Luminara Worldwide, LLC v. Liown Elec. Co.
Luminara Worldwide, LLC v. Liown Elec. Co.
2016 WL 11783759 (D. Minn. 2016)
December 14, 2016

Noel, Franklin L.,  United States Magistrate Judge

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Summary
The court granted Defendants' request for discovery related to their third example, ordering Disney to produce ESI in the form of documents, communications, photos, videos, and other material related to the Haunted Mansion. The court clarified that this ESI must be produced in accordance with the existing discovery deadlines and applicable rules and regulations.
Additional Decisions
Luminara Worldwide, LLC, Plaintiff,
v.
Liown Electronics Co. Ltd. et al., Defendants.
Luminara Worldwide, LLC, Plaintiff,
v.
RAZ Imports, Inc. et al., Defendants
Case No. 14-cv-3103 (SRN/FLN), Case No. 15-cv-3028 (SRN/FLN)
United States District Court, D. Minnesota
Filed December 14, 2016

Counsel

Daniel R. Hall, Joseph W. Anthony, Anthony Ostlund Baer & Louwagie PA, Mpls, MN, for Plaintiffs.
Joseph P. Reid, Pro Hac Vice, Thomas Nathan Millikan, Perkins Coie LLP, San Diego, CA, Peter Kohlhepp, Tara C. Norgard, Carlson Caspers Vandenburgh & Lindquist PA, Minneapolis, MN, for Defendants.
Noel, Franklin L., United States Magistrate Judge

Opinion

*1 THIS MATTER came before the undersigned United States Magistrate Judge on November 16, 2016, on Defendants’ motion for contempt (ECF No. 674, 14-cv-3103; ECF No. 169, 15-cv-3028), and Defendants’ motion to compel (ECF No. 175, 15-cv-3028). For the reasons set forth below, Defendants’ motion for contempt is DENIED, and Defendants’ motion to compel is GRANTED in part and DENIED in part.
 
A. Defendants’ Motion for Contempt
Plaintiff claims that it is the exclusive licensee of Disney Enterprises's (“Disney”) artificial flame technology, which may be used in certain lighting fixtures and artificial candles. Third Am. Compl. ¶ 20, ECF No. 131, 14-cv-3103. These consolidated cases stem from Plaintiff's allegation that Defendants infringed its exclusive license. Id. On January 14, 2015, Plaintiff brought assorted infringement claims against four patents: ‘355, ‘319, ‘869, and ‘166. Second Am. Compl. ¶ 20–23, ECF No. 88, 14-cv-3103. On June 23, 2016, Plaintiff added infringement claims against the ‘118 and ‘569 patents. ECF No. 131, 14-cv-3103. Throughout the pendency of the consolidated cases, Plaintiff has maintained that Disney originally developed the artificial flame technology for use in the Haunted Mansion ride at Disneyland. See, e.g., Pl.’s Mem. in Supp. of Mot. to Amend 2, ECF No. 67, 14-cv-3103.
 
Doug Patton is a named inventor on five patents-in-suit. Pl.’s Mem. in Supp. of Mot. For Pro. Order 3, ECF No. 621, 14-cv-3103. Patton is one of the founding members of Plaintiff's predecessor-in-interest, Candella, LLC, and is Plaintiff's paid consultant. Id. The Court has issued several orders addressing the scope of Patton's proposed expert testimony. See, e.g., Order at 11–12, ECF No. 556, 14-cv-3103; Order at 5, ECF No. 635, 14-cv-3103; ECF No. 149, 15-cv-3028; Order at 10–12, ECF No. 687, 14-cv-3103; ECF No. 192, 15-cv-3028.
 
Although Disney is not a party in the consolidated cases, Defendants have consistently sought discovery from it related to prior art in the patents-in suit. See McKeever Decl. Ex. 1, ECF No. 307, 14-cv-3103. The Court has issued several orders directing Disney to produce all documents relating to imitation candles used on or before September 30, 2008, in all Disney theme parks, and produce all documents and communications relating to Disney and Plaintiff's negotiations over the licensing agreements covering the patents-in-suit at that time: ‘355, ‘319, ‘869, and ‘166. Order at 8–9, ECF No. 340, 14-cv-3103; Order at 10–11, ECF No. 354, 14-cv-3103; Order at 19, ECF No. 427, 14-cv-3103. The Court has also issued two orders directing Plaintiff to produce material identified in Disney's privilege log relating to information Patton considered in connection with his proposed expert testimony. ECF No. 635, 14-cv-3103; ECF No. 149, 15-cv-3028; ECF No. 687, 14-cv-3103; ECF No. 192, 15-cv-3028.
 
Defendants argue that Disney still has not produced the Court ordered material. Def's. Mem. in Supp. of Mot. For Contempt at 13–15, ECF No. 676, 14-cv-3103; ECF No. 171 at 13–15, 15-cv-3028. Specifically, Defendants argue that Disney has not produced discovery related to the patent, licensing agreements or its communications with Patton. Id. Defendants request that Disney produce discovery related to the Court's previous orders and supplement its privilege log.[1] Id. Disney and Plaintiff argue that Disney has produced all court ordered material and that the parties had previously agreed that privilege logs would not be updated after the start of the Luminara v. Liown et al., 14-cv-3103, case. Disney's Opp'n Mem. at 16–23, ECF No. 684, 14-cv-3103; ECF No. 187 at 16–23; Pl.’s Opp'n Mem. at 16–23, ECF No. 685, 14-cv-3103; ECF No. 188 at 16–23, 15-cv-3028.
 
*2 Although Defendants entitled the instant motion a motion for contempt, Defendants do not identify under which rule or statute the Court should sanction Disney. To the extent that Defendants seek discovery, the Court declines to order discovery production in the context of a motion for contempt. In addition, the Court concludes that Disney has fulfilled its discovery obligations under the Court's previous orders. The parties agreed that privilege logs would not be updated after the Luminara v. Liown et al., 14-cv-3103, case began and the Court sees no compelling reason why that agreement should not extend to Disney given that it has participated in discovery and has been the subject of several discovery motions. Furthermore, the Court did not order Disney to produce discovery related to Patton's proposed expert testimony, but ordered Plaintiff to produce all Patton related material including information contained in Disney's privilege log. ECF No. 635 at 5; ECF No. 687 at 10–12. Finally, Disney has produced the patent, licensing agreement discovery covering the patents subject to the Court's previous orders: ‘355, ‘319, ‘869, and ‘166. Although Defendants are correct that Disney has not produced discovery related to the ‘118 and ‘569 patent, these patents were not added to the case until June 23, 2016, well before the Court's previous discovery orders.
 
B. Defendants’ Motion to Compel
Daniel Van Lieshout is a Disney contractor who designed flameless candles for use at the Disney World Haunted Mansion. Defs.’ Mem. in Supp. of Mot. 1–2, ECF No. 177, 15-cv-3028. Defendants allege that the presence of VanLieshout's flameless candles in the Haunted Mansion and their similar design to the patents-in-suit render them prior art under 35 U.S.C.§ 102(b). Id. To that end, Defendants have pursed discovery related to the Van Lieshout flameless candles. Id.
 
On February 12, 2016, Defendants served Disney with a document subpoena seeking:
Request No. 9: All documents relating to or reflecting the design, development, operation, modification, installation, purchase, procurement, display to the public, and/or maintenance of any imitation candles used at any theme park attraction prior August 6, 2010, including but not limited to the: Disneyland Haunted Mansion, Disney World Haunted Mansion (including the 2007 enhancements), Tokyo Disneyland Haunted Mansion, and Phantom Manor at Disneyland Paris.
Request No. 10: All communications, including email communications, relating to any imitation candles used at any theme park attraction prior to August 6, 2010, including but not limited to the: Disneyland Haunted Mansion, Disney World Haunted Mansion (including the 2007 enhancements), Tokyo Disneyland Haunted Mansion, and Phantom Manor at Disneyland Paris.
Id. On May 16, 2016, Defendants served Disney with a supplemental document subpoena, seeking:
Request No. 31: All communications and documents relating to the installation or use of any flameless candles in the Disney World Haunted Mansion prior to September 30 2008, including but not limited to (i) documents sufficient to show the locations where the candles were used and the approximate distances between the candles and visitors to the attraction, and (ii) documents sufficient to show the date of installation and first display to the public of any candles installed prior to September 30, 2007.
Id. at 3. Disney objected to those requests, because, inter alia, it believed that this discovery was already produced. Opp'n Mem. 6–7, ECF No. 183, 15-cv-3028. Throughout June 2016, the parties exchanged a series of letters regarding Requests Nos. 9, 10, and 31. Id. On July 2, 2016, Defendants thanked Disney for explaining its opposition, and from Disney's perspective, the matter was resolved. Id. at 8.
 
However, on October 11, 2016, Defendants sent Disney a letter, identifying four examples of discovery encompassed by Requests Nos. 9, 10, and 31 that Disney had failed to produce:
1.) All documents related to individuals who had access to the Haunted Mansion in August and September of 2007, including but not limited to, for example, Walt Disney Imagineering employees, effects installers, maintenance personnel, janitorial staff, and press, cast members, or visitors attending backstage, behind-the-scene, or Disney University tours;
2.) All documents related to any incidents in September of 2007 where the Haunted Mansion ride was stopped and evacuated, and documents sufficient to show Disney's plans and procedures for evacuation;
*3 3.) All photos and videos released to the press or public showing the staircase scene, seance scene, or imitation candle effects installed in the Disney World Haunted Mansion (including the 2007 enhancements);
4.) Documents sufficient to show Disney World daily attendance, Disney World daily ticket and pass revenue, and Disney World Haunted Mansion daily attendance from September 2006 until September of 2008.
ECF No. 177 at 4, 15-cv-3028. On October 17, 2016, Disney informed Defendants that it would not produce documents responsive to the four examples. Id.
 
Defendants now move to compel Disney's full production of discovery responsive to Requests Nos. 9, 10, and 31. Id. at 13. Specifically, Defendants seek discovery related to the four October 11, 2016, examples that they contend is material Disney must produce pursuant to Requests Nos. 9, 10, and 31. Id. Disney argues that the instant motion should be denied because it has already produced the entirety of discovery responsive to Requests Nos. 9, 10, and 31, and the four October 11, 2016, examples are outside the scope of Requests Nos. 9, 10, and 31. ECF No. 183 at 6–7, 15-cv-3028.
 
“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense ....” Fed. R. Civ. P. 26(b)(1). When a party fails to comply with a properly issued subpoena, Federal Rule of Civil Procedure 45(d)(2)(B)(i) allows the serving party to seek an order compelling production.[2]
 
Requests Nos. 9, 10, and 31 are part of Defendants’ properly issued document subpoenas, and are therefore, subject to Rule 45(d)(2)(B)(i). Defendants’ October 11, 2016, letter does not constitute a separate discovery request or document subpoena. Rather, the four examples identified in the letter are renewed requests for discovery related to Requests Nos. 9, 10, and 31. As such, Disney is required to produce discovery related to Defendants’ October 11, 2016, letter only to the extent that the four examples are reasonably related to Requests Nos. 9, 10, and 31.
 
The Court concludes that Defendants are not entitled to discovery related to Defendants’ second and fourth examples. Example two identifies information related to evacuation procedures and 2007 evacuation incidents at the Haunted Mansion. ECF No. 177 at 4, 15-cv-3028. Request Nos. 9, 10, and 31 relate generally to discovery on the location of imitation candles at various Disney theme parks and on various Disney attractions. Id. at 2. Disney could not have reasonably anticipated that discovery requests targeting the location, display, and maintenance of flameless candles at its theme parks encompassed discovery related to evacuation procedures. Example four identifies information regarding Disney revenues and theme park attendance from 2006 through 2008. Id. at 4. Again, Disney could not have reasonably interpreted Requests Nos. 9, 10, and 31—discovery requests related to imitation candles—to include a broad request for discovery related to its revenue stream and theme park attendance.
 
The Court concludes that Defendants are entitled to limited discovery related to Defendants’ first and third examples. Request No. 9, in part, seeks discovery related to the public display and/or maintenance of imitation candles used at the Disney World Haunted Mansion ride prior to August 6, 2010. Id. at 2. Defendants’ first example identifies discovery related to Disney engineers, effects installers, maintenance personnel, and janitorial staff who had access to the Haunted Mansion in August and September 2007. Id. at 4. This request is consistent with discovery related to imitation candle, maintenance at the Haunted Mansion ride, a form of discovery that Defendants seek under Request No. 9. Therefore, the Court orders Disney to produce discovery responsive to Defendants’ first example.
 
*4 Defendants’ third example identifies discovery related to public photos and videos showing various scenes and candle effects installed on the Haunted Mansion. Id. In essence, Defendants third example identifies discovery related to public displays of imitation candles—discovery Defendants explicitly seek in Request No. 9. Id. at 2. However, Request No. 9 seeks public display discovery prior to August 6, 2010. Id. Defendants’ third example does not include a similar temporal limitation. Therefore, the Court orders Disney to produce discovery responsive to Defendants’ third example to the extent that it has this material in its possession from before August 6, 2010. In all other respects, the request is denied.[3]
 
C. Order
Based upon the foregoing, and all of the files, records, and proceedings herein, IT IS HEREBY ORDERED that:
1. Defendants’ motion for contempt (ECF No. 674, 14-cv-3103; ECF No. 169, 15-cv-3028) is DENIED.
2. Defendants’ motion to compel (ECF No. 175, 15-cv-3028) is GRANTED in part and DENIED in part, as follows:
a. Defendants’ request for discovery related to their second and fourth discovery examples, submitted in their October 11, 2016, letter to Disney, is DENIED.
b. Defendants’ request for discovery related to their first and third discovery examples, submitted in their October 11, 2016, letter to Disney, is GRANTED in part and DENIED in part, as follows:
i. Defendants’ request for discovery related to their first example, submitted in their October 11, 2016, letter to Disney, is GRANTED. Disney must produce this discovery pursuant to Defendants’ Request No. 9.
ii. Defendants’ request for discovery related to their third example, submitted in their October 11, 2016, letter to Disney, is GRANTED to the extent Disney has responsive information in its possession from before August 6, 2010. Disney must produce this discovery pursuant to Defendant's Request No. 9. In all other respects, this request is DENIED.
 
DATED: December 13, 2016

Footnotes
Disney stipulated that the Haunted Mansion re-opened on September 13, 2007. See ECF No. 690.
Defendants only seek relief under Rule 45, and not under other authority addressing motions to compel discovery.
Nothing in this Order should be construed as amending the existing discovery deadlines. See Order, ECF No. 701.