Knauf Insulation, LLC v. Johns Manville Corp.
Knauf Insulation, LLC v. Johns Manville Corp.
2019 WL 13217373 (S.D. Ind. 2019)
July 15, 2019
Dinsmore, Mark J., United States Magistrate Judge
Summary
The court ordered JM to provide any ESI that is relevant to the case, including any facts or documents relating to formaldehyde testing that was done for business purposes but that was outside of JM's normal practice. The court also ordered JM to respond to Interrogatory 50 as it relates to formaldehyde release during the entire process of manufacturing the relevant products.
Additional Decisions
KNAUF INSULATION, LLC, KNAUF INSULATION GmbH, KNAUF INSULATION SPRL, Plaintiffs,
v.
JOHNS MANVILLE CORPORATION, JOHNS MANVILLE, INC., Defendants
v.
JOHNS MANVILLE CORPORATION, JOHNS MANVILLE, INC., Defendants
No. 1:15-cv-00111-TWP-MJD
United States District Court, S.D. Indiana, Indianapolis Division
Filed July 15, 2019
Counsel
Blake R. Hartz, Matthew M. Gardlik, Spiro Bereveskos, Daniel James Lueders, Woodard Emhardt Henry Reeves & Wagner, LLP, Indianapolis, IN, Briana Lynn Clark, Duane R. Denton, Meaghan Klem Haller, Dentons Bingham Greenebaum LLP, Indianapolis, IN, Brent R. Baughman, Dentons Bingham Greenebaum LLP, Louisville, KY, for Plaintiffs Knauf Insulation, LLC, Knauf Insulation Sprl.Blake R. Hartz, Matthew M. Gardlik, Spiro Bereveskos, Daniel James Lueders, Woodard Emhardt Henry Reeves & Wagner, LLP, Indianapolis, IN, Briana Lynn Clark, Duane R. Denton, Dentons Bingham Greenebaum LLP, Indianapolis, IN, Brent R. Baughman, Dentons Bingham Greenebaum LLP, Louisville, KY, for Plaintiff Knauf Insulation GmbH.
Bina G. Patel, Pro Hac Vice, Catherine R. Lacey, Pro Hac Vice, Charles Verhoeven, Pro Hac Vice, David D. Doak, Pro Hac Vice, Lindsay Cooper, Pro Hac Vice, Melissa J. Baily, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA, Brett J. Arnold, Pro Hac Vice, Ella K. Hallwass, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Redwood Shores, CA, Brice C. Lynch, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Redwood City, CA, Edward J. Mayle, Pro Hac Vice, Kevin M. Bell, Kristopher L. Reed, Pro Hac Vice, Travis D. Whitsitt, Pro Hac Vice, Kilpatrick Townsend & Stockton LLP, Denver, CO, Hannah Elizabeth Dawson, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Boston, MA, Jaclyn Michelle Flint, James W. Riley, Jr., Riley Bennett Egloff LLP, Indianapolis, IN, Lance Yang, Pro Hac Vice, Scott Watson, Pro Hac Vice, Valerie Anne Lozano, I, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA, Owen Fullerton Roberts, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, New York, NY, for Defendants.
Dinsmore, Mark J., United States Magistrate Judge
ORDER ON PLAINTIFFS’ MOTION TO COMPEL RESPONSE TO INTERROGATORY NO. 50 [DKT. 423]
*1 This matter is before the Court on the Plaintiffs’ Motion to Compel Response to Interrogatory No. 50 [Dkt. 423]. For the reasons set forth below, the Court GRANTS IN PART and DENIES IN PART the motion.
I. Background
The Plaintiffs in this case (hereinafter referred to as “Knauf”) allege that the “Formaldehyde-Free” insulation products manufactured and sold by the Defendants (hereinafter referred to as “JM”) infringe upon certain patents held by Knauf. Specifically, as relevant to the instant motion, Knauf alleges in its Fifth Amended Complaint that JM's products infringe because they use a bio-based binder that is “from a solution that liberates less than 5 ppm (parts per million) formaldehyde as a result of drying and/or curing” or “less than 1 ppm (parts per million) formaldehyde as a result of drying and/or curing.” [Dkt. 308 at 7.]
At issue is Knauf's Interrogatory No. 50:
Identify all facts and documents that you contend shows [sic] that formaldehyde is released during the manufacture, packaging, storage, installation or use of your “Formaldehyde-FreeTM” insulation products, or that formaldehyde is resident in such products, including the facts, documents, and witnesses that support or refute your contention and/or you will present at trial or by motion regarding the release of formaldehyde during the manufacture or use of your “Formaldehyde-FreeTM” insulation products.
[Dkt. 424-2 at 21]. JM's response reads as follows:
JM objects to Interrogatory No. 50 as not seeking information that is relevant and proportional to the needs of the case. Various of Knauf's asserted patents recite a “substantially formaldehyde free binder” or a “formaldehyde free binder” or words to that effect. See Pat. No. 8,114,210 at claims 10, 11; Pat. No. 8,940,089 at claim 1; Pat. No. 9,039,827 at claim 1; Pat. No. 9,469,747 at claim 1; Pat. No. 9,464,207 at claim 1. On a provisional basis, subject to ongoing discovery, including expert discovery, JM interprets the claim language “substantially formaldehyde free” and “formaldehyde” free as follows. A binder that is “substantially formaldehyde free” is one that “liberates less than 5 ppm formaldehyde as a result of drying and/or curing (or appropriate tests simulating drying and or curing.” A binder that is “formaldehyde free” is one that “liberates less than 1 ppm formaldehyde as a result of drying and/or curing (or appropriate tests simulating drying and/or curing).” These definitions are provided in, for example, Patent No. 8,114,210 at column 1, lines 47-53:
Binder solutions used in accordance with the present invention may be “substantially formaldehyde free”, that is to say that they liberate less than 5 ppm formaldehyde as a result of drying and/or curing (or appropriate tests simulating drying and/or curing). Such hinder solutions arc preferably “formaldehyde free”, that is the say they liberate less than 1 ppm formaldehyde in such conditions.
Note that the specification (1) sets off these terms in quotation marks (i.e., “substantially formaldehyde free” and “formaldehyde free”), (2) then uses the phrase “that is to say ...,” and (3) precedes such language with the term of art “in accordance with the present invention.” See id. This are [sic] clear and unmistakable signals that the patentee was acting as his own lexicographer, and the patentee's definition therefore governs. Given that the relevant asserted patent claims define “substantially formaldehyde free” and “formaldehyde free” in reference to levels of formaldehyde being “liberated” during “drying and/or curing,” Interrogatory No. 50 is overbroad because it seeks information relating to formaldehyde being released during “the manufacture, packaging, storage, installation or use of your ‘Formaldehyde-FreeTM’ insulation products, or that formaldehyde is resident in such products.” JM will therefore provide its response only with respect to formaldehyde being liberated during “drying and/or curing” of the binder solutions used to manufacture JM's products, in accordance with the asserted patents’ definitions of “substantially formaldehyde free” and “formaldehyde free,” discussed above, because that is the only relevant information.
*2 JM further objects to Interrogatory No. 50 as being vague and ambiguous because in the patents’ definitions of “substantially formaldehyde free” and “formaldehyde free,” discussed above, JM does not understand what the phrases “or appropriate tests simulating drying and/or curing” and “in such conditions” means. These claim terms are indefinite because the patents’ definitions of them, and other disclosures in the patents and their prosecution histories fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. In particular, the patents’ definitions do not specify the “drying and/or curing” conditions (e.g., temperature, time, etc....) and do not define “appropriate tests simulating” such undefined conditions. The claims at issue are therefore indefinite.
The patents contemplate using “binders” with complex chemistries, wherein such chemistries are heated to high temperatures, on the order of, at least, hundreds of degrees. The conditions of such reactions are critical—in one set of conditions, more than 1 ppm (or 5 ppm) formaldehyde might be liberated, in a different set of conditions, less (or more) formaldehyde may be liberated. The level of formaldehyde liberation—for all chemistries and for all conditions—is not something that can be predicted with certainty, but rather, experiments must be done. Indeed, a person of ordinary skill in the art cannot simply inspect a particular chemistry and know, from the ingredient list alone, whether a binder made with such a chemistry will “liberate” a particular amount of formaldehyde (e.g., more than 1 ppm) given a set of conditions when such chemistry is cured and/or dried. This is a fundamental problem with the relevant asserted claims, as properly construed. Claims—such as these—that have an indefinite scope cannot be infringed, as the first step of any proper infringement analysis involves claim construction, which is a legal exercise for the Court. When the patents’ express definitions of the claim terms at issue are applied—as they must be—the Interrogatory is fatally vague and ambiguous.
JM further objects to Interrogatory No. 50 as seeking information protected by the work-product doctrine. JM does not sell the accused binder solutions to the public; rather, the accused binder solutions are used internally by JM during the manufacture of the accused insulation products. In the normal course of its business, JM does not monitor the level of formaldehyde liberation that may occur during the curing and/or drying of the accused binder solutions during manufacturing of the accused insulation. Any information that may exist or will exist was therefore generated for purposes of this litigation and is immune from discovery.
Subject to and without waiving the foregoing Specific and General Objections, JM responds as follows:
After making a reasonable inquiry, at this time JM lacks knowledge or information as to whether the accused binders used to make JM's accused products liberate less than 1 ppm or less than 5 ppm formaldehyde as a result of drying and/or curing. As explained above, JM does not sell the accused binder solutions to the public; rather, the accused binder solutions are used internally by JM during the manufacture of the accused insulation products. And as also explained above, in the normal course of its business, JM does not monitor the level of formaldehyde liberation that may occur during the curing and/or drying of the accused binder solutions during manufacturing of the accused insulation. Moreover, even though Knauf bears the burden of showing that JM infringes the relevant claims, Knauf has not provided to JM in discovery any testing evidence showing that JM infringes the asserted claims reciting “substantially formaldehyde free” and “formaldehyde free,” as those claim terms are properly construed.
*3 By way of further response, at a time and in a manner agreeable to all parties, JM will provide to Knauf uncured samples of JM's accused binder chemistries (the details of which are set forth in JM's Responses to Knauf's Interrogatory Nos. 3 and 4), so that Knauf can conduct its own testing, if it chooses to do so.
At this time, JM has not decided which, if any, facts, documents, or witnesses it will use to present at trial or by motion in support of its contentions, and JM is not aware of any facts, documents, or witnesses that refute its contentions.
[Dkt. 424-2 at 21-25.]
II. Legal Standard
A party may seek an order to compel discovery when an opposing party fails to respond to discovery requests or has provided evasive or incomplete responses. Fed. R. Civ. P. 37(a)(2)-(4). The burden “rests upon the objecting party to show why a particular discovery request is improper.” Kodish v. Oakbrook Terrace Fire Prot. Dist., 235 F.R.D. 447, 449-50 (N.D. Ill. 2006). The objecting party must show with specificity that the request is improper. Graham v. Casey's Gen. Stores, 206 F.R.D. 251, 254 (S.D. Ind. 2002).
Under Federal Rule of Civil Procedure 26(b)(1), generally “[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.” Relevant information does not need to be “admissible to be discoverable.” Fed. R. Civ. P. 26(b)(1).
III. Discussion
JM's first two objections are clearly without merit. JM begins from the premise that its “objections of relevance and ‘vague and ambiguous’ are valid” because “the key term in the interrogatory—‘formaldehyde free’—is undisputedly a claim term found in numerous asserted claims from Knauf's patents” and “specific aspects of the definition of formaldehyde free found in Knauf's patents, namely ‘or appropriate tests simulating drying and/or curing’ and ‘in such conditions’ are, in fact vague.” [Dkt. 443 at 2.] The problem with this argument is that the term “formaldehyde free” is not the key term in Interrogatory 50. In fact, the term “formaldehyde free” does not appear in Interrogatory 50 at all, except as the name of JM's products; nor do the terms that JM argues are vague appear in the interrogatory. JM is not actually arguing that the interrogatory itself if vague and ambiguous. Nor does JM actually believe the first sentence of its objection—“JM objects to Interrogatory No. 50 as not seeking information that is relevant and proportional to the needs of the case”—as JM concedes that at least some of the information responsive to the interrogatory is relevant.
JM's actual position is that the interrogatory is overly broad because it does not track the terms of the relevant patent claims. Specifically, because the patent claims speak only to less than 5 ppm of formaldehyde being liberated during “drying and/or curing,” JM argues that the interrogatory should also be so limited. Therefore, JM argues, that portion of the interrogatory that asks for information regarding packaging, storage, installation, or use of its products seeks irrelevant information.
The Court need not resolve that objection, however, because in its brief JM states, unequivocally, that “JM does not contend, and has not contended, that formaldehyde is released during ‘packaging, storage, installation, or use’ of JM's products,” [Dkt. 443 at 8], thus rendering the objection irrelevant. Knauf takes umbrage at the fact that JM failed to include this unequivocal statement in its response to Interrogatory 50, see [Dkt. 461 at 3], but the interrogatory, as written, did not actually ask whether JM made any contentions, but rather presupposed that it did by asking JM to “[i]dentify all facts and documents that you contend shows [sic] that formaldehyde is released ... including the facts, documents, and witnesses that support or refute your contention.” JM cannot be faulted for failing to provide an answer that was not sought by the plain language of the interrogatory; the fault for that lies in the convoluted drafting of Interrogatory 50. That said, however, JM has now made an unequivocal statement regarding its contentions in its brief and, absent an appropriate supplemental interrogatory response, it will be bound by that statement, which is a judicial admission. See Medcom Holding Co. v. Baxter Travenol Labs., Inc., 106 F.3d 1388, 1404 (7th Cir. 1997) (“ ‘Judicial admissions are formal concessions in the pleadings, or stipulations by a party or its counsel’ ”) (quoting Keller v. United States, 58 F.3d 1194, 1198 n.8 (7th Cir. 1995), and citing In re Lefkas Gen. Partners, 153 B.R. 804 (N.D. Ill. 1993) (Binding judicial admissions are “any ‘deliberate, clear and unequivocal’ statement, either written or oral, made in the course of judicial proceedings.”)).
*4 That leaves the issue of whether JM's response regarding formaldehyde release during the manufacture of its “Formaldehyde Free” products is sufficient. That answer is as follows:
After making a reasonable inquiry, at this time JM lacks knowledge or information as to whether the accused binders used to make JM's accused products liberate less than 1 ppm or less than 5 ppm formaldehyde as a result of drying and/or curing. As explained above, JM does not sell the accused binder solutions to the public; rather, the accused binder solutions are used internally by JM during the manufacture of the accused insulation products. And as also explained above, in the normal course of its business, JM does not monitor the level of formaldehyde liberation that may occur during the curing and/or drying of the accused binder solutions during manufacturing of the accused insulation.
[Dkt. 424-2 at 24.] In response, Knauf points to several documents that it found by culling through the thousands of documents produced by JM and argues that those documents demonstrate that JM has, in fact, performed testing for formaldehyde, and yet JM did not identify those documents in response to Interrogatory 50. In response, JM explains that the documents identified by Knauf either (1) do not expressly relate to formaldehyde testing, but rather involve testing for volatile organic compounds, which could have included formaldehyde but did not necessarily do so; or (2) relate to testing of the binder solution, not JM's products, while the interrogatory asks about formaldehyde release during the manufacturing of the products or formaldehyde in the finished products themselves. In its reply, Knauf does not dispute JM's characterization of the documents in question, but essentially argues that any formaldehyde testing is relevant—even testing on the binding solution itself—because
[e]vidence that JM found no formaldehyde “released” or “resident” during testing or other analysis tends to prove that the same is true during its manufacturing process. Since JM starts with a binder composition that has no formaldehyde in it and sells a “Formaldehyde-Free™” product, it is “more probable” that there is no formaldehyde released during actual manufacturing under Rule 401(a). Since laboratory tests were done by JM of the binder and its drying and curing, and no formaldehyde was released, it is “more probable” that no formaldehyde is released during actual manufacturing.
[Dkt. 461 at 2.] The problem is that Interrogatory No. 50 does not ask for information about any formaldehyde testing. It asks for facts and documents that “you contend show [sic] that formaldehyde is released during the manufacturing ... of your Formaldehyde-FreeTM” insulation products, or that formaldehyde is resident in such products” or that “refute your contention.” Knauf may be correct that “circumstantial evidence is relevant proof” and that other kinds of formaldehyde testing might constitute relevant circumstantial evidence in this case, but it is not JM's obligation to gather and categorize evidence in that way; it is JM's obligation to answer the interrogatories as propounded. The Court finds that it has done so with regard to Interrogatory 50, with two exceptions.
*5 First, JM's answer states that “in the normal course of its business, JM does not monitor the level of formaldehyde liberation that may occur during the curing and/or drying of the accused binder solutions during manufacturing of the accused insulation.” It is unclear whether the qualifier “in the normal course of business” is solely intended to reflect JM's withholding, on work product privilege grounds, information relating to testing that occurred solely in response to this lawsuit,[1] or whether it also excludes testing or monitoring that may have been done for business purposes but that was outside of JM's “normal” practice. If JM has facts or documents relating to the latter—that is, testing or monitoring of formaldehyde liberation during the manufacturing of the accused products that was not done for the purpose of this lawsuit—it shall identify those within fourteen days of the date of this order.
Second, the Court agrees with Knauf that JM's limiting of its answer to just curing and/or drying, as opposed to the entire manufacturing process, was not appropriate. JM has not demonstrated that information that formaldehyde is or is not released during the manufacturing process, even if the testing in question was not conducted during the drying or/or curing stage, is not relevant. JM shall respond to Interrogatory 50 as it relates to formaldehyde release during the entire process of manufacturing the relevant products within fourteen days of the date of this order.
SO ORDERED.
Distribution:
Service will be made electronically on all ECF-registered counsel of record via email generated by the Court's ECF system.
Footnotes
Knauf does not suggest that such testing would not be protected by the work product privilege.