objections to production based on the asset purchase and sale agreement
The Special Master has recently received a copy of the Asset Purchase Agrement dated December 21, 2010 and referenced by both parties at various times. Defendant's objections to production based on the sale of Brevoxyl rights and the allegation that recoverable damages ceased on the date of the agreement raise legal issues which shall be either resolved by the parties or by the Court. The matter is to be separately briefed for consideration by the Special Master who is concerned with postponing a decision on this question until the Pretrial Conference as permitted by Rule 37 (a). A ruling favorable to the Plaintiff's position, if reached, would presumably generate additional and time consuming discovery. At the same time, matters going directly to limitations on damage evidence and damages recoverable are matters for the Court. The special Master will work with the parties and Court to resolve the matter at issue if the parties are unable to do so through compromise.
As to Plaintiff's First Requests for Production Nos. 9, (10 if objection maintained) 19, 20, 21, 34 and 51.
The Special Master has reviewed all materials put at his disposal concerning the Plaintiff's effort to have documents produced and the Defendant's responses, formal and informal. The record shows that counsel conferred by conference call and in numerous correspondence. The Special Master has considered the Defendant's supplementation (and offers to supplement) or the alleged lack of it.
The Special Master finds as follows:
1. The Defendant has produced certain materials subject to objections.
2. The term “BPO Gel” is not overbroad in the context of this litigation and related discovery. Both parties fully understand what is meant be the term as it is inherent to both of their businesses. To the extent the Defendant wishes to limit its responses to the those certain BPO Gel products at issue (BPO Gel 4% and 8%) it may do so by explanation, but it may not fail to produce any covered document based on general objection as to breadth. “BPO Gel” may be a broad term, but it is not overbroad as used.
3. The several included requests for “all documents or communications” are not unduly burdensome in the context of this case.
4. Defendant may limit or continue to limit its production to those BPO Gel products at issue, again, meaning 4% and 8% topical gels. In the event the Plaintiff insists on production as to other products, Defendant is directed to list and describe (under seal if proprietary and there is arguably a need for confidentiality or privacy), the products referred to in documents is not producing. Either the Special Master or Court will rule at a later time on the discoverability of such documents. It is suggested the Defendant also predict with reasonable precision the number of documents it expects this additional production would cover and the effort it would take to produce same.
*9 5. At the hearing counsel for the Defendant questioned whether the Plaintiff had maintained its position with regard to Request No. 10. Based upon the record the Special Master incorporates No.10 into this report.
6. Defendant's objection to the breath of Plaintiff's request No. 51 is sustained and, in accord with the directive contained in Item 4 above, Defendant is specifically authorized to withhold any documentary information concerning actual or projected gross revenues for “BPO Gel” to the extent such information relates to products other than BPO 4% and 8%. The Special Master is mindful that the Plaintiff cannot make its case for damages without certain information that may be historically preserved inclusive of similar financial information about products not at issue.
Where redaction will protect the Defendant's interests it shall produce with redactions and may not rest on objections eradicated by redaction. To the extent documents contain both discoverable and non-discoverable information too extensive to redact without undue trouble and expense, the parties are to confer and attempt agreement as to a method of disclosure and protection. If the parties cannot agree, the Special Master will hear respective positions and craft a solution. The Special Master notes the wording and intent of the Court's Order of appointment which states that such order establishes a Special Master “for the purpose of managing and supervising” discovery as well as “resolving discovery disputes” through the powers of Rule 37 and Rule 53.
Plaintiff's Second Requests for Production
As to Requests Nos. 63, 64 to 67, 73, 76, 81, 82, 89, 90, 91, 93 and 94
The Special Master finds as follows:
1. Defendant objected to all of Plaintiff's Second Request for Production. Defendant stands on its objections which, as restated in correspondence, generally refuse to produce the documents described unless “justified” by Plaintiff.
2. Defendant produced no documents in its response to these several Requests even subject to objections.
3. Plaintiff is not required by Rule 38 to justify any request appropriate on its face.
Concerning Plaintiff's Request No. 63
(Text omitted)
Ruling: To the effect the Defendant has not fully responded through its supplementation (letter of May 18, 2008 and telephonic discussion between counsel) it is ordered that Defendant produce all electronic or hard copy documentation in any way referencing the development of the website at issue.
Concerning Plaintiff's Requests Nos. 64, 65, and 66
(Text omitted)
Ruling: At the time of the formal hearing, Defendant represented to the Special Master and Plaintiff a search was underway for any and all documentation related to and or containing the terms “press releases” as referenced by Plaintiff. To the extent Defendant has not fully produced such documents it is hereby ordered to do so.
Concerning Plaintiff's Requests Nos. 67 and 73
(Text omitted)
Ruling: Defendant is hereby ordered to search for and produce any and all documents which in any way, directly or indirectly, concern whether or not BPO Gel was or could be marketed as an over the counter product or as a prescription product. Any document which even discusses the matter in general terms shall be produced. The Special Master understands certain labels and possibly other physical materials have heretofore been made available to Plaintiff, but the Defendant is to respond to these requests by producing any document which can reasonably be determined to bear on the issues described above. As Counsel for Plaintiff argued in the hearing, which in the Special Master's view should not have been necessary, the requests at issue go directly to important matters at issue within the proofs of both liability and damages.
Note as to Defendant's requested limitation on of production in light of recoverable damages
*10 Defendant has included in its comments an argument that an Asset Purchase and Sale Agreement resulted in the Plaintiff's sale of its rights to Brovoxyl which in turn limits recoverable damages. The ruling on discovery stands though the Special Master defers an interpretation of the Agreement and the scope of damages to the Court.
Concerning Request No. 76
(Text omitted)
Ruling: Defendant is ordered to respond to Plaintiff's Request No. 76 after construing it broadly. The Special Master notes the request seeks any documents which might enlighten Plaintiff as to the entirety of communications between Defendant and its manufacturer regarding the FDA's proposed final monograph. This means the response shall include, but not be limited to, e-mails wherein any person even referenced the monograph to any other person where both persons were employed by the parties named.
Concerning Request No. 81
(Text omitted)
Ruling: In addition to any referenced cost documents previously produced, Defendant is ordered to produce any and all documents which would bear on the Plaintiff's claim for damages or proofs thereof.
Concerning Request No. 82
(Text omitted)
Ruling: Defendant is ordered to produce any documents which discuss, reference or bear upon Benzig Gel as it relates to BPO Gel. The Special Master is led to understand that Defendant has previously claimed its product formulation stemmed from a comparison to Benzig Gel and Plaintiff therefore is entitled to review any documentation which in any way references or discusses such product comparison, in part or in whole.
Concerning Request Nos. 85, 86, 87 and 88
(Text omitted)
Ruling: Defendant is ordered to produce any and all documentation which references, discusses, directly or indirectly:
• Whether pharmacists may substitute pharmaceutically equivalent products in every state
• Whether pharmacists know that BPO Gel is not therapeutically equivalent to Brevoxyl
• Whether pharmacists know that BPO Gel is a DESI product
• Whether pharmacists know that BPO Gel is a non-Orange Book product
Defendant is to search and produce documents giving these requests broad meaning to include, but not be limited to, such matters as it may reasonably expect an opposing expert would consider in the performance of his/her role.
Concerning Request No. 89
(Text omitted)
Ruling: Defendant's objections are over-ruled and any documents responsive to this Request shall be produced.
Concerning Request No. 90
(Text omitted)
Ruling: Defendant's objections are over-ruled. Any documents responsive to this Request shall be produced.
Concerning Request No. 91
(Text omitted)
Ruling: Defendant's objections are over-ruled. Defendant is ordered to produce any and all documents responsive to this Request.
Concerning Request No. 92
(Text omitted)
Ruling: Defendant shall re-search and produce not only any policies, procedures or guidelines as referenced in Plaintiff's Request No 92 and discussed by counsel. The terms shall be given their common meaning in the context of the Lanham Act litigation. The Special Master notes that it would be unfair to require Plaintiff to accept Defendant's representation that it had no written policies or procedures in light of previous representations as to complete production which were later found to be in error.
Note as to Request No. 92
Recent email correspondence between counsel suggests the subject of Request No. 92 is “substitution rates” market share and related terms rather than “policies, procedures and guidelines.” Numbering aside, the Special Master finds requests for any materials which would enlighten the Plaintiff as to Defendant's internal measuring or recording of the degree to which it succeeded in its admitted business plan with regard to BPO Gel 4% and 8%. Clearly, as argued by counsel for Defendant, it sought to have pharmacists substitute these products for Plaintiff's prescription Brevoxyl 4% and 8% gels respectively. Plaintiff seeks to review such internal measuring or tracking by Defendant which is a permissible use of discovery under Rules 34 and 26.
Concerning Request No. 93
*11 (Text omitted)
Ruling: Defendant shall produce any and all documentation concerning sales and promotion of the products, including training materials of any nature (including materials giving direction though not identified as “training”) regarding the products which Plaintiff claims were improperly promoted and advertised.
Concerning Request No. 94
(Text omitted)
Ruling: Defendants objections are over-ruled. All documents responsive to Request 94 shall be produced.
Plaintiff's First and Second Interrogatories
Prior to the hearing of June 1, 2011 the Special Master was informed that disputes remained as to the following Interrogatories: Plaintiff's Nos. 6, 21 and 25. Time constraints may have limited counsel, but this discovery was not addressed at the hearing. The Special Master notes that the ruling which finds the term BPO Gel is not overbroad applies to Interrogatories. If the dispute concerning this item of discovery remains, counsel are to address it in their comments to this draft. Any issue of “estoppel” is referred to the Court for consideration at the Pre-trial Conference.
Plaintiff's Request for Admissions Nos. 21 to 24
As to Request No. 21
Ruling: The Defendant's objections are sustained. Although an admission request concerning what iscontained in a writing is appropriate the same does not apply to the infinite matters not included in a given document. The Plaintiff is free to address the limits of any document or communication as to the Orange Book issue in deposition and or at trial.
As to Request No. 22
Ruling: Same as stated immediately above.
As to Request No. 23
Ruling: The Defendant's objections are denied. The Defendant must admit or deny the statement presented. Unlike Nos. 21 and 22, this request seeks to narrow down an issue rather than wording. The underlying question is whether the Defendant will contend that the labeling does advise or somehow put pharmacists on notice “that BPO GEL is not generic, bioequivalent, therapeutically equivalent to Brevoxyl.” Defendant may explain or qualify its response pursuant to Rule 36 (a) (4).
As to Request No. 24
Ruling: The Defendant's objections are denied. The Defendant must admit or deny the statement propounded. The underlying question, as with No. 23 above has to do with narrowing an issue rather than wording. The underlying question is whether the Defendant will contend that the BPO GEL insert advises or somehow puts pharmacists and customers on notice that BPO GEL is not “generic, bioequivalent or therapeutically equivalent to Brevoxyl.”
Defendant may explain or qualify its response pursuant to Rule 36(a) (4).
General Comment to Court concerning certain allegations by Defense counsel:
*12 Orally and in writing, Defendant's counsel has more than a few times claimed his client has not had an opportunity to be heard on particular matters and/or and has been “sandbagged.” The Special Master has reconsidered each instance where it could find such positions, but does not find any justification for them. For example, in his first comments on a draft version of this report counsel announced it has several witnesses who can prove that Defendant had a “documents hold” in place after the filing of the underlying lawsuit. The Courts Order and the Special Master's comments and instruction, not to mention the obvious discovery dispute at hand clearly put the Defendant on notice it had the opportunity to defend its production of documents, including the challenge it negligently destroyed documents, at the first informal hearing, in supplemental responses to discovery thereafter and at the formal hearing June 1. At that hearing, Defendant's Counsel chose to rely on his corporate witness Srinivasan whose testimony was in large part harmful to Defendant and presumably counsel is stressed by this outcome. The Defendant and its counsel failed to alert neither the Defendant nor the Special Master until June 1, 2011 that it had suffered a loss of documents 11 months earlier and now cries foul because the Plaintiff asks for and the Special Master recommends a charge on spoliation. Counsel lives in a glass house on the matter and his use of the terms “surprise,” “sand-bagging” and allegations that his client has not had the opportunity to be heard are improper, ill advised, descriptive of his own conduct and hopefully will not be repeated. They suggest impropriety on the part of the Special Master in carrying out his duties per the Court's Order. Counsel is free to disagree with any or all conclusions, but he is hereby on notice that any further accusations without a clear and carefully presented basis will be met with a recommendation to the Court for a contempt sanction. The rigors of discovery do not justify such accusations merely to blunt or blur unsuccessful positions or negative rulings.