Morningware, Inc. v. Hearthware Home Products, Inc.

Filing 267

MEMORANDUM Opinion and Order Signed by the Honorable Amy J. St. Eve on 12/22/2011:Mailed notice(kef, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
MORNINGWARE, INC.,
Plaintiff,
v.
HEARTHWARE HOME PRODUCTS, INC.
Defendant.

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No. 09 CV 4348

MEMORANDUM OPINION AND ORDER
AMY J. ST. EVE, District Court Judge:
Before the Court is Hearthware’s Motion to Compel the Deposition of Susan Sul and
request for attorney’s fees and costs. For the following reasons, the Court grants Hearthware’s
motion in part and denies in part.
BACKGROUND
On July 20, 2009, Plaintiff Morningware, Inc. (“Morningware”), filed its Complaint
against Hearthware Home Products, Inc. (“Hearthware”), alleging that Hearthware had
commercially disparaged Morningware’s goods, had committed the common-law tort of unfair
competition, and had violated the Deceptive Trade Practices Act of Illinois, as well as the unfair
competition and product-disparagement provisions of the Lanham Act. (R. 1, Complaint.)
Separately, Hearthware brought an action against Morningware alleging that Morningware’s use
and sale of the Halogen Convection Oven Model H0-1200 infringed Hearthware’s U.S. Patent
No. 6,201,217 (“the ‘217 patent”). (IBC-Hearthware, Inc. v. Morningware, Inc., No.
09-CV-4903 (N.D. Ill.) (R. 1).) The Court consolidated both cases on August 26, 2009. (Id., R.
19.) The parties have requested numerous extensions to the fact discovery deadline, which the

Court has granted. (R. 175, R. 190, R. 194, R. 206.) On October 20, 2011, at the parties’ joint
request, the Court further extended the fact discovery deadline, for the purpose of conducting
limited discovery, until December 5, 2011. (R. 237.)
Ms. Susan Sul is the sole employee of Morningware and its only 30(b)(6) witness. (R.
254-8 at 15.) It is undisputed that Hearthware was scheduled to depose Ms. Sul, in her 30(b)(6)
and personal capacities, on November 29 and 30, 2011. The parties disagree as to whether
Hearthware was to depose Ms. Sul in her 30(b)(6) capacity on November 29 and in her personal
capacity on November 30, or whether Hearthware was entitled to combine her 30(b)(6) and
personal deposition questioning throughout both days. Morningware advances the former
position, and Hearthware advances the latter.
When Ms. Sul appeared for her deposition on November 29, Morningware’s counsel
stated that it was producing Ms. Sul for her personal deposition only and not as a 30(b)(6)
witness. (R. 254-8 at 5.) Hearthware’s counsel expressed his disagreement and stated that the
scope of his questions would be mixed throughout both days’ depositions. (Id.) He explained
that since Morningware offered Ms. Sul for her deposition as the sole 30(b)(6) witness and in her
personal capacity, he could not separate his questioning between what she knows as a corporate
witness versus what she knows in her personal capacity. (Id. at 5, 11.) He offered to allow Ms.
Sul to specify, in her answers to his questions, whether she was answering in her personal
capacity or as a corporate representative. (Id.) Morningware’s counsel responded that he had
not yet prepared Ms. Sul for her 30(b)(6) deposition because he understood that Hearthware’s
counsel would not question Ms. Sul in her corporate capacity until the following day, November
30. (Id. at 5-8.) Counsel for Hearthware called the Court in an attempt to resolve the issue, but

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the Court directed the parties to work it out on their own. Morningware offered Hearthware the
option of continuing with Ms. Sul’s personal deposition on November 29 and her 30(b)(6)
deposition on November 30. (Id. at 21-22.) Hearthware’s counsel instead opted to halt the
deposition and seek relief from the Court. (Id.)
The following day, November 30, Hearthware’s counsel deposed Ms. Sul. (R. 258 at 6.)
He indicated on the record that although the deposition was the 30(b)(6) deposition of
Morningware, “there may be fact based questions that will be interspersed throughout it.” (R.
258-5 at 4.) On December 1, 2011, Hearthware’s counsel contacted Morningware’s counsel to
request a date for Ms. Sul’s personal deposition. (R. 254-9.) Morningware’s counsel refused to
offer Ms. Sul for another deposition absent a court order. (Id.) On December 7, 2011,
Hearthware filed its motion to compel. Morningware filed a written response on December 15,
2011.
LEGAL STANDARD
The federal discovery rules are liberal in order to assist in the preparation for trial and
settlement of litigated disputes. See Bond v. Utreras, 585 F.3d 1061, 1075 (7th Cir. 2009); see
also Kodish v. Oakbrook Terrace Fire Prot. Dist., 235 F.R.D. 447, 450 (N.D. Ill. 2006) (“the
scope of discovery should be broad in order to aid in the search for truth”). In the context of
motions to compel, the Seventh Circuit instructs that a “district court may grant or deny the
motion in whole or in part, and similar to ruling on a request for a protective order under Rule
26(c), the district court may fashion a ruling appropriate for the circumstances of the case.” Gile
v. United Air Lines, Inc., 95 F.3d 492, 496 (7th Cir. 1996). As with all discovery matters, district
courts have broad discretion in determining motions to compel. See Peals v. Terre Haute Police

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Dep’t, 535 F.2d 621, 629 (7th Cir. 2008).
ANALYSIS
Before the Court reaches the merits of Hearthware’s motion, it bears mentioning that this
is the ninth motion to compel filed in this case. The Court has expressed repeatedly, on the
record, its disappointment with the parties’ lack of professional conduct and inability to work
together to resolve their discovery disputes. (R. 233, R. 248.) Unfortunately, the parties have
refused to heed the Court’s admonishments and have continued to display gamesmanship and a
remarkable inability to resolve even the most trivial of discovery issues, including the issue
presently before the Court.1
Hearthware argues that it never agreed with Morningware’s counsel to depose Ms. Sul in
her personal capacity in one day and her 30(b)(6) capacity on another day. Morningware argues
that the parties reached such an understanding. Both parties point to various emails, all of which
the Court has reviewed, in support of their respective positions. Although the Court finds some
support for Morningware’s position (see R. 254-1 (Hearthware’s counsel requests that Ms. Sul
be made “available for her personal and 30(b)(6) deposition on Mon, Sep. 26 and Tue, 27,
respectively”)), it does not appear, at least from the materials the parties provided to the Court,
that they ever decided the issue one way or the other.
As a practical matter, the Court agrees with Hearthware’s argument that it is nearly
impossible to separate 30(b)(6) questions from personal capacity questions when the witness at
issue is the company’s sole employee. For this reason, it is reasonable that Hearthware’s

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The Court reminds the parties that “[t]he quality of the legal profession can be no better
than that of its members.” N.D. Ill. Local Rule 83.50.1, Committee Comment.
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attorney would have the understanding that he would be able to question Ms. Sul in both
capacities throughout both days of her deposition. On the other hand, Morningware’s counsel
maintains that he had previously suggested the combined-question approach to Hearthware’s
counsel, who rejected it. (R. 254 at 4; 258 at 4.) Hearthware’s counsel does not dispute this
assertion. If Morningware’s assertion is true, it was also reasonable for Morningware’s counsel
to expect that Hearthware would depose Ms. Sul in her personal capacity on one day and her
30(b)(6) capacity on the other day.
Hearthware argues that it will be prejudiced if it is not able to depose Ms. Sul, who is
Morningware’s only fact witness, for a second day. Morningware responds that Hearthware
made the decision to halt Ms. Sul’s deposition on November 29 knowing that it would not be
able to depose her again absent a court order, and that Hearthware has not identified any
questions it was not able to ask Ms. Sul during her 30(b)(6) deposition on November 30.
Hearthware need not do so, however, because it is entitled to depose her for seven hours in her
personal capacity. See Fed.R.Civ.P. 30(d)(1). Unfortunately, the parties wasted over one and a
half of those hours on November 29 arguing about whether the deposition could proceed.2
Neither party is one hundred percent correct on this issue, and the parties could have
avoided the entire conflict – yet again – by simply having a conversation in advance of the
deposition. Because Ms. Sul is Morningware’s one and only fact and 30(b)(6) witness,
precluding Hearthware from deposing her for a second day would be unduly prejudicial.
Therefore, the Court will allow Hearthware to depose Ms. Sul for five and one half hours in the

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The deposition began at 9:20 a.m. and ended at 10:58 a.m. See R. 254-8 at 4, 21.
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Chicagoland area, at its own expense, on or before January 11, 2012.3 Ms. Sul lives in the area,
and therefore producing her for a second deposition is not unduly prejudicial to her or
Morningware.
CONCLUSION
For the reasons explained above, the Court grants Hearthware’s motion in part and denies
it in part. Hearthware may depose Ms. Sul on or before January 11, 2012 in the Chicagoland
area for five and one half hours at its own expense. Hearthware’s request for attorney’s fees and
costs is denied because both lawyers exhibited unprofessional conduct in addressing this issue.
DATED: December 22, 2011

ENTERED

___________________________________
AMY J. ST. EVE
United States District Court Judge

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Fact discovery closed on December 5, 2011. It is reopened until January 11, 2012 for
the sole purpose of Ms. Sul’s deposition. There will be no exceptions.
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