The Gillette Company v. Dollar Shave Club, Inc.

Filing 744

MEMORANDUM ORDER re disputes related to Plaintiff's privilege log and request to take a de bene esse deposition; 725 MOTION to Strike is DENIED. Signed by Judge Leonard P. Stark on 3/14/19. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

THE GILLETTE COMP ANY LLC,
Plaintiff,
C.A. No. 15-1158-LPS-CJB

V.

DOLLAR SHAVE CLUB, INC., et al. ,
Defendants.

MEMORANDUM ORDER
Pending before the Court are disputes related to Plaintiff's privilege log (see D.I. 679,
681 , 702, 722, 743), a request to take a de bene esse deposition of a witness whose schedule
conflicts with trial (D.I. 738, 742), and a motion to strike allegedly late-produced documents and
testimony (D.I. 725 , 726, 736, 740). After conducting the in camera review ordered on
February 25 (D.I. 722), and having considered the parties' briefing and related materials in each
of the disputes, IT IS HEREBY ORDERED that:
1.

Plaintiff may withhold Privilege Log Entry No. 1747 in its entirety, as it is

protected by attorney-client privilege. See generally Upjohn Co. v. US., 449 U.S. 383, 389
(1981). Defendants do not dispute that the document at issue contains some privileged
information, but assert the privilege does not extend to facts contained in it. (D.I. 679) Plaintiff
has met its burden to show the attorney-client privilege applies to the entire document. See In re

Spalding Sports Worldwide, Inc. , 203 F.3d 800, 805-06 (Fed. Cir. 2000) (finding attorney-client
privilege extends to entirety of invention record when "the overall tenor of the document
indicates that it is a request for legal advice or services"). _
Further, having now reviewed the

document at issue, the Court finds that Plaintiff is not improperly using privilege as a "swordand-shield" (for reasons including that Defendants' unpersuasive contention is based on what is
purportedly missing from the document, rather than from facts affirmatively stated in it).
2.

Plaintiff's request to conduct a de bene esse deposition of Upasna Patel is

GRANTED. "Factors to be considered in granting a de bene esse deposition after the close of
discovery are: the unavailability of the witness to appear at trial; whether the deposing party
knew of the information the potential witness would testify to prior to the deposition; and
whether the opposing party will be prejudiced by granting the deposition - with special attention
given to the question of prejudice." Coface Collections N. Am., Inc. v. Newton, 2012 WL
6738391, at *1 n.1 (D. Del. Dec. 28, 2012). Ms. Patel's conflict, while unfortunate, is not in and
of itself so substantial that Plaintiff could not procure her availability at trial, if absolutely
necessary. 1 Still, in the overall scheme of this litigation and the parties' somewhat vast and longrunning disputes with one another, and given the minimal role Ms. Patel would likely play at
trial, as well as the fact that neither side demonstrated exemplary diligence in bringing this
dispute to a head,2 the Court deems it the most appropriate exercise of its discretion to grant the
deposition and essentially afford Ms. Patel the opportunity to complete her testimony before
trial. 3 While Defendants may not today know all of the precise information Ms. Patel will testify

1

Ms. Patel is an employee of Plaintiff. There is little doubt that, were it absolutely necessary to
Plaintiffs case, Plaintiff could and would compensate Ms. Patel, her family, and her friends - all
of whose plans are evidently implicated by the conflict with the trial date - and ensure that Ms.
Patel appeared at trial.
2

Plaintiff knew or should have known by early October 2018 of Ms. Patel's conflict but did not
notify Defendants until January 9, 2019. While Defendants never indicated they assented to the
requested deposition, they also did nothing to communicate their objection to it until
February 27, 2019. (See D.I. 738 at 2 and Exs. 2 & 3)
3

Even Defendants, to their credit, "genuinely sympathize with this family conflict." (D.I. 742 at
2)
2

to in the forthcoming deposition, the Court will ensure that Defendants have at least as full an
opportunity to be prepared as they would have at trial. To that end, and to reduce any significant
prejudice that could otherwise arise from the Court' s accommodation of Plaintiff's unusual
request, (i) the deposition shall occur at a date and place selected by Defendant, provided that
they are not unreasonable and do not interfere with Ms. Patel ' s plans that have given rise to the
conflict with the trial schedule; (ii) Plaintiff shall, no less than forty-eight (48) hours prior to the
start of the deposition, produce to Defendant a set of all documents and exhibits Plaintiff will use
with Ms. Patel in her deposition, as well as an estimate of the length of Plaintiff's anticipated
examination; (iii) Defendant's cross-examination of Ms. Patel shall not be limited to the scope of
her direct examination by Plaintiff; and (iv) subject to the procedures by which the Court will
handle objections to use of deposition testimony at trial, both sides may propose to designate all
or any portion of Ms. Patel ' s prior and/or forthcoming deposition testimony.
3.

Defendants ' Motion to Strike (D.I. 725) is DENIED. The Pennypack factors do

not warrant striking either the Zupkosky Documents or U gone Document: 4 (i) they constitute
important evidence (and striking them would cause high prejudice to Plaintiff), with respect to
Plaintiff's defense against invalidity and its claim for damages, respectively; (ii) Defendants are
not substantially prejudiced and should not be surprised that Plaintiff produced these documents
in response to what reasonably appeared to Plaintiff as new contentions being asserted by
Defendants for the first time after the close of fact discovery, particularly given that Defendants '

4

Defendants assert that Plaintiff failed to timely produce two sets of documents : (1) a series of
signed confidentiality agreements ("the Zupkosky Documents") and associated testimony
sponsoring those documents (D.I. 697 Att. 1-7); and (2) an internal document of Plaintiff's that,
in part, assesses shave clubs ("the Ugone Document") (D.I. 726 Ex. 6).
3

discovery requests did not clearly call for production of the Zupkosky Documents 5 and
Defendants had an opportunity to examine both damages experts regarding the Ugone
Document6 (see D.I. 736 Ex. 3-4); (iii) the Court's ruling does not disrupt trial; (iv) there is little
unfair prejudice to Defendants, especially given Plaintiff's representation that it has produced all
documents in its possession, custody, and control that are like the Zupkosky Documents (so
ordering a supplemental production would yield nothing) 7 and Defendants' expert' s testimony
that the Ugone Document "doesn' t change any of [his] work;" (v) Plaintiff has provided a
plausible explanation that it only searched (and searched again) for these materials after
Defendants made new arguments; and (vi) there is no evidence of bad faith. See generally

Meyers v. Pennypack Woods Home Ownership Ass 'n, 559 F.2d 894, 904-05 (3d Cir. 1977).

March 14, 2019
Wilmington, Delaware

BLE LEONARD P. STARK
STATES DISTRICT JUDGE

5

Interrogatory No . 22 asked to " [d]escribe in detail all outplant tests . .. that involved razor
blades with a [chromium] containing overcoat" (D.I. 726-4 at 6-7) and Document Request No.
32 sought " [a]ll DOCUMENTS that . . . relate[] to the subject matter of the PATENT-IN-SUIT"
(D.I. 726-2 at 10). Defendants have failed to persuade the Court that the Zupkosky Documents
are responsive to either this interrogatory or document request.
6

The Court agrees with Defendants that the Ugone Document is responsive to Document
Request No. 183, which sought " [a]ll documents referring or relating to advertising, surveys, or
studies evaluating . . . shave clubs." (D.I. 726 at 2-3) (citing D.I. 726-7 at 9) Still, in totality, the
Pennypack factors do not favor striking it.
7

There is no basis in the record to accept Defendants' contentions that the Zupkosky Documents
are merely a "hand-selected," non-representative "sample of its [Plaintiffs] own documents."
(D.I. 740 at 1-2)
4