eDiscovery Assistant

Handy v. Del. River Surgical Suites, LLC

2024 WL 1539599 (E.D. Pa. 2024)

February 29, 2024

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Summary

The court ruled that the defendant, BCSS, must produce certain ESI requested by the plaintiff, Dr. Handy, including detailed financial information, patient data subject to HIPAA analysis, studies and market research related to the defendant's logo, and documents related to a share purchase and updated operating agreement.

Additional Decisions

ROBERT HANDY, Plaintiff,
v.
DELAWARE RIVER SURGICAL SUITES, LLC d/b/a BUCKS COUNTY SURGICAL SUITES, et al. Defendants

CIVIL ACTION No. 2:19-cv-1028-JHS

United States District Court, E.D. Pennsylvania

Filed February 29, 2024

Counsel

Edward T. Kang, Kandis L. Kovalsky, Kyle Garabedian, Beth A. Hurley, Kang Haggerty & Fetbroyt LLC, Philadelphia, PA, for Plaintiff.
Gabriel Montemuro, Patricia Collins, William T. MacMinn, Antheil Maslow & MacMinn, LLP, Doylestown, PA, Samuel W. Cortes, Fox Rothschild LLP, Exton, PA, for Defendant Delaware River Surgical Suites, LLC.
Gabriel Montemuro, Patricia Collins, William T. MacMinn, Antheil Maslow & MacMinn, LLP, Doylestown, PA, for Defendants Kieran D. Cody, Charles B. Burrows, Ninad D. Sthalekar, Thomas H. Vikoren, Sean Butler, Jung Park, Douglas A. Boylan.
Alicia S. Luke, Ashley L. Beach, Kevin W. Boyle, Samuel W. Cortes, Fox Rothschild LLP, Exton, PA, Lindsey Cook, Fox Rothschild LLP, Blue Bell, PA, for Defendant Thomas E. Mackell, M.D., Ltd.

Rohn, James J., Special Master

REPORT AND RECOMMENDATION OF SPECIAL MASTER JAMES J. ROHN, ESQ

I. INTRODUCTION

*1 Before the Special Master is Plaintiff's Motion to Compel Defendants to Make a Complete Document Production in Response to Plaintiff's Requests for Production of Documents (the “Motion”). (Doc. # 334.) Dr. Handy seeks an order compelling all Defendants—Nominal Defendant Thomas E. Mackell, M.D., Ltd. d/b/a Bucks County Orthopedic Specialists (“BCOS”); Delaware River Surgical Suites, LLC d/b/a Bucks County Surgical Suites (“BCSS”); and Kieran Cody, M.D., Charles B. Burrows, M.D., Ninad Sthalekar, M.D., Thomas H. Vikoren, M.D., Sean Butler, D.O., Jung Park, M.D., Douglas A. Boylan, M.D. (the “Individual Defendants”)—to produce certain documents or remove certain redactions.

When Dr. Handy filed the Motion on November 3, 2023, he indicated that the parties had reached agreement on the production of some disputed documents, but the production had not yet occurred. (Doc. # 334-2, Mem. at 6.) Throughout December, January, and now February, the parties have continued to state in filings that productions were forthcoming or that at least some of the issues in the Motion could be resolved. Although BCOS stated as recently as February 27, 2024 that a supplemental production is anticipated in the near future, there is no assurance that the production will fully and imminently resolve the issues as Dr. Handy will still need to review any production. Without a clear end to the parties’ dispute, the Special Master decides all issues that appear unresolved from the parties’ most recent filings and communications in this Report and Recommendation.[1] The Special Master recommends that the Motion be granted in part and denied in part.

II. BACKGROUND

There are two sets of Rule 34 Requests for the Production of Documents served by Dr. Handy at issue in this Motion: the “May Requests” and the “July Requests.” Each set of requests was directed to all defendants. Dr. Handy issued the May Requests on May 16, 2023. (Doc. # 334-5, Exhibit A.) BCOS responded on June 15, 2023, and BCSS (together with the Individual Defendants) responded on June 16, 2023. (Doc. # 334-6, Exhibit B; Doc. # 334-7, Exhibit C.) Dr. Handy issued the July Requests on July 28, 2023. (Doc. # 334-8, Exhibit D.) BCOS and BCSS (together with the Individual Defendants) responded separately, each on August 28, 2023. (Doc. # 334-9, Exhibit E; Doc. # 334-10, Exhibit F.)

The parties met and conferred regarding objections and the alleged failure to produce responsive documents but disputes remained. The specific topics are discussed in more detail in the analysis below. In general, the disputed information consists of marketing information; documents redacted for HIPPA concerns; financial information; patient lists; financial and operational packages; studies and market research; BCSS’ current Operating Agreement; and a USPI Share Purchase document.

*2 The flow of filings is necessary to understand the state of the Motion and the disputes that remain. Filed on November 3, 2023, Dr. Handy's initial memorandum in support of the Motion primarily identified the types of documents that he expected to receive in response to broad requests but were not yet produced. (Doc. # 334-2.). It also described documents that it thought it had the defendants’ agreement to produce but were not yet received. Id. at 6. The initial memorandum contained little detail and almost no legal argument. Id.

BCSS and the Individual Defendants were the first to oppose the Motion on November 28, 2023. (Doc. # 341.) They characterized their disputes with Dr. Handy as pertaining to financial and operational packages, patient lists, and corporate documents. Id. Dr. Handy filed a reply memorandum on December 5, 2023. (Doc. # 345.) Rather than group responses by category, Dr. Handy's reply memorandum argued that BCSS failed to address deficiencies with a number of specific requests. Id.

BCOS opposed Dr. Handy's Motion to Compel on December 5, 2023. (Doc. # 344.) It provided a chart summarizing its position on the status of various disputes, most of which were “resolved” or “largely resolved.” Id. at 2-3. Its argument section begins, “Most of Dr. Handy's Motion is resolved.” Id. at 4. The primary remaining issue was the scope of search terms to be applied to marketing requests. Id. at 3-4.

Dr. Handy received numerous extensions of time to file a reply memorandum to BCOS’ opposition in December and early January. (Doc. Nos. 348, 350, 354.) Dr. Handy ultimately filed his reply to BCOS on January 9, 2024. (Doc. # 357.) The reply memorandum stated, “while Plaintiff believes, as of the date of this filing, that BCOS will continue to make efforts to resolve the outstanding discovery disputes addressed in the Motion, two issues remain unresolved.” Id. at 1-2. The two unresolved issues related to BCOS alleged failure to produce documents responsive to two requests focused on marketing and to produce certain unredacted versions of emails. Id. at 2. Dr. Handy was “hopeful that the parties [would] be able to resolve [the redaction] issue without further Court intervention,” but it remained outstanding. Dr. Handy's reply memorandum concluded, “Should Plaintiff and BCOS resolve the outstanding issues described herein, Plaintiff will immediately notify the Court.” Id. at 5.

The Court assigned the Motion and associated memoranda to the Special Master. (Doc. Nos. 346, 363.) The Special Master requested that the parties file letter briefs of three pages or less on two issues that were underdeveloped in their memoranda. All parties submitted the requested letter briefs on February 9, 2024, the substance of which is discussed in the analysis below. Procedurally, Dr. Handy and BCOS noted that they continued to work toward a resolution of certain issues. Dr. Handy wrote that the parties “will provide an update” and that “Plaintiff expects to receive an additional production of documents relating to Plaintiff's July RFPD Request No. 3 and 9 from BCOS next week.” (Handy Feb. 9, 2024 Letter.) BCOS confirmed that “[t]he parties will revisit the spreadsheets considering this review next week and intend to provide the Special Master with an update regarding any ongoing dispute requiring his resolution.” (BCOS Feb. 9, 2024 Letter.)

Lacking the promised update more than two weeks later, the Special Master requested a status report on February 26, 2024. The parties responded the next day. BCOS explained that its production of spreadsheets with certain redactions removed was taking longer than anticipated because of complications with unredacting Excel spreadsheets. (BCOS Feb. 27, 2024 Email.) It stated that “tomorrow BCOS will be producing the afore-mentioned spreadsheets with redactions removed with respect to certain zip code information.” Id. Dr. Handy confirmed that, as of his writing, given the lack of productions, “the disagreement referenced in Plaintiff's and BCOS's February 9, 2024 letters has not yet been resolved.” (Handy Feb. 27, 2024 Letter.) Additionally, Dr. Handy noted that a production of marketing documents also remained outstanding; thus, that issue was also not resolved. Id.

*3 The Motion to Compel has now been pending for nearly four months, and the parties’ discussions predate the Motion. Thus, the Special Master will resolve the Motion based on the status of the dispute as understood from the parties’ filings and communications without awaiting a final resolution that may never come.

III. THE SPECIAL MASTER'S ANALYSIS

A. The Scope of Discovery

A party “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[.]” Fed. R. Civ. P. 26(b)(1). In discovery, relevance is “interpreted broadly.” Brewer v. Shea, No. 2:20-CV-01203-JFC, 2024 WL 229741, at *2 (W.D. Pa. Jan. 22, 2024). “[A] court's decisions regarding the conduct of discovery, will be disturbed only upon a showing of an abuse of discretion.” Birl v. Ski Shawnee, Inc., No. 3:22-CV-1598, 2023 WL 3743576, at *2 (M.D. Pa. May 31, 2023).

When evaluating the scope of discoverable information, “the Court looks initially to the pleadings.” Trask v. Olin Corp, 298 F.R.D. 244, 263 (W.D. Pa. 2014). Dr. Handy's complaint asserts trademark claims under the Lanham Act and Pennsylvania common law. To succeed on these claims, a plaintiff must establish a likelihood of confusion. Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 709 (3d Cir. 2004). The Third Circuit applies a nonexhaustive list of factors to consider in evaluating likelihood of confusion, known as the “Lapp factors.”[2] Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983); see A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000).

B. The Motion as to BCOS

Based on the Special Master's review of the papers, two issues remain unresolved between Dr. Handy and BCOS.

1. Marketing Documents

Dr. Handy requested documents and communications related to BCOS marketing meetings going back to 1996, as well as studies, market research tests or memoranda (July Request Nos. 3 and 9). (Doc. # 334-8, Exhibit D.) BCOS objected to these requests as “overly broad, unduly burdensome, and unlikely to yield documents relevant to this case,” among other reasons. (Doc. 334-7, Exhibit E.). BCOS previously searched terms going back to 2017 (six months before BCSS opened) and offered to run search terms against all imaged BCOS data. (Doc. # 344, Opp. at 3.) The parties worked together to limit the potentially responsive data through search terms. (Doc. # 357, Reply Mem. at 4; Handy Feb. 9, 2024 Letter.) Although BCOS appears likely to supplement its production based on its discussions with opposing counsel, as of this writing, no supplemental production has occurred so this issue is not yet fully resolved. (Handy Feb. 27, 2024 Letter.)

*4 Because this is a trademark case, marketing issues could be significant. The requested documents are relevant to Dr. Handy's attempts to substantiate the Lapp factors. In particular, the requests relate to “the strength of the BCOS Logo; the channels of trade and advertising through which BCOS and BCSS market their goods and services; and the similarities between BCOS's and BCSS's marketing efforts.” (Doc. # 357, Reply Mem. 3-4.)

The more significant issue regarding the BCOS marketing documents appears to be burden and proportionality. Although the request as made was quite broad, the parties have worked together to narrow the scope of the response and the burden on BCOS through search terms. The parties’ memoranda and correspondence indicate that they have resolved the scope and proportionality, pending the production of documents. (Doc. # 357, Reply Mem. 4, Exhibits 1-4; Handy Feb. 9, 2024 Letter; BCOS Feb. 27, 2024 Email; Handy Feb. 27, 2024 Letter). Therefore, the Special Master recommends that Dr. Handy's Motion to Compel be granted as to the marketing documents (July Request Nos. 3 and 9), limited to the scope as agreed by the parties with a production required no later than 7 days from the entry of the Order on this Motion.

2. Redacted Documents and HIPAA

BCOS redacted certain information from some documents previously produced, citing the Health Insurance Portability and Accounting Act (“HIPAA”) and asserting that the information contains protected patient information. (Doc. # 344, Opp. at 2-3, 7.) Dr. Handy responded that HIPAA should not be a basis to withhold certain information because a qualified protective order (“QPO”; Doc. # 325) had entered in this case. (Doc. # 334-2, Mem. at 6; Doc. # 345 Reply Mem. at 5.) The Special Master requested that the parties submit letter briefs regarding the effect of HIPAA regulations on (a) whether patient identities may be disclosed under HIPAA and (b) whether the use of patient identifiers would cure HIPAA concerns.

The QPO provides that “[t]he use of protected health information disclosed pursuant to this Protective Order shall comply with the provisions of HIPAA and the regulations promulgated thereunder, including the HIPAA Standards for Privacy of Individually Identifiable Health Information and the HIPAA Security Standards for the Protection of Electronic Protected Health Information Regulations. See 45 C.F.R. Parts 160 and 164.” (Doc. 325 ¶ 2.) Relevant here, a covered entity disclosing protected health information (“PHI”) “must make reasonable efforts to limit protected health information to the minimum necessary to accomplish the intended purpose of the use, disclosure, or request.” 45 C.F.R. § 164.502(b)(1). But the “minimum necessary” provision does not apply to “uses or disclosures that are required by law, as described by § 164.512(a)[.]” 45 C.F.R. § 164.502(b)(2)(v). In turn, 45 C.F.R. § 164.512(a) permits the disclosure of PHI when a covered entity meets “the requirements described in paragraph .... (e) ....” Those requirements establish standards for disclosures in response to discovery requests in judicial proceedings, including the use of a protective order, like the QPO in this case. 45 C.F.R. § 164.512(e). Therefore, the minimum necessary provision does not apply to PHI produced under the QPO.

Notwithstanding the applicability of the minimum necessary provision, Dr. Handy took the position that “the use of patient identifiers cures any concerns regarding any HIPAA violation.” (Handy Feb. 9, 2024 Letter.) None of the defendants expressed a contrary position. Dr. Handy also noted that “Plaintiff and BCOS are working with patient identifiers, which ‘de-identify’ the PHI information, regarding the production of BCOS patient information” and that “Plaintiff has agreed to receive patient data utilizing patient identifiers.” Id.

*5 Therefore, based on the above analysis, BCOS must produce unredacted versions of information withheld based on HIPAA, except that patient identifiers should be used to de-identify PHI.

C. The Motion as to BCSS

A larger set of document discovery disputes remain as between Dr. Handy and BCSS. They are analyzed separately below.

1. Financial Information Related to Logos and Marketing

Dr. Handy requested “documents sufficient to show” the following topics in the May Requests (Doc. # 334-5, Exhibit A):

No. 38: annual sales “sold, directly or indirectly, by BCSS in connection with any of its logos”;
No. 39: projected sales sold or intended to be sold “directly or indirectly, by BCSS in connection with any of its logos”; and
No. 42: “any costs or expenses incurred by BCOS or BCSS in connection with any goods or services marked or sold or intended to be marketed or sold in connection with any of BCOS's or BCSS's logos, including the [BCSS Logo].”

BCSS[3] asserted boilerplate objections to each request: “Answering Defendants object to this request as it is overly broad, unduly burdensome, and seeking information not reasonably calculated to lead to the discovery of admissible evidence.” (Doc. # 334-7, Exhibit C.) As to Request Nos. 38 and 42, BCSS added, “Without waiving, and subject to, this objection, BCSS will produce tax returns, certain financial information filed with the Commonwealth and Pennsylvania, and income statements, marked ‘confidential.’ ” Id.

As to May Request Nos. 38 and 42, Dr. Handy concedes that a November 20, 2023 supplemental production by BCSS “cured some of [BCSS’] production deficiencies,” but he contends that “there remain glaring deficiencies.” (Doc. # 345, Reply Mem. at 3.) The only deficiency described, however, is that BCSS has produced detailed financial information for its orthopedic and pain management services only; it did not provide similar information for Otolaryngology services. Id.

Based on the parties’ representations, as to May Request Nos. 38 and 42, it appears that BCSS has produced documents “sufficient to show” the requested information as to orthopedic and pain management services. So the remaining issue is whether BCSS’ scope of production of detailed financial information must include its other services, such as Otolaryngology.

Although not detailed specifically as to May Request Nos. 38 and 42, BCSS's position is that information “related to procedures that are not orthopedic or pain management procedures” are beyond the scope of discovery and not proportional to the issues in the case. (Doc. # 341, Opp. at 5.) The Special Master disagrees. Dr. Handy contends that “[t]he BCSS Logo is used to promote the entire BCSS practice group and is not limited to those services associated with orthopedics and pain management.” (Doc. # 245, Reply Mem. at 3.) Thus, BCSS must produce detailed financial information across all services and not limited to orthopedics and pain management.

As to May Request No. 39, BCSS claims that it “does not maintain sales projections, but nevertheless objects to this request.” (Doc. # 341, Opp. at 4.) The request seeks information relevant to the Plaintiff's claims regarding BCSS's adoption of the mark, the similarity of sales efforts, and damages. BCSS has provided no information to support its objection. Therefore, BCSS must either (a) supplement its response to make clear that it has conducted a diligent search and has no responsive documents, Shorter v. Samuels, No. 3:16-CV-1973, 2021 WL 1017375, at *5 (M.D. Pa. Mar. 17, 2021) (quoiting Corradi v. New Jersey Parole Board, No. 16-5076, 2019 WL 1795545 at *1 (D.N.J. Apr. 29, 2019)) (“[T]he responding party is not obliged to produce documents that it does not possess or can not obtain.”); or (b) produce documents responsive to May Request No. 39.

2. Patient Lists

*6 Dr. Handy requested certain patient data from BCSS (July Request Nos. 1 and 2). (Doc. # 334-8, Exhibit D.) It contends that the information is relevant to the Defendants’ marketing efforts, the relationship of marketing and services between BCOS and BCSS, and damages, among others. (Doc. # 345, Reply Mem. at 4.) BCSS objected to July Request Nos 1 and 2, stating that they were overbroad and that the production of certain information would violate HIPAA. (Doc. # 334-10, Exhibit F.) Subject to its objection, BCSS stated that it would “produce a compilation of the minimum necessary data upon entry of a QPO by the Court.” Id. BCSS argues that (1) it “has identified that essentially all of its orthopedic and pain management procedures are performed by BCOS physicians. The patient overlap is established and quantifiable in terms of revenue” and (2) the information is protected by HIPAA. (Doc. # 341, Opp. at 8-9.)

Regarding the first issue, although BCSS suggests that “essentially all” orthopedic and pain management procedures are performed by BCOS physicians, it is unclear how Dr. Handy can use this admission or why such a limit on the type of procedures performed should apply. BCSS has so far limited its production to orthopedics and pain management. As discussed above, Dr. Handy contends that the BCSS Logo is used to promote all BCSS services, not just orthopedics and pain management. Accordingly, subject to the HIPAA analysis below, BCSS must produce data across all services.

Regarding HIPPA, as discussed above, the minimum necessary provision under 45 C.F.R. § 164.502(b)(1) does not apply because there is a QPO in place. Thus, HIPAA does not prevent the production of documents in July Request Nos. 1 and 2. As noted above, patient identifiers may be used to de-identify PHI.

Therefore, the Special Master recommends that the Motion be granted as to July Request Nos. 1 and 2.

3. Financial and Operational Packages

Dr. Handy requested that BCSS produce:

[JULY REQUEST NO. 7] ALL DOCUMENTS and COMMUNICATIONS RELATING TO BCSS's financial and operational packages provided to BCSS board members during the RELEVANT TIME PERIOD.
[JULY REQUEST NO. 8] ALL DOCUMENTS and COMMUNICATIONS RELATING TO BCSS's business plans, budgets or financial projections during the RELEVANT TIME PERIOD. (Doc. # 334-8, Exhibit D.)

BCSS contends that these requests are vague, overbroad, and contain no limit to the cause of action in the case. (Doc. 341, Opp. at 8.) The Special Master agrees with BCSS.

The term “financial and operational packages” is undefined and vague. The request is tantamount to a request for all financial and operational documents raised at any BCSS board meeting, regardless of the issue. Similarly, “business plans, budgets, and financial projections” do not appear limited to the trademark issues in this case. Rather, it could be read to seek nearly all documents related to BCSS’ business in any way. These requests are overbroad and not proportional to the issues in the case. Accordingly, the Special Master recommends that the Motion be denied as to these requests.

4. Studies, Surveys, and Market Research Tests

Dr. Handy requested “All studies, surveys, market research tests or memoranda, including but not limited to demographic or consumer profile studies, relating to the purchasers or potential purchasers of BCSS's and BCOS's services marketed, offered for sale, advertised or promoted under the BCOS LOGO and/ or the BCSS LOGO.” (Doc. # 334-8, Exhibit D) (July Request No. 9). BCSS asserted a boilerplate objection, referred to its response to another request, and claimed to reserve the right to supplement. (Doc. # 334-10, Exhibit F.) There has been no supplemental response or production, and BCSS did not address this issue in its opposition. (Doc. # 345, Reply Mem. at 8.)

July Request No. 9 seeks relevant evidence – it is targeted at market research related to BCSS’ logo. BCSS has provided no explanation for why it is overbroad. Its boilerplate objection is insufficient. Dockery v. Heretick, No. CV 17-4114, 2021 WL 268497, at *2 (E.D. Pa. Jan. 27, 2021) (Strawbridge, M.J.) (citing Momah v. Albert Einstein Medical Center, 164 F.R.D. 412, 417 (E.D. Pa. 1996)) (“Mere recitation of the familiar litany that an interrogatory or a document production request is ‘overly broad, burdensome, oppressive and irrelevant’ will not suffice.”). Thus, the Special Master recommends that BCSS be compelled to produce documents responsive to July Request No. 9.

*7 BCSS’ objection to July Request No. 9 referenced its response to July Request No. 1, which raised a HIPAA concern. Because the request seeks studies, surveys, and market research tests, the Special Master does not anticipate that HIPAA will affect a production in response to July Request No. 9. If HIPAA does apply to a production in response to this request, BCSS may produce the applicable information with patient identifiers as discussed above.

5. Current BCSS Operating Agreement and USPI Share Purchase

Dr. Handy alleges that he recently learned that an entity identified as “USPI” purchased shares of BCSS, that USPI is the majority shareholder of BCSS, and that BCSS updated its operating agreement. (Doc. # 345, Reply Mem. at 8.) Dr. Handy argues that the new operating agreement and USPI Share Purchase should be produced. Id. BCSS has refused to produce these documents by stating, “The ownership of [BCSS] is not relevant to any issue in this case, including Plaintiff's damages.” (Doc. # 341, Opp. at 9.) Because the parties’ arguments on these issues were conclusory, the Special Master requested further development of these arguments in letter briefs.

BCSS resists the production of the new operating agreement and sale agreement by arguing that the documents are not relevant to the issue of BCOS’ interest in its logo, whether BCSS’ mark is likely to cause confusion, or the Lapp factors. (BCSS Feb. 9, 2024 Letter). BCSS also argues that the documents are not relevant to damages as BCSS has already produced documentation of its profits and losses. Id.

Dr. Handy asserts that he must prove that the infringing mark is being used to identify services provided by a separate and distinct source. (Handy Feb. 9, 2024 Letter.) Thus, the “current BCSS Operating Agreement will show that BCSS is a distinct entity offering services under the infringing mark that are separate from those offered through BCOS.” Id. Dr. Handy argues that the USPI Share Purchase is proof of damages because it “represents profits that BCSS shareholders received” under the infringing mark. Id.

These issues are a close call. While the Operating Agreement does not seem necessary to prove that BCSS is separate and distinct from BCOS, necessary is not the standard. And while it is questionable whether the USPI Share Purchase “represents profits,” the purchase of shares is likely to result in money flowing into BCSS.

Given the discovery standard, the Special Master recommends that the production of the Operating Agreement and USPI Share Purchase be compelled. Discovery of nonprivileged matters need only be relevant and proportional. Fed. R. Civ. P. 26(b)(1). Relevance is “interpreted broadly.” Brewer, 2024 WL 229741, at *2 (W.D. Pa. Jan. 22, 2024); see also Fed. R. Civ. P. 401(a) (“evidence relevant is it has any tendency to make a fact more or less probable than it would be without the evidence”). The BCSS Operating Agreement may have some tendency to establish the distinction between BCOS and BCSS, and the burden of production of one easily identifiable document is low. Additionally, the USPI Share Purchase may affect BCSS’ finances and, by extension, Dr. Handy's alleged damages. The burden of production of this document is also low. The parties should take note, however, that discoverability at the pretrial stage and admissibility into evidence are not co-extensive.

IV. RECOMMENDATION

For the reasons set forth above, the Special Master recommends that BCOS’ Motion to Compel (Doc. # 334) be GRANTED in part and DENIED in part as follows:

*8 a. As to BCOS:

i. The Motion be GRANTED as to the marketing documents (July Request Nos. 3 and 9), limited to the scope as agreed by the parties, with production required no later than 7 days from the entry of the Order on this Motion.
ii. The Motion be GRANTED as to documents redacted under HIPAA; BCOS must produce unredacted versions of information withheld, except that patient identifiers should be used to de-identify PHI, with production required no later than 7 days from the entry of the Order on this Motion.

b. As to BCSS and the Individual Defendants:

i. The Motion be GRANTED as to May Requests 38 and 42; BCSS must produce detailed financial information across all services and not limited to orthopedics and pain management, with production required no later than 7 days from the entry of the Order on this Motion.
ii. The Motion be GRANTED as to May Request 39; BCSS must either (a) supplement its response to make clear that it has conducted a diligent search and has no responsive documents or (b) produce documents responsive to May Request No. 39 no later than 7 days from the entry of the Order on this Motion.
iii. The Motion be GRANTED as to July Request Nos. 1 and 2, except that patient identifiers should be used to de-identify PHI, with production required no later than 7 days from the entry of the Order on this Motion.
iv. The Motion be DENIED as to July Request Nos. 7 and 8.
v. The Motion be GRANTED as to July Request No. 9; BCSS must produce documents responsive to July Request No. 9 no later than 7 days from the entry of the Order on this Motion.
vi. The Motion be GRANTED as to BCSS’ current Operating Agreement the USPI Share Purchase; BCOS must produce these documents no later than 7 days from the entry of the Order on this Motion.

Footnotes

[1]

If further issues remain after this Report and Recommendation and the forthcoming productions, a new motion will be required. Any such motion should describe the issue requiring judicial intervention as precisely as possible after the parties have exhausted all possible non-judicial resolutions.

[2]

The Lapp Factors are: (1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of the owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties’ sales efforts are the same; (9) the relationship of the goods in the minds of consumers because of the similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market, or that he is likely to expand into that market. Lapp, 721 F.2d at 463.

[3]

Because they responded joint and are jointly represented, “BCSS” also encompasses the Individual Defendants for purposes of this Report and Recommendation.