C&C Jewelry Mfg Inc v. Trent West

Filing 186

ORDER by Magistrate Judge Howard R. Lloyd granting in part and denying in part 177 defendant's Motion to Compel Documents. 6/14/2011 hearing is vacated. (hrllc2, COURT STAFF) (Filed on 6/13/2011)

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*E-FILED 06-13-2011*

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NOT FOR CITATION

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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For the Northern District of California

United States District Court

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C&C JEWELRY MANUFACTURING, INC.,

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No. C09-01303 JF (HRL)
ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANT’S
MOTION TO COMPEL DOCUMENTS

Plaintiff,
v.
TRENT WEST,

[Re: Docket No. 177]
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Defendant.
/

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Plaintiff C&C Jewelry Manufacturing, Inc. (C&C) filed this patent action seeking

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declaratory relief. The patents in suit generally pertain to methods for making jewelry from

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tungsten carbide. Defendant Trent West has asserted counterclaims, alleging that jewelry rings

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manufactured by C&C infringe his patents.

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West now moves for an order compelling C&C to produce “[a]ll documents which refer

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or relate to any person or entity that is not a named party who has provided or is providing

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financial assistance or support to C&C in this litigation.” (van Ausdall Decl., Ex. A (Request

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for Production No. 94)). C&C opposes the motion. The matter is deemed suitable for

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determination without oral argument, and the June 14, 2011 hearing is vacated. Civ. L.R. 7-

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1(b). Upon consideration of the moving and responding papers, this court grants the motion in

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part and denies it in part.

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C&C’s President, Robert Connolly, has submitted a declaration attesting that “[t]he only

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person or entity paying for [C&C’s] legal fees is the plaintiff C&C Jewelry Manufacturing,

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Inc.” (Connolly Decl. ¶ 2). C&C argues that this declaration moots the instant motion. West

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disagrees. Pointing out that he seeks more than information about who pays for C&C’s legal

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fees, West contends that Connolly’s declaration leaves open the possibility that C&C could be

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receiving financial assistance from nonparties with respect to this litigation, notwithstanding

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that C&C says that it pays for its legal fees.

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Even so, C&C argues that the requested information has no bearing on issues in this

settlement; (2) to show whether nonparties may have induced C&C’s alleged infringement; and

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(3) to show whether C&C’s alleged infringement is willful. This court is disinclined to permit

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For the Northern District of California

lawsuit. West maintains that the discovery sought is relevant for three reasons: (1) to facilitate

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United States District Court

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discovery simply because it might encourage settlement.

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As for West’s second and third points, evidence of indemnification against the deterrent

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effects that the patent laws would have on would-be infringers can be relevant to show intent to

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induce infringement or that infringing activities were undertaken willfully. See Hewlett-

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Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1470 (Fed. Cir. 1990) (“Cases have held

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that an indemnification agreement will generally not establish an intent to induce infringement,

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but that such intent can be inferred when the primary purpose is to overcome the deterrent effect

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that the patent laws have on would-be infringers.”); see also Jurgens v. McKasy, 927 F.2d 1552,

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1562 (Fed. Cir. 1991) (affirming award of increased damages for infringement where, among

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other things, the infringer continued to sell accused products after obtaining an indemnity

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agreement); Church & Dwight Co., Inc. v. Abbott Labs., No. 05-02142, 2008 WL 2565349 *10

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(D.N.J. June 24, 2008) (affirming jury’s verdict of willful infringement where, among other

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things, the infringer “sought to ‘insure’ itself against liability exposure via indemnifications”).

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C&C contends that In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007) substantially

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changed the standard for finding willful infringement. This court, however, does not read that

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decision to mean that indemnification can never be probative of issues pertaining to

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infringement.

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With respect to possible evidence of inducement of infringement, West points out that

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he seeks injunctive relief against any persons acting in privity or concert with C&C.

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Nevertheless, West’s counterclaims are asserted only against C&C. (See Docket No. 6,

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Defendant’s Answer and Counterclaims). West cannot use discovery to fish for evidence of

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potential claims that have not been asserted. Moreover, the court finds that, as drafted, his

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request for all documents referring or relating to “financial assistance” sweeps too broadly and

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encompasses information that is neither relevant nor likely to lead to the discovery of

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admissible evidence of alleged willful infringement by C&C.
Accordingly, West’s motion to compel is granted as to documents referring to, relating

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to, or showing that C&C obtained financial indemnification against liability for the alleged

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For the Northern District of California

United States District Court

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infringement after being put on notice of West’s patents. C&C shall produce to West any non-

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privileged responsive documents in its possession, custody, or control within 14 days from the

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date of this order. To the extent C&C has no responsive documents, it shall so certify for West

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within 14 days from the date of this order. West’s motion is otherwise denied in all other

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respects.
SO ORDERED.

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Dated:

June 13, 2011

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HOWARD R. LLOYD
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UNITED STATES MAGISTRATE JUDGE

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5:09-cv-01303-JF Notice has been electronically mailed to:

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Daralyn J. Durie

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Dirk Van Ausdall

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Edward Vincent King , Jr [e-mail], [e-mail],
[e-mail]

[e-mail], [e-mail]
[e-mail]

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Eric Charles Wood

[e-mail]

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John Gregory Fischer [e-mail], [e-mail],
[e-mail], [e-mail], [e-mail],
[e-mail]

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Ryan Marshall Kent

[e-mail], [e-mail]

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Counsel are responsible for distributing copies of this document to co-counsel who have not
registered for e-filing under the court’s CM/ECF program.

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For the Northern District of California

United States District Court

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