*1 On December 20, 2018, plaintiff Aquastar Pool Products, Inc. (“Aquastar”) filed a motion to compel discovery responses (docket no. 95). Plaintiff asks the court to compel defendant Color Match Pool Fittings, Inc. (“Color Match”) to provide responses to seven requests for production of documents (“RFPs”). Plaintiff also seeks sanctions under Fed. R. Civ. P. 37(a)(5) for defendant's alleged failure to adequately respond to one of plaintiff's RFPs.

The motion is supported and opposed in a joint stipulation (“JS”) setting forth the parties' respective positions, as well as declarations by plaintiff's counsel and defendant, and exhibits thereto. Additionally, the parties submitted supplemental memoranda on December 21 and 27, 2018.

The matter came before the court for hearing on January 15, 2019. As discussed at the hearing, on January 18, 2019, the parties filed second supplemental submissions.

Having reviewed the papers filed and considered the arguments made at the hearing, and for the reasons discussed below, the court grants in part and denies in part the motion to compel as follows.

BACKGROUND

Plaintiff Aquastar is a manufacturer and supplier of swimming pool and spa products. Plaintiff holds U.S. Patent No. 9,869,103 (“the '103 patent”) for a circular sump drain that is designed to be embedded in the surface of a pool or spa. Defendant Color Match is a manufacturer and supplier of pool drain covers and related products. On January 17, 2018, plaintiff filed a First Amended Complaint (“FAC”) alleging three products sold by defendant infringe its '103 patent: the 360 Pebble Top, the OpenFlow 360, and the SuperFlow 360. The OpenFlow 360 and SuperFlow 360 are two models of the 360 Pebble Top drain cover.

On March 2, 2018, defendant filed a First Amended Answer to the FAC asserting counterclaims against plaintiff. Defendant alleges plaintiff is infringing three patents held by defendant: U.S. Patent No. 6,209,586, No. 6,340,035, and No. 6,557,588 (“the '586, '035, and '588 patents”). Defendant's three patents are collectively known as the Wright patents. Defendant alleges two products sold by plaintiff infringe its Wright patents: the Full Circle and the Eclipse. The parties dispute whether plaintiff's Full Circle and Eclipse products are merely drain covers or sump drains that include a cover.

On May 11, 2018, plaintiff filed a Second Amended Answer to defendant's counterclaims denying the infringement allegations.

Plaintiff filed the instant motion on December 20, 2018. Plaintiff seeks supplemental responses to RFP Nos. 2, 9, 10, 12, 13, and 14 from its fourth set of RFPs, which plaintiff served on defendant on October 3, 2018 and to which defendant responded on November 2, 2018. Plaintiff initially also sought a supplemental response to RFP No. 4, but defendant subsequently satisfied this request.

LEGAL STANDARDS

Fed. R. Civ. P. 26(b) permits “discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). To be relevant, the information sought “need not be admissible in evidence.” Id. A “relevant matter” under Rule 26(b)(1) is any matter that “bears on, or that reasonably could lead to other matters that could bear on, any issue that is or may be in the case.” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351, 98 S. Ct. 2380, 57 L. Ed. 2d 253 (1978). In determining proportionality, the court “consider[s] the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1).

*2 A party may request documents “in the responding party's possession, custody, or control.” Fed. R. Civ. P. 34(a)(1). A request is adequate if it describes items with “reasonable particularity”; specifies a reasonable time, place, and manner for the inspection; and specifies the form or forms in which electronic information can be produced. Fed. R. Civ. P. 34(b). “Thus, a request is sufficiently clear if it places the party upon reasonable notice of what is called for and what is not.” Richmond v. Mission Bank, 2015 WL 1637835, at *2 (E.D. Cal. Apr. 13, 2015) (internal citation and quotation marks omitted).

The responding party must respond in writing and is obliged to produce all specified relevant and non-privileged documents, tangible things, or electronically stored information in its “possession, custody, or control” on the date specified. Fed. R. Civ. P. 34(a). Actual possession, custody or control is not required.

In the alternative, a party may state an objection to a request, including the reasons. Fed. R. Civ. P. 34(b)(2)(A)-(B). In moving to compel the production of documents, the moving party has the burden of demonstrating “actual and substantial prejudice” from the denial of discovery. Hallet v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002); Fed. R. Civ. P. 37(a)(3)(B)(iv).

DISCUSSION

RFP No. 2

RFP No. 2 requests all invoices for sales of all commercial embodiments of the Wright patents since 2013. JS at 4. Defendant argues this request is irrelevant, not proportional to the needs of the case, and burdensome because it seeks every invoice defendant has issued for products sold under the Wright patents since 2013 when defendant has already produced a spreadsheet containing the same information to plaintiff. Id. at 4-6. The parties dispute the ease with which these invoices can be batch printed or stored to an external drive. See D. Supp. Mem. at 1-2; P. Supp. Mem. at 1. Defendant notes that it does not maintain paper copies of the invoices, and that the request would require production of an estimated 5,000 invoices that must be manually printed. JS at 5.

Plaintiff does not argue it needs additional data that is missing from the spreadsheet produced by defendant; it argues instead that the form of the data is problematic. JS at 4; P. Supp. Mem. at 1. In particular, plaintiff argues it requires printed invoices to check the veracity of defendant's spreadsheet data. But unlike in some cases where invoices are separately generated, here the invoices would be printed from the same QuickBooks data that generated the spreadsheet already produced. See Krombein Decl. ¶¶ 3-4, 6. Thus, there is no reason the printed invoices would be more accurate than the spreadsheet, given that they necessarily would reflect the same data from the same source.

Accordingly, requiring defendant to print these invoices would be pointless and excessively burdensome. As such, plaintiff's motion is denied as to RFP No. 2.

RFP No. 9

RFP No. 9 requests all agreements between defendant and third party A&A Manufacturing of Phoenix, Arizona, including without limitation all license agreements, distribution agreements, supply agreements, manufacturing agreements and private label agreements, and emails or other documents defining the business relationship between defendant and A&A. JS at 7.

The parties dispute the nature of the relationship between defendant and non-party A&A. Defendant contends it has no business relationship with A&A Manufacturing other than that of a supplier and customer. Id. at 8-9. Defendant thus argues it has no documents responsive to plaintiff's request because no such agreement exists, and that a request for all emails, invoices, and other communications between itself and A&A goes beyond the scope of the request and seeks irrelevant information. Id. Plaintiff argues otherwise. As evidence of the existence of a business relationship, plaintiff attaches screenshots of various social media pages and webpages stating that defendant's drain cover was designed to be compatible with A&A's AVSC drain. See JS, Exs. 5 and 6. These screenshots include statements by defendant that the 360 Pebble Top “pair[s] with the A&A AVSC Unblockable Channel Drain” and “fits with [the] A&A AVSC Channel Drain.” Id.

*3 At the hearing, defendant offered to provide a supplemental declaration stating there are no agreements defining the business relationship between defendant and A&A. Plaintiff stated this would be acceptable. Accordingly, to confirm it has no documents responsive to this request, defendant must provide the supplemental declaration as it offered.

RFP No. 10

RFP No. 10 requests documents including all drawings and specifications, instructions, sell sheets, advertisements, and the like describing the AVSC Heavy Debris Removal drain. JS at 9. The AVSC Heavy Debris Removal Drain (“AVSC drain”) is a product sold by A&A.

Plaintiff contends it needs these documents because they may show the AVSC drain falls outside the scope of the Wright patents and thus is a noninfringing alternative to defendant's Pebble Top drains. Defendant argues this makes no sense because the AVSC drain – specifically, the component of the AVSC drain made by defendant – is in fact marked with the Wright patent numbers and therefore clearly comes under the Wright patents and would be infringing if not effectively licensed. See Krombein Decl. ¶ 7. Plaintiff responds that it wants to be able to challenge defendant's position that the AVSC drain would infringe if not licensed, and the documents it seeks may support such a challenge to the extent they contain statements by defendant that are inconsistent with those defendant has made in this litigation.

Plaintiff's argument is not persuasive. Defendant manufactures only one component of the AVSC drain, which it marks with the Wright patent numbers. See Krombein Decl. ¶¶ 7-8. To require defendant to produce all its documents describing the AVSC drain on the off chance there might be an inconsistent statement – and concerning a drain not at issue in this case – is disproportionate to the needs of the case. Moreover, as defendant argues, infringement will be determined by comparing the patent claims and products. See Cybor Corp v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc), abrogation on other grounds recognized by Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 904 F.3d 965, 976 (Fed. Cir. 2018). Thus, plaintiff's motion is denied as to RFP No. 10.

RFP Nos. 12, 13, 14

RFP Nos. 12, 13, and 14 request all emails mentioning the products sold by defendant that allegedly infringe plaintiff's '103 patent: the 360 Pebble Top, the OpenFlow, and the SuperFlow. Plaintiff contends a party's email communications relating to its claims or defenses are a proper subject for a request under Fed. R. Civ. P. 34. JS at 11-15. Defendant argues these requests seek documents that are irrelevant and not proportional to the needs of the case, and that the requests are sweeping, as its responses to these RFPs would include all email communications with customers regarding these products. Id.

The RFPs appear to seek relevant information, but are overbroad and disproportionate to the needs of the case, given that the vast majority of responsive emails would likely be customer communications having no relevance to this case. At the hearing, the court asked the parties to submit further supplemental briefing addressing whether and how the requests could be more narrowly tailored.

Plaintiff rejects any effort to narrow the requests, arguing that this may omit a relevant email due to misspelled words or the use of alternative terms. P. 2d Supp. Mem. at 1. But by that logic, parties should simply turn over every bit of information they have in every case so as to ensure nothing is inadvertently omitted. That is not the standard for discovery. See Fed. R. Civ. P. 26(b)(1).

*4 Defendant suggests the requests be narrowed to require it to produce emails that both contain one of the terms identified by plaintiff in RFP Nos. 12-14 and contain one of the following terms: annular chamber; hub; removable cap; gutter; or intermediate region. D. 2d Supp. Mem. at 1. This appears to be a reasonable proposal, in that the latter list contains claim terms in dispute with respect to the '103 patent. See docket nos. 62, 64. To this, as suggested in part by plaintiff, the court adds the terms: intermediate portion; circular space; circular chamber; middle part; or middle place. With these additions to the list, defendant must search for and produce emails responsive to RFP Nos. 12-14 as narrowed.

RFP No. 4

RFP No. 4 requests all documents showing defendant's costs of producing all commercial embodiments of the Wright patents since 2013. JS at 6. Defendant subsequently produced all relevant documents to plaintiff's satisfaction after the instant motion was filed, and plaintiff now seeks attorneys' fees related to the dispute over the production for RFP No. 4. P. Supp. Mem. at 2. The court finds monetary sanctions for attorney's fees are not warranted with respect to this request or any other at this time.

Under Fed R. Civ. P. 37, if a motion to compel discovery is granted, the court “must, after giving an opportunity to be heard, require the party or deponent 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.” Fed R. Civ. P. 37(a)(5)(A). But the court must not order payment if: “(i) the movant filed the motion before attempting in good faith to obtain the disclosure or discovery without court action; (ii) the opposing party's nondisclosure, response, or objection was substantially justified; or (iii) other circumstances make an award of expenses unjust.” Id. Furthermore, if the motion is granted in part and denied in part, the court “may, after giving an opportunity to be heard, apportion the reasonable expenses for the motion.” Fed. R. Civ. P. 37(a)(5)C).

In refusing to produce documents responsive to RFP No. 4, defendant raised arguments about the relevance and proportionality of the request, neither of which are strong arguments. But these arguments were also not frivolous. Further, this motion concerns a number of additional disputes as well, none of which was frivolous. The court therefore finds attorneys' fees are not warranted.

ORDER

For the reasons discussed above, IT IS THEREFORE ORDERED that plaintiff's motion to compel is granted in part and denied in part as described above.