Id. ¶¶ 31, 32 (emphasis added); see also id. ¶ 91 (asserting that Defendants' disclosure of unspecified “confidential information” breached the agreement). Plaintiffs cannot hide behind a “trade secret” or “confidential” label to avoid disclosing the very information they tout as a basis for recovery.

Valkor's counterclaim reinforces why Plaintiffs' asserted trade secrets and confidential information are proper subjects of discovery. According to Valkor's allegations, the co-founder of Plaintiff Activate Clean Energy, William Wismann, plagiarized the underlying and disputed technology from prior patents authored by others. Dkt. 46 ¶¶ 19-24; see also Dkt. 51 at 2 & n.4 (citing publicly-filed declaration). This allegation forms a core component of Valkor's counterclaim that Plaintiffs fraudulently induced Valkor into entering an agreement by “passing off expired patents” as Plaintiffs' own. See Dkt. 46 ¶ 80. That allegation, if proven true, would invalidate Plaintiffs' contention that the technology qualifies for trade secret protection. See Dkt. 51 at 2 (Valkor making this point). Thus, even apart from Plaintiffs' allegations, Valkor's counterclaim entitles it to discover the premise and existence of Plaintiffs' purported trade secrets.[1]

*2 Plaintiffs' further contention that disclosing their trade secrets to Valkor risks destroying the secrets' value cannot be squared with the December 30, 2024 protective order. The protective order provides an avenue wherein a party can designate, as “Highly Confidential Information,” documents containing “trade secrets, confidential research and development” and other “highly sensitive or trade secrets information ....” Dkt. 23 at 2 ¶ 2(B). Documents marked as “Highly Confidential Information” cannot be disclosed to or shared with the opposing party itself, see id. at 6 ¶ 6(C), and their use is limited to this litigation, see id. at 5 at ¶ 6(A). Those provisions provide ample safeguards against the improper use and disclosure of trade secret or other sensitive information.

In short, Plaintiffs cannot avoid their discovery obligations by asserting that the information sought amounts to trade secrets or is otherwise confidential. Their contrary position is groundless. Plaintiffs must provide full and direct answers to Interrogatory Nos. 3, 7, 8, 11, and 16 and produce all documents responsive to Request Nos. 2, 3, 13, 14, 17, 18, and 44.

II. Plaintiffs also must provide all documents responsive to other requests for production and amend their responses to state whether documents are being withheld.

Valkor also complains that Plaintiffs have not produced documents responsive to Requests for Production Nos. 21, 31, 32, 50, 51, 52, and 53. See Dkt. 44 at 10-13. Invoking Rule 34(b)(2)(C), Valkor further requests that Plaintiffs be required to affirmatively state whether they are withholding any responsive materials. See id. at 13.

With respect to RFP Nos. 21, 31, 32, 52 and 53, Plaintiffs maintain that they have already produced all responsive documents. Because nothing in the record suggests otherwise, there is nothing more to compel for those requests.

As for RFP Nos. 50 and 51, the Court has rejected Plaintiffs' position that trade secret information can properly be withheld. Compare Dkt. 50 at 8, with supra Part I. Responsive documents must be produced.

As a final matter, Plaintiffs contend that they are not withholding any responsive documents that would require them to state so under Fed. R. Civ. P. 34(b)(2)(C). See Dkt. 50 at 9. But Plaintiffs have laundry-listed objections to every request for production. See Dkt. 44-5. For some of the RFPs, Plaintiffs have stated that they are refusing to produce responsive documents. For others, however, Plaintiffs' response fails to indicate whether they are producing responsive documents. See, e.g., id. at 37-38 (response to RFP No. 53, mounting numerous objections); see also, e.g., Cole v. Collier, 2020 WL 2813454, at *7 (S.D. Tex. May 28, 2020) (ordering party to supplement responses to RFPs to indicate whether they are “withholding documents based on objections when they were withholding documents”). Plaintiffs have also included improper language stating that they are producing documents “[s]ubject to and without waiving” their objections, which injects further confusion as to what has been produced or withheld. See, e.g., Shintech Inc. v. Olin Corp., 2023 WL 6807006, at *5 (S.D. Tex. Oct. 16, 2023) (same observation, further cautioning that “litigants should never use ‘subject to’ or ‘without waiver’ language in response to a written discovery request”).

For transparency, Plaintiffs must amend all answers to RFPs to clearly state whether they are withholding documents responsive to a specific discovery request.[2] And if no responsive documents exist, then Plaintiffs must say so explicitly.

III. Plaintiffs' discovery deficiencies merit fee-shifting, but only in part.

*3 Plaintiffs baseless withholding of documents on trade-secret or confidentiality grounds justifies Valkor's request for sanctions. Rule 37(a)(5)(A) of the Federal Rules of Civil Procedure states that, upon granting a motion to compel production, “or if the disclosure or requested discovery is provided after the motion was filed,” a court “must, after giving an opportunity to be heard, require the party ... whose conduct necessitated the motion, the party or attorney advising that conduct, or both to pay the movant's reasonable expenses incurred in making the motion, including attorney's fees.” Fed. R. Civ. P. 37(a)(5)(A) (emphasis added). Fee-shifting is mandatory unless (a) the movant failed to attempt in good faith to obtain discovery before filing the motion; (b) the non-disclosure was “substantially justified”; or (c) some other circumstance would make an award of expenses unjust. See id.

Plaintiffs' invocation of “good faith,” Dkt. 50 at 11, does not equate to substantial justification for refusing to provide plainly relevant information and documents. And it is apparent that Plaintiffs continued to maintain their groundless objections despite Valkor's efforts to confer. Under these circumstances, failure to impose fee-shifting would be unjust. Plaintiffs must pay the reasonable attorneys' fees that Valkor incurred seeking relief from this Court, but only with respect to Valkor's challenge to Plaintiffs unjustifiable withholding of trade-secret or confidential information.

For the foregoing reasons, it is ORDERED that Defendant Valkor Oil and Gas LLC's motion to compel discovery (Dkt. 44) is GRANTED in material part. Plaintiffs must, no later than April 30, 2025:

It is further ORDERED that Plaintiffs must pay Defendant Valkor Oil and Gas LLC's reasonable attorneys' fees incurred preparing the portions of its motion to compel and reply that dispute Plaintiffs' withholding of documents and information on trade-secret or confidentiality grounds. Valkor's fee application is due on April 14, 2025, and Plaintiffs' response is due on April 28, 2025. No reply will be entertained.