I. BACKGROUND[1]

In their Motion to Compel, Defendants seek an Order from the Court compelling Plaintiff to: (1) “produce all documents and things responsive to Defendant's Request for Production”; (2) “provide complete answers to Defendants’ Interrogatories” (3) “supplement and update its Infringement Contentions, or alternatively, to strike Plaintiff's Infringement Contentions”; and (4) “pay Defendants’ attorneys’ fees and costs related to the preparation of this Motion.” (Doc. 159 at 2.)

On October 11, 2018, after the parties reached an impasse with the discovery process, the Court held a Discovery Status Conference to address some of the discovery disputes between the parties. (See Docs. 177 & 178.) During the Status Conference, Plaintiff indicated that they had provided Defendants with financial information in response to Defendants’ Request for Production and that they would be producing additional financial documents. (Tr. at 18:8-17 (Plaintiff's counsel represented that it had provided Defendants “with financial information related to damages with respect to three customers that [Plaintiff] actually knew about before we got this list of 12 [customers]. Now we're working on the ... other nine.... We expect we can provide all of those documents in 30 days or less.”).). On November 19, 2018, Defendants filed a status update informing the Court that Plaintiff had indicated “that it would be providing supplemental production of financial documents and updating certain interrogatory responses by November 30, 2018.” (Doc. 190 at 9.) Defendants also informed the Court that Plaintiff had not supplemented their Preliminary Infringement Contentions and that Defendants would “timely supplement their interrogatory responses regarding non-infringement upon receipt of compliant infringement contentions from Plaintiff.” (Id. at n.1)

On February 1, 2019, Defendants filed their Second Motion to Compel Discovery and Memorandum in Support (Doc. 218) (Second Motion to Compel) alleging that the discovery process had again stalled.[2] In their Second Motion to Compel, Defendants alleged that “[w]hile Entrust has since provided a supplemental response to Interrogatory Nos. 16 and 17 and produced limited additional financial documents, Entrust has not addressed the majority of the issues raised in Defendants’ first motion to compel including, for instance, providing: (1) compliant infringement contentions and the basis for Entrust's infringement allegations; (2) financial documents to support Entrust's damage theories; (3) technical documents showing the functionality and operation of Entrust's products allegedly covered by the Patents-In-Suit; and (4) documents from prior litigation relating to the ‘205 patent, including the settlement agreement with NBS.” (Doc. 218 at 3-4.)

II. STANDARD

*2 It is clear that the parties may obtain discovery:

Fed. R. Civ. P. 26(b)(1). The rules “strongly favor full discovery whenever possible.” Farnsworth v. Procter & Gamble Co., 758 F.2d 1543, 1547 (11th Cir. 1985). “The discovery process is designed to fully inform the parties of the relevant facts involved in their case.” United States v. Pepper's Steel & Alloys, Inc., 132 F.R.D. 695, 698 (S.D. Fla. 1990) (citing Hickman v. Taylor, 329 U.S. 495, 501 (1947)). “The overall purpose of discovery under the Federal Rules is to require the disclosure of all relevant information so that the ultimate resolution of disputed issues in any civil action may be based on a full and accurate understanding of the true facts, and therefore embody a fair and just result.” Oliver v. City of Orlando, No. 6:06-cv-1671-Orl-31DAB, 2007 WL 3232227, at *1 (M.D. Fla. Oct. 31, 2007) (citing United States v. Procter & Gamble Co., 356 U.S. 677, 682 (1958)). Discovery is intended to operate with minimal judicial supervision unless a dispute arises and one of the parties files a motion requiring judicial intervention. Furthermore, “[d]iscovery in this district should be practiced with a spirit of cooperation and civility.” Middle District Discovery (2015) at 3.

Motions to compel discovery under Rule 37(a) are committed to the sound discretion of the trial court. See Commercial Union Ins. Co. v. Westrope, 730 F.2d 729, 731 (11th Cir.1984). The trial court's exercise of discretion regarding discovery orders will be sustained absent a finding of abuse of that discretion to the prejudice of a party. See Westrope, 730 F.2d at 731. The party bringing a motion to compel discovery “bears the burden of demonstrating that the information it seeks is relevant.” Costa v. Metro. Life. Ins. Co., No. 6:17-CV-714-ORL-40TBS, 2018 WL 1635642, at *2 (M.D. Fla. Apr. 5, 2018). For the Court to be able to rule on a motion to compel, it must “be specifically targeted to specific requests and must have reasons why the motion should be granted.” Newman v. Sun Capital, Inc., No. 2:09-cv-445-FtM-29SPC, 2010 WL 11470980, at *1 (M.D. Fla. Jan. 15, 2010).

“A party objecting to a request for production must: (1) ‘state with specificity the grounds for objecting to the request, including the reasons;’ (2) ‘state whether any responsive materials are being withheld on the basis of that objection;’ and (3) ‘[a]n objection to part of a request must specify the part and permit inspection of the rest.’ ” Local Access, LLC v. Peerless Network, Inc., No. 6:17-cv-236-Orl-40TBS, 2018 WL 2938393, at *2 (M.D. Fla. June 12, 2018) (quoting Fed. R. Civ. P. 34(b)(2)). “The rules leave no place for boilerplate style objections.” Id. (citations omitted). Local Rule 3.04(a) provides:

M.D. Fla. R. 3.04(a). Local rules “have the force of law,” Hollingsworth v. Perry, 558 U.S. 183, 190 (2010) (internal quotations and citation omitted), and “[t]he importance of these Rules cannot be overstated.” U.S. v. Fleming, No. 3:09-cv-153-J-34TEM, 2010 WL 5128293, at *1 (M.D. Fla. Dec. 10, 2010).

III. DISCUSSION

A. Defendants’ Interrogatories

Here, Defendants seek Plaintiff's complete answers to Interrogatory Nos. 3, 4, 10, 12, 16-17, and 18. (Doc. 159 at 7-15.) Interrogatory 3 states as follows:

(Id. at 4-5.) Plaintiff objected to this interrogatory as being premature since it “seeks [Plaintiff's] position regarding infringement before discovery is substantially complete.” (Id.) Plaintiff also claims that the interrogatory required legal conclusions and expert testimony, and that it “seeks discovery that is subject to the attorney-client privilege, work product immunity, and/or any other applicable privilege or immunity.” (Id. at 5.) Defendant now seeks to compel Plaintiff to either “(1) confirm that the modified structure is not a parallelepiped support plate as Plaintiff's counsel stated at the Markman hearing; or (2) identify with particularity the factual basis for Plaintiff's change in position.” (Id. at 7.) Defendants argue that Plaintiff can answer this interrogatory based on its review of Defendants’ 3D digital model of the modified structure, as well as video recordings of the in-person inspections of the accused machines. (Id. at 6-7.) The undersigned agrees with Plaintiff to the extent that the parties are still exchanging discovery and provided that this answer may require an expert opinion. As such, Plaintiff's objection to Interrogatory 3 is sustained.

Next, in Interrogatory No. 4, Defendant requests that:

(Id. at 7.) Plaintiff objected to the interrogatory, in part, because it requires legal conclusions and expert testimony. (Id. at 8.) Defendant argues that Plaintiff's “refusal to take a position on issues of infringement” is improper. (Id. at 10.) However, Plaintiff's objection will be sustained, especially since Plaintiff and its experts have yet to review Defendants’ source code. (See Doc. 250.)

*4 In Interrogatory Nos. 10 and 12, Defendants also seek information and supporting documents regarding Plaintiff's damages claims and state as follows:

(Id. at 10-11.) In response to Interrogatory No. 10, Plaintiff objected to providing the requested information because it was “confidential, sensitive, and proprietary business information,” which it would not produce until an appropriate Protective Order was entered. (Id. at 10.) However, the parties have been exchanging discovery pursuant to their Stipulation Concerning Discovery (Doc. 139-7), which affords adequate protections for the production of confidential and proprietary business information; thus, Plaintiff's objections to Interrogatory No. 10 are overruled. With respect to Interrogatory No. 12, to the extent Plaintiff's objection is based on its need for an expert report on damages, the Court will sustain Plaintiff's objections.

Next, Defendants seek updated answers from Plaintiff to Interrogatory Nos. 16 and 17. Interrogatory 16 states:

(Doc. 159 at 12.) According to Defendants, “Interrogatory No. 17 is identical to Interrogatory 16[,] except it requests information relating to the date of reduction to practice for the alleged invention.” (Id. at 12 n. 3.) Defendants also assert that Plaintiff's answer to Interrogatory No. 17 is almost identical to the answer to Interrogatory No. 16. (Id.) Defendants claim that this information is crucial for determining “whether the Patents-in-Suit are anticipated and/or obvious in light of prior art.” Plaintiff relies on Rule 33(d), Fed.R.Civ.P., in objecting to these interrogatory, which allows a party to respond with business records in response to an interrogatory “[i]f the answer to an interrogatory may be determined by examining ... a party's business records ... and if the burden of deriving or ascertaining the answer will be substantially the same for either party ....” (Id. at 13.) Defendants argue that the inventors’ notebooks produced by Plaintiff do not meet this standard because these materials fail to identify the date of conception and reduction to practice. (Id.) Defendants have established that this information is necessary and proportional to the needs of the case. Furthermore, they have established that they are unable to determine this information from the inventors’ notebooks. (Id.) As such, Plaintiff's objections are overruled with respect to the Plaintiff's date of conception and reduction to practice.

*5 In Interrogatory No. 18, Defendants request that Plaintiff:

(Id. at 13.) Plaintiff objected to this Interrogatory by claiming that “it contains technical or legal terms of art” and that Defendants’ definition of prior art is broader than provided under 35 U.S.C. §§ 102-03. Plaintiff also claims that the responsive material “is subject to attorney-client privilege, work-product immunity, and/or any other applicable privilege or immunity.” (Id. at 14.) In its objection, Plaintiff also relied on Rule 33(d) documents, including the file histories of the Patents-in-Suit. (Id.) However, with respect to Plaintiff's 9000 and 7000 machines, Defendants argue that prior-art is highly relevant to their invalidity defenses and that the information requested is not available publicly. (Id.) Defendants have established that the requested information is relevant and necessary to its defenses, especially with respect to Plaintiff's 9000 and 7000 machines; therefore, Plaintiff's objections are overruled with respect this information.

B. Defendants’ Request for Production of Documents

Pursuant to Rule 37 and L.R. 3.04, Defendants also move the Court for an Order compelling Plaintiff to produce responsive documents and materials to their Request for Production. First, Defendants seek to compel Plaintiff's response to Requests Nos. 63-65, 67-70, and 73, requesting the production of responsive financial documents. (Doc. 159 at 15.) Based on Plaintiff's Response and the Plaintiff's counsel's representations to the Court at the Discovery Status Conference, it appears that Plaintiff has already complied with this request, thus rendering it moot. (See Doc. 160 at 17; see also Tr. at 18:12-17 (“We provided them ... with financial information related to damages with respect to three customers that [we] actually knew about before we got this list of 12. Now we're working on ... the other nine.... We expect we can provide all of those documents in 30 days or less.”).) However, Plaintiff shall supplement its responses if necessary or provide Defendants with certification that its discovery responses are complete and that Plaintiff understand that if it improperly withhold documents, it could be subject to sanctions.

Next, Defendants seek documents from Plaintiff “relating or referring to what a reasonable royalty rate would be in this case” in response to Request Nos. 8, 45, 46, 50-53, 55-57, 64, and 66. (Doc. 159 at 17.) According to Defendant, Plaintiff failed to produce responsive documents to these requests. Plaintiff, on the other hand, asserts that:

*6 (Doc. 160 at 8.) Based on Plaintiff's response, these requests are rendered moot. However, Plaintiff shall supplement its responses if necessary or provide Defendants with certification that its discovery responses are complete and that Plaintiff understand that if it improperly withhold documents, it could be subject to sanctions.

Defendants also request that Plaintiff produce responsive documents to Request No. 9 (regarding damages resulting from Defendants’ alleged infringement of the ‘205 and ‘925 patents), and Request No. 71 (requesting “documents sufficient to show the operation, functionality, and features of each of the Covered Products”). (Doc. 159 at 18-19.) Plaintiff's objections to these requests, based on the lack of Protective Order or ESI production protocol, is unpersuasive given the parties’ Stipulation Concerning Discovery. As such, Plaintiff shall provide responses to Request Nos. 9 and 10.

Defendant also seeks to compel Plaintiff's response to Request Nos. 11-15 regarding relevant prior art materials. (Doc. 159 at 21.) Plaintiff also contends that it has already produced all relevant licensing information in response to this request and that some of the materials Defendants seek are “exhibits to a third party's declaration filed with the USPTO during the Second Reexam of the ‘925 patent, and classified by the USPTO as artifacts.” (Doc. 160 at 17.) Plaintiff also asserts that “these artifacts were never and are not in [Plaintiff's] possession[,]” but claims that Defendants can obtain these records from the USPTO for a fee. (Id.) Based on Plaintiff's assertions, Plaintiff's objections with respect to these artifacts, and otherwise publicly available documents not in the possession of Plaintiff, will be sustained. However, with respect to prior art as it relates to Plaintiff's 9000 and 7000 machines, Defendants have established that these records are relevant to Defendants’ defenses and, to the extent the materials are not publicly available and in Plaintiff's possession or control, they are to be produced.

Defendants also request that Plaintiff produce documents regarding its infringement contentions in response to Request Nos. 25-28. (Doc. 159 at 22-23.) Specifically, in Request No. 27, Defendants request “[a]ll [d]ocuments and [t]hings that support, contradict or concern [y]our contention that the Accused Products literally infringe the ‘205 Patent.” (Id. at 22.) Plaintiff claimed to be withholding responsive documents because of lack of a Protective Order or ESI production protocol. (Id.) The Court is unpersuaded by this objection in light of the parties’ Stipulation Concerning Discovery; as such, Plaintiff shall provide updated responses to Request Nos. 25-28.

Lastly, Defendants move the Court for an order compelling Plaintiff to update its “incomplete” Infringement Contentions “to identify where each claim limitation is allegedly found in the Accused Machines” or, in the alternative, to strike Plaintiff's Infringement Contentions. (Id. at 23-24.) Plaintiff, however, argues that “[u]ntil Defendants ... produce information and documents related to the three purported modifications and/or any other modifications but not yet disclosed to [Plaintiff], no update on [Plaintiff's] infringement contentions can meaningfully be made.” (Doc. 160 at 5.) In light of the Court's recent Order compelling the production of Defendants’ source code (Doc. 250), the Court finds that Defendants’ request for Plaintiff's updated Infringement Contentions is premature. See Generac Power Sys. v. Kohler Co., No. 11-cv-1120-JPS, 2012 U.S. Dist. LEXIS 190594, *3-4 (E.D. Wisc. June 6, 2012).

*7 Furthermore, in light of the legitimate concerns raised by Plaintiff and the well-reasoned arguments made in response to the Motion, the undersigned finds that Plaintiff was substantially justified so as to deny Defendants’ request for costs under Rule 37. See, e.g., Suboh v. Bellsouth Bus. Sys., Inc., No. 1:03-cv-0996-CC-CCH, 2004 WL 5550100, at *11 (N.D. Ga. Nov. 17, 2004) (declining to award attorney's fees because “[t]he Court conclude[d] that Defendant was, in part, substantially justified in refusing to produce some of the material requested by Plaintiff.”).

Accordingly, it is ORDERED:

DONE and ORDERED in Jacksonville, Florida on March 29, 2019.

The parties are familiar with the facts in this case, therefore, they are not restated here in length.

Defendant's Second Motion to Compel will be addressed in a separate order.