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Crocs, Inc. v. Effervescent, Inc.

2017 WL 1331145 (D. Colo. 2017)

January 4, 2017

Tafoya, Kathleen M., United States Magistrate Judge

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Summary

The court denied the motion to compel Crocs to produce patent prosecution materials due to the overbroad nature of the request. Crocs had already responded to the request fully with respect to the patents-in-suit, and the request for information about patents from around the world related to the patents-in-suit would produce a huge amount of irrelevant material. Electronically stored information was important in this case as Crocs had sought patent rights in many jurisdictions.

Additional Decisions

CROCS, INC., Plaintiff,
v.
EFFERVESCENT, INC., Holey Soles Holdings, Ltd., DoubleDiamondDistribution,Ltd., and U.S.A. Dawgs, Inc., Defendants

Civil Action No. 06–cv–00605–PAB–KMT

United States District Court, D. Colorado

Signed January 04, 2017

Counsel

Natalie Marie Hanlon–Leh, Wilmer Cutler Pickering Hale & Dorr, LLP, Jared Barrett Briant, Faegre Baker Daniels LLP, Paul Wayne Rodney, Arnold & Porter Kaye Scholer LLP, Denver, CO, Julie Kent, Lara Palanjian, Michael Anthony Berta, Sean Michael Callagy, Arnold & Porter Kaye Scholer LLP, San Francisco, CA, for Plaintiff.
Michael G. Martin, Michael Martin Law, Stephen J. Horace, Alexander Christian Clayden, Alexander Christian Clayden, Lathrop & Gage, LLP, Dan Cleveland, Jr., Fennemore Craig, P.C., Denver, CO, Brian John Elliott, Brian J. Elliott, Attorney at Law, Austin, TX, Christopher W. Hellmich, Hellmich Law Group P.C., Anaheim Hills, CA, David Joseph Kaplan, Jeffery Kyle McClain, U.S.A. Dawgs, Inc., Las Vegas, NV, for Defendants

Tafoya, Kathleen M., United States Magistrate Judge

ORDER

*1 This matter is before the court on “Counterclaim Plaintiffs’ (Dawgs’) Motion to Compel Counterclaim Defendant Crocs to Produce Patent Prosecution Materials”(“Mot.”) [Doc. No. 333]. Plaintiff filed its response on December 19, 2016 (“Resp.”) [Doc. No. 354], and Dawgs[1] filed its reply on December 27, 2016 (“Reply”) [Doc. No. 378].

Dawgs seeks further production from Crocs concerning their Second Set of Requests for Production of Documents, RFP No. 11. The original request to Crocs read

All documents related to the prosecution of any Patent In Suit and any related patent application (in the United States or any foreign country), including, without limitation: (a) any prior art reviewed, searched, considered, or discussed (specifically including with Scott Seamans) before or during any aforementioned prosecution; (b) documents, including memos and notes of any legal counsel, including any opinions of counsel for Crocs, regarding what prior art was available prior to filing of the patent applications for the Patents In Suit, and any decision to disclose or not disclose prior art to the patent office; (c) all documents related to any assertion by Seamans as the “sole inventor” of any patent application; (d) documents from any lawyer or legal advisor, including any opinions of counsel, concerning the patentability or nonpatentability of the subject matter claimed in the patented inventions of the Patents In Suit, including advice that prior art may render the claimed inventions obvious; (e) documents reflecting outside counsel attorney fee bills for legal services; and (f) in-house attorney files.

Mot., Ex. 1. After a hearing with this court on October 6, 2016, Dawgs revised RFP 11 to read

All documents that reference, mention, describe, analyze, summarize or discuss the prosecution of any Patent In Suit and any related patent application (in the United States or any foreign country), including, without limitation: (a) any prior art reviewed, searched, considered, or discussed (specifically including with Scott Seamans) before or during any aforementioned prosecution; (b) documents—including memos and notes of any legal counsel, including any opinions of counsel for Crocs—that reference, mention, describe, analyze, summarize or discuss whether, and if so, what prior art was available prior to filing of the patent applications for the Patents In Suit, and any decision to disclose or not disclose any such prior art to the patent office; (c) all documents that contain, reference, mention, describe, analyze, summarize or discuss any assertion by Seamans that he was and/or is the “sole inventor” of any patent application; (d) documents from any lawyer or legal advisor, including any opinions of counsel, that contain, reference, mention, describe, analyze, summarize or discuss the patentability or non-patentability of the subject matter claimed in the patented inventions of the Patents In Suit, including advice that prior art may render the claimed inventions obvious; (e) outside counsel-attorneys bills or invoices for legal services; and (f) in-house attorney files.

*2 Mot, Ex. 3 (emphasis added).[2]

Crocs claims it has produced the responsive documents within its possession concerning the prosecution of the ’858 and ’789 patents (the patents-in-suit) in the PTO and provided Dawgs with its production from the ITC proceeding on the’858 and ’789 patents.[3] (Resp, Declaration of Sean M. Callagy (“Callagy Declaration”) [Doc. No. 354–1], ¶ 7.) Mr. Callagy states that Crocs produced, during that hearing and now to Dawgs in this case, materials including or having a bearing on prior art and the file history for each patent-in-suit, as well as prior art that may have been disclosed by Scott Seamans to patent prosecution counsel.[4] (Mot., Ex. 5, partial transcript of a hearing before the United States International Trade Commission in case 337–TA–567, [Doc. No. 333–5] (“ITC Sept. 2007 Tr.”) at 4–5.) Mr. Seamans was also cross examined concerning such materials during the ITC proceeding. (Id.) Crocs states that it has provided a privilege log for documents for which it claims privilege. (Id., ¶ 8.)

Further Crocs argues that responding to RFP No. 11 as it is phrased would require Crocs to collect, review and likely log significant volumes of documents from the U.S. and around the world. Mr. Callagy explains that Crocs has sought patent rights in many jurisdictions, including Australia, Brazil, Canada, China, the European Union, Hong Kong, India, Israel, Japan, Mexico, New Zealand, Norway, Panama, South Africa, South Korea and the United States, and that his information is that Crocs has submitted well over five hundred unique patent applications worldwide, and that a substantial number of these (if not a majority) relate to molded clog-type footwear. (Id., ¶ 11.) Given the interpretation of “related to” perceived by Crocs, this would produce a huge amount of irrelevant material. See Von Schwab v. AAA Fire & Cas. Ins. Co., 2015 WL 1840123, at *2 (D. Colo. Apr. 21, 2015) (discovery directed at irrelevant matters “imposes a per se undue burden”).

Excluding the portion of RFP 11 that obviously is seeking to obtain privileged material, the court finds that Crocs has responded to the request fully with respect to the patents-in-suit.

Unfortunately, although some of the prohibited omnibus terms have been deleted from the original request, the most offensive one, the request for information about patents from around the world related to the patents-in-suit, remains part of the request. The request itself, even as modified, did not refer to a “patent family” as argued by Dawgs, but rather simply calls for information about every patent or patent application related to the patents-in-suit. Dawgs now argues in its Reply that “ ‘related’ patents and patent applications are those patents and applications (both foreign and domestic) that claim priority through a common application.” (Reply at 2.) Had the request actually contained this limitation and confined itself to a patent family, it is possible the court would not have had to grapple with this issue.[5] It is abundantly clear from Crocs’s Response that Plaintiff was completely unaware that Dawgs was limiting its requests as stated in the Reply because it did not address in its response whether or not it would have produced for discovery other patents or patent litigation if it had been within the families of the patents-in-suit. Such a limitation was not included in the request or in any follow up communications. The court therefore reads the amended RFP 11 as written and agrees that the omnibus provision creates an impermissibly overbroad request that would result in the inclusion of a large amount of irrelevant documents and a huge amount of time expenditure to collect, review and produce this volume.

*3 Also, Dawgs has not limited the request concerning relevant time frame, again creating an overbreadth issue.

Finally, deliberately asking for documents sure to contain privileged materials is improper and would require additional abundant hours of review and redaction for privilege on this multitude of documents, most of which will be irrelevant.

Therefore, it is ORDERED

“Counterclaim Plaintiffs’ (Dawgs’) Motion to Compel Counterclaim Defendant Crocs to Produce Patent Prosecution Materials” [Doc. No. 333] is DENIED.

Footnotes

[1]

Defendants/Counterclaim Plaintiffs refer to themselves as “Dawgs” both collectively and singly. (Mot. at 1, n. 1.) The court will adopt the same convention.

[2]

Dawgs seeks to further refine its request in its Motion at page 6. The time to have refined the request was when it was served on the Plaintiff and during the conferral process, which Crocs states was never undertaken by Dawgs prior to filing the instant motion.

[3]

It appears that Dawgs may dispute this. (Reply at 4.) The court, in this Order, is relying on the representation in paragraph 7, and if such materials have not been fully produced as stated by Mr. Callagy, they must be produced forthwith as they are material and discoverable.

[4]

During the ITC hearing the attorney-client privilege was waived with respect to the topic of what Mr. Seamans produced to his prosecution counsel. That counsel was made available to testify. No one actually deposed the prosecution attorney(s). See ITC Sept. 2007 Tr. at 5.

[5]

Proper conferral before filing the motion may have resolved these issues.