*1 Pursuant to the District Judge's Order of Reference, Doc. 341, before the Court are two discovery motions filed by Defendant SPEX Engineering UK, Ltd. (“SPEX Engineering”). For the following reasons, Defendant's Motion to Compel Plaintiff to Produce the Trade Secrets it Alleges Were Misappropriated Under the Agreed Protective Order, Doc. 312, is GRANTED, and Defendant Spex Engineering (UK) Ltd.'s Motion to Compel Responses and Documents Responsive to Defendant's First Requests for Production from Plaintiff MCR Oil Tools, LLC, Doc. 317, is GRANTED IN PART.

I. BACKGROUND

In December 2017, MCR Oil Tools, LLC (“MCR”) filed a state court petition against Defendants SPEX Offshore (UK) Ltd., SPEX Group US LLC, and SPEX Engineering after a dispute arose in connection with the parties' license agreement. MCR amended its complaint a number of times to also ultimately include as defendants (1) SPEX Offshore, Ltd. (“SPEX Offshore”); (2) SPEX Services, Ltd. (“SPEX Services”); (3) SPEX Group Holdings, Ltd.; (4) SPEX Corporate Holdings, Ltd.; and (5) Jamie Oag (collectively, “Defendants”). Doc. 113. In its operative complaint, MCR alleges that over the course of 30 years, it has developed, manufactured, and sold oilfield tools, products, and equipment using patented technology, trade secrets, and confidential and proprietary information. Doc. 113 at 6. MCR avers that it entered into licensing agreements with some of the Defendants to allow the use of MCR's tools and intellectual property subject to various restrictions and representations. Doc. 113 at 8-14. Ultimately, however, Defendants allegedly breached various terms of the licensing agreements and misappropriated MCR's technology through the creation of a series of “shell companies.” Doc. 113 at 15-44. MCR asserts claims against Defendants for breach of contract, misappropriation of trade secrets, and unfair competition, among others. Doc. 113 at 50-64.

Meanwhile, in anticipation of discovery, SPEX Group US LLC and MCR jointly moved for the entry of a protective order to ensure the confidentiality of sensitive business information, trade secret information, and the like. Doc. 17. The Court granted the motion. Doc. 22 (the “First APO”). Under the terms of the First APO, documents designated “Attorneys Eyes Only” (“AEO”), which encompasses trade secret information, can only be disclosed to “Qualified Persons,” including “retained counsel for the parties in this litigation” and select others, but does not include in-house counsel or any Defendants. Doc. 22 at 1-2, 5, 7-8. The use of such information is limited to “the preparation, trial, and appeal of this litigation and for no other purpose.” Doc. 22 at 4-5, 7-8. The First APO also specifies that its provisions are enforceable by way of sanctions, including contempt and damages, and that the obligations specified therein survive the termination of this action. Doc. 22 at 10-11. Finally, the Court retains jurisdiction over any dispute arising out of the improper use of any confidential or AEO information. Doc. 22 at 10-11.

II. THE PRESENT DISPUTES

A. Motion for Protective Order and Cross-Motion to Compel

*2 In December 2019, MCR moved for a protective order to allow it additional time to prepare a privilege log pertaining to its trade secrets and respond to SPEX Engineering's First Requests for Production (“First RFPs”). Doc. 305. MCR argued that it did not believe the First APO adequately protected its trade secrets and there was a risk that the information would be abused if released as SPEX Engineering had asked. Doc. 305 at 6-8.

SPEX Engineering filed the cross-motion now before the Court, arguing that the First APO adequately protects MCR's allegedly privileged trade secret documents; thus, MCR must produce the documents themselves, not a log of them. Doc. 312 at 6-7, 10. SPEX Engineering also requests an award of attorneys' fees incurred in filing its motion. Doc. 312 at 16.

In February 2020, MCR and all Defendants except SPEX Offshore, SPEX Services, and SPEX Group US, LLC filed another agreed motion for entry of a protective order, Doc. 350, which the Court entered on April 13, 2020. Doc. 354 (the “Second APO”). A comparison of the First and Second APOs reveals that they are identical in all relevant respects. Both the First and Second APOs are binding on all Defendants — and indeed on anyone privy to the matter — and they will continue to be bound by them even after this litigation has concluded. As such, any purported concern by MCR over disclosure of its trade secrets and other confidential documents is obviated by the terms of the APOs and no further order is necessary. In re Terra Int'l, 134 F.3d 302, 306 (5th Cir. 1998). MCR's arguments regarding the confidentiality of its trade secrets are moot. See, e.g., Freeman v. Dekker Vacuum Techs., Inc., No. 4:15-cv-01764, 2015 WL 8074056, at *1 (S.D. Tex. Dec. 4, 2015) (“With a protective order in place, [Defendant's] objections on trade secret and confidentiality grounds are moot.”); Schmidt v. Goodyear Tire & Rubber Co., No. 2:01-CV-272-DF/CMC, 2002 WL 35633851, at *1, 3 (E.D. Tex. June 7, 2002) (denying motion to quash, which asserted that plaintiff's subpoena sought trade secret information, where the protective order in place was sufficient to protect party's information from inappropriate disclosure). Therefore, Defendant's Motion to Compel Plaintiff to Produce the Trade Secrets it Alleges Were Misappropriated Under the Agreed Protective Order, Doc. 312, is GRANTED.

B. Motion to Compel

SPEX Engineering also has filed a separate motion to compel MCR's responses to the remainder of its First RFPs, pointing to MCR's numerous boilerplate and other improper discovery objections. See Doc. 317 at 8-15 (discussing “subject to,” “not reasonably calculated,” “not relevant,” “overbreadth,” “not limited in scope,” “undue burden,” “no reasonable specificity,” “vague and undefined,” and untimely objections). Further, SPEX Engineering asserts that MCR is impermissibly withholding transcripts of testimony on the basis that it is subject to a protective order entered in a different case. Doc. 317 at 15-16. Finally, SPEX Engineering contends that MCR has refused to provide initial disclosures regarding its damages as required by Rule 26(a). Doc. 317 at 16-17. SPEX Engineering requests that the Court: (1) overrule MCR's improper objections to the First RFPs; (2) order MCR to serve amended responses and any withheld documents; (3) order MCR to comply with Rule 26(a)'s initial disclosure requirement; and (4) pay its fees and expenses incurred in making the motion. Doc. 317 at 17-18.

*3 Together with its response to SPEX Engineering's motion, MCR served its second amended responses to the First RFPs, in which it withdrew a number of objections and mooted some by stating it is not withholding any responsive documents, but standing on a plethora of others. See Doc. 321 at 7, 11, 16-17, 20-21, 23-24 (withdrawing “subject to” and “not reasonably calculated” objections as well as objections to RFP Nos. 77-78, 85, 96, 103-08, 110, 113, 135, 138, 146, 149, 158, 161); Doc. 321 at 8, 10-11, 16-18 (stating that, with the exception of privileged documents, MCR is not withholding any material responsive to RFP Nos. 55, 59, 80-81, 101, 109, 116-22, 142, 145). The Court will address the objections by category after first setting forth the governing law.[1]

Under the Federal Rules of Civil Procedure, “[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering 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. Information within this scope of discovery need not be admissible in evidence to be discoverable.” FED. R. CIV. P. 26(b)(1).

Rule 34 provides that a party may serve on any other party a request to produce and permit the requesting party or its representative to inspect, copy, test, or sample, inter alia, documents, data, and electronically stored information in the responding party's possession, custody, or control. FED. R. CIV. P. 34(a). A request for production or inspection “must describe with reasonable particularity each item or category of items to be inspected” or produced. FED. R. CIV. P. 34(b)(1)(A). When responding to Rule 34 discovery requests, “a reasonable inquiry must be made, and if no responsive documents or tangible things exist, ... the responding party should so state with sufficient specificity to allow the Court to determine whether the party made a reasonable inquiry and exercised due diligence.” Heller v. City of Dallas, 303 F.R.D. 466, 485 (N.D. Tex. 2014).

A party may move for an order compelling production against another party when the latter has failed to produce documents requested under Rule 34. FED. R. CIV. P. 37(a)(3)(B)(iv). For purposes of Rule 37(a), “an evasive or incomplete disclosure, answer, or response must be treated as a failure to disclose, answer, or respond.” FED. R. CIV. P. 37(a)(4). Moreover, the party resisting discovery must show specifically how each request for production is not relevant or is otherwise objectionable as overly broad or burdensome See McLeod, Alexander, Powel & Apffel, P.C. v. Quarles, 894 F.2d 1482, 1485 (5th Cir. 1990). Failure to so specify is “not adequate to voice a successful objection.” Id. (citation omitted). Generally, “if an objection does not preclude or prevent a response or answer, at least in part, the objection is improper and should not be made.” Carr v. State Farm Mut. Auto. Ins. Co., 312 F.R.D. 459, 469-70 (N.D. Tex. 2015) (citation omitted). “Serving unsupported and boilerplate or stock objections does not preserve or accomplish anything other than waiver and subjecting the responding party to sanctions.” Lopez v. Don Herring Ltd., 327 F.R.D. 567, 581 (N.D. Tex. 2018) (internal quotation marks omitted) (quoting Heller, 303 F.R.D. at 477).

1. Relevance

*4 MCR raises relevance objections to RFP Nos. 10, 72, 79, 84, 95, 98, 100, 133-34, 143-44, 156, and 159. See Doc. 321 at 7-13. For the most part, the objections simply state that “this Request seeks the disclosure of information that is not relevant to any claim pled by MCR in this action” although there are slight variations to the wording of the objection on occasion. Because MCR's relevance objections to the above RFPs are unsupported boilerplate, they are OVERRULED. Lopez, 327 F.R.D. at 581.

2. Overbreadth

MCR objected to numerous RFPs as “overly broad and ... not reasonably limited in scope and thus MCR cannot determine what is sought with reasonable specificity.” These include RFP Nos. 3, 12, 48-49, 51-52, 54, 61-62, 98, 100, 111-12, 121, 123-32, 136-37, 141, 143, 147-48, 150, 152, 160, and 162. See Doc. 331 at 13-22. MCR, however, has made little to no effort to specifically demonstrate how any of the RFPs are overly broad or otherwise unreasonable in scope, which is generally achieved through the submission of affidavits or other evidence revealing the nature of the burden. See Merrill v. Waffle House, Inc., 227 F.R.D. 475, 477 (N.D. Tex. 2005). MCR's failure to do so renders these objections nothing more than unsustainable boilerplate. See McLeod, 894 F.2d at 1485; Merrill, 227 F.R.D. at 477. Accordingly, MCR's objections to RFP Nos. 12, 48-49, 51-52, 54, 98, 100, 111-12, 121, 123-32, 136-37, 141, 147-48, 150, 152, 160, and 162 as overbroad and not reasonable in scope are OVERRULED.

Conversely, MCR did support its objections to RFP Nos. 61 and 62, which both concern damages, with additional specificity. See Doc. 331-1 at 21. In its response brief, however, MCR avers that it is not withholding any documents responsive to either RFP and will supplement its responses as required by the Rules. Doc. 321 at 15. It strikes the Court as unusual that MCR claims not to have some of the documents SPEX Engineering is requesting, such as financial ledgers and profit and loss statements. Nevertheless, counsel for MCR is an officer of the Court and clearly aware of his obligation to supplement under Rule 26(e) lest he risk sanctions. Accordingly, MCR's objections to RFP Nos. 61 and 62 are SUSTAINED at this juncture.

3. Burdensomeness

MCR's burdensomeness objections as to RFP Nos. 1-2, 4, 46, and 111 are supported by the Affidavit of Michael Robertson, MCR's President. Doc. 322-3 at 2-4. Upon review of the discovery requests and the Affidavit, the Court concludes that MCR's objections are sufficiently specific and valid. Merrill, 227 F.R.D. at 477. Accordingly, MCR's objections to RFP Nos. 1-2, 4, 46, and 111 are SUSTAINED.

4. Lack of Specificity

In addition to raising other objections, MCR argues that it is unable to respond “with any reasonable specificity” to RFP Nos. 1-2, 136, 148, and 160. Doc. 331-1 at 42, 46, 49. This language is boilerplate and does not suffice to preserve MCR's objections. Lopez, 327 F.R.D. at 581. Although MCR asserts that it relies on Robertson's Affidavit to explain the basis for these objections, the Affidavit discusses only RFP Nos. 1-2, 4, 46, and 111, which the Court has ruled are burdensome. Doc. 321 at 23. Accordingly, MCR's objections to RFP Nos. 136, 148, and 160 based on lack of specificity are OVERRULED.

5. Vagueness

MCR objected to RFP Nos. 66, 95, 139, and 162 as vague. Doc. 321 at 23. A party responding to discovery “should exercise reason and common sense to attribute ordinary definitions to terms and phrases,” and “[i]f necessary to clarify its answers, the responding party may include any reasonable definition of the term or phrase at issue.” Samsung Elecs. Am., Inc. v. Yang Kun Chung, 321 F.R.D. 250, 289 (N.D. Tex. 2017) (quoting Heller, 303 F.R.D. at 491-92 (internal quotation marks and citations omitted)). An objection on grounds of vagueness does not justify a complete refusal to respond unless the request is so vague or ambiguous as to be incapable of reasonable interpretation, thereby prohibiting a response. Samsung Elecs. Am., 321 F.R.D. at 289 (citing Heller, 303 F.R.D. at 492).

*5 RFP No. 66 requests “Communications, documents, and Electronic Information mentioning or evidencing the substantial time, money, resources, and effort MCR has invested to develop the confidential and proprietary information comprising its trade secrets as alleged in paragraph 21.” MCR objects that “paragraph 21” is “vague and undefined,” and “SPEX Engineering has refused to provide any further explanation of the information sought in this [RFP].” Doc. 321 at 24. SPEX Engineering replies that if MCR believed the RFP was vague, it should have attempted to obtain clarification, which plainly calls into question the parties' efforts to work through their own dispute without involving the Court. Doc. 330 at 7. Nevertheless, SPEX Engineering sheds no light on what “paragraph 21” RFP No. 66 is referring to, and the Court cannot hazard a guess. Accordingly, MCR's objection to RFP No. 66 is SUSTAINED.

RFP No. 95 seeks the production of “Communications, documents, and Electronic Information referencing, mentioning, or evidencing any non-rated mix that would reduce shipping, transportation, storage and handling costs.” Doc. 321 at 9. MCR objects that this RFP is vague because the term “non-rated mix” is not defined in the First RFPs or the parties' licenses, nor is there any standard definition. Doc. 321 at 9. SPEX Engineering asserts that the term refers to MCR's own definition and use of it in “a document dated May 10, 2011,” which is in MCR's possession. Doc. 330 at 7 n.24. Although there is no cite in the record for the Court to review the document, in light of this representation, MCR's objection to RFP No. 95 is OVERRULED.

RFP No. 139 requests “Communications, documents, and Electronic Information referencing, mentioning, or evidencing any natural person, entity, or MCR THIRD PARTY, including governmental bodies in Spain, has requested or questioned the classification of any Licensed Products, MCR PRODUCTS, or TOOLS.” MCR objects that the RFP is vague and confusing. Doc. 321 at 24. Upon review, the RFP would be clearer if it included the word “that” between “evidencing” and “any.” When read this way, the RFP is more easily understood. Otherwise, MCR's objection is boilerplate and insufficient to sustain its objection to RFP No. 139, which is OVERRULED. McLeod, 894 F.2d at 1485.

RFP No. 162 seeks the production of “Communications, documents, and Electronic Information referencing or mentioning any job where MCR PRODUCTS or TOOLS did not operate as expected.” Doc. 321 at 22. MCR objects that this RFP is vague because it seeks information about any jobs, without limitation, where MCR's tools did not operate “as expected,” but there is no specification “as to whose expectations are being inquired of.” Doc. 331-1 at 49. SPEX Engineering provides no further explanation, and the Court concurs with MCR that the RFP is vague as written. MCR's objection to RFP No. 162 is SUSTAINED.

6. Production of Testimony

RFP Nos. 63 and 64 request production of testimony given in connection with MCR patents, products, or tools. Doc. 331-1 at 21-22. MCR averred that while testimony given in Cause No. 236-293104-17, Halliburton Energy Services v. MCR Oil Tools, LLC, in the 236th Judicial District of Tarrant County, Texas may be responsive to the RFPs, the testimony is subject to a protective order entered by that court. Doc. 331-1 at 21-22. Having reviewed the Amended Agreed Protective Order in that matter, Doc. 322-6, and the designation pages of the testimony marked as “Confidential — Pursuant to Productive Order,” Doc. 322-6 at 12-13, the Court concurs. MCR's objections to RFP Nos. 63 and 64 are SUSTAINED pursuant to the terms of that order.

In its response brief, however, MCR suggests that there may be other relevant testimony as well, noting that “any earlier proceedings in which responsive testimony may have been given have been settled, closed, and no transcripts of deposition testimony are available to produce to SPEX Engineering.” Doc. 321 at 24. That is an insufficient response and suggests that MCR did not make a reasonable inquiry to determine whether such documents exist and their availability. Heller, 303 F.R.D. at 485. MCR is required to produce all requested relevant, non-privileged documents or things in its “possession, custody, or control.” FED. R. CIV. P. 34(a)(1). This includes documents held by a non-party to the action, provided that the party has the legal right or practical ability to obtain the documents from the non-party. Mir v. L-3 Commc'ns Integrated Sys., L.P., 319 F.R.D. 220, 230 (N.D. Tex. 2016). MCR is thus ORDERED to amend its response to RFP Nos. 63 and 64 accordingly within 14 days of the date of this order.

7. Untimely Objections

*6 SPEX Engineering contends that MCR raised untimely objections based on trade secret privilege to RFP Nos. 49, 51, and 131 by adding them to its amended responses 26 days after its deadline to respond to the First RFPs. Doc. 317 at 9-10.

Under Rule 34(a), a party has 30 days to respond to a request for production unless a longer time is stipulated by the parties or permitted by the court. If a party fails to timely respond in writing after being served, the party's objections are waived, unless the court finds good cause and excuses that failure. See In re United States, 864 F.2d 1153, 1156 (5th Cir. 1989) (“We readily agree with the district court that as a general rule, when a party fails to object timely to ... production requests ... objections thereto are waived.”). Even if the responding party has timely served some objections to a Rule 34(a) request, the waiver applies to any grounds not stated in a timely objection. Samsung, 321 F.R.D. at 283-84.

MCR argues that its objections to these RFPs should not be considered late because SPEX Engineering “was always aware and had already stipulated that these types of [requested] materials were MCR's trade secrets.” Doc. 321 at 24-25. MCR's argument is beside the point and does not constitute good cause to excuse MCR from raising a timely discovery objection. Samsung, 321 F.R.D. at 283-84. Accordingly, MCR's trade secret privilege objections to RFP Nos. 49, 51, and 131 are OVERRULED.

8. Initial Damages Disclosures

SPEX Engineering asserts that MCR has not fulfilled its obligation under Rule 26 to provide it with the amounts and methods of calculation for all of its alleged damages as well as supporting documentation. Doc. 317 at 16-17. MCR contends that because it has not been able to obtain merits-based discovery from six of the eight Defendants due to the procedural posture of the case, it has produced the information pertaining to damages that it has and will supplement as required. Doc. 321 at 25.

Again, MCR's response is not sufficient. A party must make initial disclosures at or within 14 days after the parties' Rule 26(f) conference unless a different time is set by stipulation or court order. FED. R. CIV. P. 26(a)(1)(C). Among other things, a party must provide “a computation of each category of damages claimed by the disclosing party.” FED. R. CIV. P. 2626(a)(1)(A)(iii). The initial disclosures must be “based on the information then reasonably available to [the party].” FED. R. CIV. P. 26(a)(1)(E). “A party is not excused from making its disclosures because it has not fully investigated the case or because it challenges the sufficiency of another party's disclosures or because another party has not made its disclosures.” Id. Indeed, the party claiming damages must “disclose to the other parties the best information then available to it concerning that claim, however limited and potentially changing it may be.” LW Air I, L.L.C. v. Air 7, L.L.C., No. 3:16-CV-00546-L, 2017 WL 3209398, at *2 (N.D. Tex. Apr. 20, 2017) (citing Tendeka, Inc. v. Glover, No. H-13-1764, 2015 WL 2212601, at *16 (S.D. Tex. May 11, 2015)).

The parties' scheduling conference took place more than two years ago, and MCR's damages disclosures are well overdue. Therefore, MCR is ORDERED to comply with Rule 26(a)(1)(A)(iii) within 14 days of the entry of this order. The disclosure requirement “does not require production of any documents,” however, which should separately be sought through a request for discovery under Rule 34 as has been done here. FED. R. CIV. P. 26 (1993 adv. comm. notes).

C. Attorneys' Fees and Costs

*7 Rule 37 provides that if a motion to compel is granted, or if the requested discovery is provided after the motion was filed, the court must require the party whose conduct necessitated the motion, the party or attorney advising that conduct, or both to pay the movant's reasonable expenses and attorneys' fees incurred in making the motion. FED. R. CIV. P. 37(a)(5)(A). The court must not order this payment, however if (1) the movant filed the motion before attempting in good faith to obtain the disclosure or discovery without court action; (2) the opposing party's nondisclosure, response, or objection was substantially justified; or (3) other circumstances make an award of expenses unjust. The United States Supreme Court has defined “substantially justified” to mean “ ‘justified in substance or in the main’—that is, justified to a degree that could satisfy a reasonable person.” Pierce v. Underwood, 487 U.S. 552, 565 (1988). This entails a “reasonable basis in both law and fact” such that there is a “genuine dispute” or “reasonable people could differ as to the appropriateness of the contested action.” Id. (internal punctuation omitted).

With respect to Defendant's Motion to Compel Plaintiff to Produce the Trade Secrets it Alleges Were Misappropriated Under the Agreed Protective Order, Doc. 312, the Court finds that MCR's failure to produce the requested documents was not substantially justified given the fact that not one, but two, APOs are in place to protect against the disclosure of any trade secret and privileged information. An award of fees and expenses in SPEX Engineering's favor is not unjust under the circumstances. FED. R. CIV. P. 37(a)(5)(A).

Turning to SPEX Engineering's second motion, if a motion to compel 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). Due to MCR's numerous boilerplate objections and failure to comply with the Federal Rules of Civil Procedure, the Court finds that SPEX Engineering is entitled to an award of reasonable costs and fees incurred in filing its Motion to Compel Responses and Documents Responsive to Defendant's First Requests for Production from Plaintiff MCR Oil Tools, LLC, Doc. 317. Only a handful of MCR's objections were sustained and, while it withdrew some, it insistently stood on many others that have been rejected as impermissible boilerplate time and again. Although MCR complains at length that SPEX Engineering cut off conferencing attempts before filing its motion — suggesting that more of the disputes could have been resolved — the fact is that MCR should never have lodged the offending objections to begin with.

Accordingly, MCR is ORDERED to reimburse SPEX Engineering for its reasonable attorneys' fees and costs incurred in prosecuting both of its motions to compel. To that end, the parties are DIRECTED to confer in an effort to reach agreement regarding the amount of the attorneys' fees. If the parties are unable to reach agreement within 21 days of the date of this Order, SPEX Engineering is DIRECTED to file documentation of the attorney's fees incurred in the prosecution of the motions, with sufficient detail to permit the Court to evaluate the reasonableness of the fees claimed through the lodestar method. MCR may file a response no later than 14 days following SPEX Engineering's submission. Both submissions may be filed under seal.

III. CONCLUSION

For the reasons stated, Defendant's Motion to Compel Plaintiff to Produce the Trade Secrets it Alleges Were Misappropriated Under the Agreed Protective Order, Doc. 312, is GRANTED and Defendant Spex Engineering (UK) Ltd.'s Motion to Compel Responses and Documents Responsive to Defendant's First Requests for Production from Plaintiff MCR Oil Tools, LLC, Doc. 317, is GRANTED IN PART. MCR is ORDERED to produce all documents as directed herein within 21 days of the date of this order.

SO ORDERED on May 27, 2020.