Kraft Foods Group Brands LLC v. TC Heartland LLC et al

Filing 434

MEMORANDUM ORDER re Discovery Issues; 405 MOTION for Leave to File Second Amended Answer is GRANTED. Signed by Judge Leonard P. Stark on 1/12/17. (ntl)

IN THE UNITED STATES DISTRICT·COURT
I
.FOR THE DISTRICTOFDELAWARE
I
I
I

KRAFT FOODS GROUP BRANDS
I.
LLC,
Plaintiff,
II

v.

C.A. No. 14-28-LPS

TC HEARTLAND, LLC d/b/a·
HEARTLAND FOOD PRODUCTS
GROUP and HEARTLAND
PACKAGING CORPORATION,
Defendant.

MEMORANDUM ORDER

At Wilmington this 12th day of January, 2017,
IT IS HEREBY ORDERED that:
1.

The parties filed a Joint Letter Regarding Discovery Conference Issues. (D.I. 400;

see also D.I. 428 at 5, 8) It identifies four disputes. The Court's rulings with respect to these

disputes follow.
A.

Heartland's request that Kraft be ordered to further supplement its answer

to Interrogatory No. 12 (see D.I. 400 at 1-3) is GRANTED as detailed below. No later than
January 27, 2017, Kraft shall supplement its response to Interrogatory No. 12 to clarify:

(i) whether, prior to March 26, 2013, the individuals specifically listed in Interrogatory No. 12, as
well as Ken Davis and Debbie Wright, knew of PCT Ackilli; had PCT Ackilli in their
possession; or looked at, read, or discussed PCT Ackilli's contents; and (ii) why any of the
foregoing individuals, including Ken Davis and Debbie Wright, did not report PCT Ackilli to the

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Patent and Trademark Office.
In addition, no later than ·February 10, 2017, Kraft shall produce all documents reflecting

awareness of PCT Ackilli (whether or not such documents explicitly refer to .PCT Ackilli). In
order to comply with this Order, it will be necessary for Kraft (to the extent it has not already
done so) to investigate whether any documents that do not expressly reference PCT Ackilli but
may reflect knowledge of PCT Ackilli (because, for example, the contents of such documents
include matters addressed in PCT Ackilli, such as buffered concentrates), do or do not reflect
knowledge of PCT Ackilli. If they do reflect such knowledge, then such documents shall be
produced. If such documents do not reflect such knowledge, then such documents need not be
produced (unless they need be produced dueto some reason other than the effect of this Order),
but in that event Kraft shall provide a log of such documents, sufficient to enable Heartland and
the Court to make a meaningful assessment of Kraft's assertions that such documents remain
privileged.
The foregoing rulings are consistent with the Court's rulings regarding waiver of attomeyclient privilege. (See D.I. 351, 352,-402) Kraft's contention that privilege was not waived with
respect to "general discussions of the technology of PCT Ackilli, which may also be found in the
patented inventions (e.g., buffer, acid, mixing, etc.), but that do not specifically reference PCT
Ackilli or its examples" (D.I. 400 at 2) is incorrect. It is not necessary for a document to mention
PCT Ackilli in order to reflect an awareness of PCT Ackilli. While "[d]ocuments and
information that relate exclusively to the technology of Ackilli or the Water Sensations product ·
and not also to Defendants' knowledge of and/or decision not to disclose Ackilli are not within
the scope of the waiver" (D.I. 351 at 8) (emphasis added), it is possible that a document that does
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not "specifically reference" Ackilli may still also relate to "Defendants' knowledge of and/or
decision not to disclose Ackilli." Noris the Court persuaded that Heartland has waived its right
to request information relating to Mr. Davis or Ms. Wright.
B.

Heartland's request that the Court order that Kraft's supplemental

response to Interrogatory No. 12 be verified is DENIED WITHOUT PREJUDICE to renew
after receiving and reviewing the supplemental response and after completion of the Rule
30(b)(6) deposition of Kraft.
C.

The Court concludes that Fitch Even has waived attorney work-product

protection over the documents listed on its log, as any such assertion of work-product protection
is untimely. After Kraft sl._.lpplements its response to Interrogatory No. 12 and produces the
documents (and/or log) required by this Order, but no later than February 17, 2017, the parties
shall advise the Court whether there remains a dispute with respect to production of any Fitch
Even document and, if so, how they propose such dispute(s) be resolved.
D.

At this time the Court is not appointing a Special Discovery Master

although the Court may do so if the parties continue to have discovery disputes.
2.

. Heartland's motion for leave to file a second amended answer (D.I. 405), to

. articulate a total ·of eight theories of inequitable conduct, is GRANTED. Leave to amend is to
freely granted when justice so requires. See Fed. R. Civ. Proc. 15(a). Good cause has been
shown. See Fed. R. Civ. Proc. 16. The second amended answer provides Kraft with clear notice
of the full extent of Heartland's inequitable conduct contentions that Heartland will seek to prove
at trial. It aims to conform the pleadings to the facts Heartland believes it discovered during
discovery. Further grounds for the relief sought include that, as noted above, the Court is
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ordering additional discovery, which Heartland may use as evidence to support its inequitable
conduct contentions, but may arguably not be pertinent to the inequitable conduct theory in the
currently-operative answer, and that the Court is today continuing trial to October, leaving plenty
of time for all parties to fully and fairly prepare, notwithstanding the arguable expansion of
Heartland's case as a result of the Court granting Heartland's motion for leave to amend.

HON. LE NARD P. STARK
UNITED STATES DISTRICT COURT

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