Advanced Tactical Ordnance Systems LLC v. Real Action Paintball Inc et al

Filing 270

OPINION AND ORDER re 240 MOTION to Compel Production of Documents and Answers to Interrogatories by Defendant Real Action Paintball Inc; 251 MOTION to Compel by Defendant Real Action Paintball Inc. The Motions are GRANTED IN PART and DENIED IN PART as outlined in Order. Signed by Magistrate Judge Roger B Cosbey on 3/29/13. (cer)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF INDIANA
FORT WAYNE DIVISION

ADVANCED TACTICAL ORDNANCE )
SYSTEMS, LLC,
)
)
Plaintiff,
)
)
v.
)
)
REAL ACTION PAINTBALL, INC.,
)
et al.,
)
)
Defendants.
)

Case No. 1:12-cv-296

OPINION AND ORDER
The Court held a telephonic hearing (Docket # 266) on Defendant Real Action Paintball,
Inc.’s (“RAP4’s) Motion to Compel Production of Documents and Answers to Interrogatories
filed on March 14, 2013 (Docket # 240), and RAP4’s Motion to Compel Production of
Documents Responsive to RAP4’s Tenth RFPs filed on March 18, 2013 (Docket # 251).
Plaintiff Advanced Tactical Ordnance Systems, LLC (“ATO”) filed a consolidated response to
both motions. (Docket # 262.) Argument on the motions was heard and concluded.
For the reasons stated on the record, the Court GRANTED IN PART and DENIED IN
PART the motions to compel as follows:
1.

DENIED RAP4’s request that ATO be ordered to remove all security limitations
it placed on PDF documents produced as ATO 92-819, to reproduce these
documents, and to refrain from adding security restrictions to its future document
productions.

2.

GRANTED Interrogatory No. 16(a), which asks ATO to identify all trade secrets
that it owns or alleges to have been misappropriated by any Defendant, and for
each trade secret, state exactly what the trade secret is. RAP4 contends this
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information is relevant to ATO’s trade secret misappropriation claim. This Court
has already ordered ATO to produce its pepper formula and customer list.
(Docket # 201, 221.)
3.

DENIED Document Request No. 99, which seeks ATO’s emails with the search
term “pepper.” RAP4 claims these emails are relevant to whether the mark
“pepperball” is generic for pepper balls. The burden and expense of this proposed
discovery outweighs its likely benefit under Federal Rule of Civil Procedure
26(b)(2).

4.

DENIED AS MOOT Document Request No. 102, which seeks the documents
ATO used to educate or train others in using irritant-filled projectiles. ATO has
since adequately produced these documents.

5.

GRANTED Document Request No. 104, which seeks copies of each agreement
ATO has with any person to keep confidential any trade secrets it claims to have.

6.

GRANTED Document Request No. 105, seeking all press kits of Pepperball,
which ATO asserts it has already produced. ATO is ORDERED to execute an
affidavit or declaration, signed by its executive officer, (1) stating that after
diligent search there are no documents, data, or tangible things responsive to this
request in its possession, custody, or control, other than those produced or
previously produced; and (2) describing, with particularity, its efforts to locate
documents, data, or tangible things responsive to the request, including who
conducted the search and who that person or persons consulted with to conduct
that search to ensure the veracity of their statements. Traveler v. CSX Transp.,
Inc., No. 1:06-CV-56, 2007 WL 433530, at *2 (N.D. Ind. Feb. 6, 2007) (citations
omitted).

7.

GRANTED Document Request No. 106, seeking communications between ATO
and allegedly “confused” customers between August 1, 2012, and October 31,
2012, relevant to whether the persons were, in fact, confused and whether the
emails were sent by the customers at ATO’s request.

8.

GRANTED Document Request No. 109, seeking the Pepperball customer
information that ATO alleges Defendants misappropriated, as relevant to ATO’s
trade secret misappropriation claim. The Court has already ordered ATO to
produce its customer list. (Docket # 201, 221.)

9.

DENIED Document Request No. 110, seeking the native email files from
computers or servers that ATO acquired from Pepperball for Conrad Sun, John
Stiska, and Chris Lewis, which RAP4 asserts are relevant to ATO’s claim of
conspiracy to infringe and misappropriate assets. The burden and expense of this
proposed discovery outweighs its likely benefit under Rule 26(b)(2), as the
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request significantly exceeds the scope of ATO’s claimed conspiracy arising in
February 2012 between Sun and RAP4 and thus would require ATO to perform
an overly burdensome review of perhaps thousands of extraneous emails.
Moreover, the Court already ordered ATO to produce its emails after July 1,
2011, with the search term “Conrad.” (Docket # 202.)
In addition, at the hearing the Court took the motion to compel with respect to Document
Requests Nos. 101 and 103 UNDER ADVISEMENT. Having further considered the matter, the
Court now:
10.

GRANTS the motion with respect to Document Request No. 101, which seeks a
copy of each document that identifies any nature, characteristics, or qualities of
any irritant-filled projectile offered by ATO or Pepperball. This information is
relevant, and ATO produced all of the responsive documents it had, objecting
only to the extent the request seeks confidential and proprietary information. But
ATO’s objection is not valid; there is a protective order in place among the
parties.

11.

GRANTS the motion with respect to Document Request No. 103, which seeks a
copy of each document having any technical specification, production standard,
or quality-control description for any irritant-filled projectile manufactured or
offered by ATO or Pepperball. This information is relevant, and ATO’s objection
based on “RAP4’s counsel’s history of willful violation of protective orders” is
not a valid objection. ATO is further ORDERED to execute an affidavit or
declaration, signed by its executive officer, (1) stating that after diligent search
there are no documents, data, or tangible things responsive to the request in its
possession, custody, or control, other than those produced or previously
produced; and (2) describing, with particularity, its efforts to locate documents,
data, or tangible things responsive to the request, including who conducted the
search and who that person or persons consulted with to conduct that search to
ensure the veracity of their statements. Traveler, 2007 WL 433530, at *2.

In summary, RAP4’s Motion to Compel Production of Documents and Answers to
Interrogatories (Docket # 240) and Motion to Compel Production of Documents Responsive to
RAP4’s Tenth RFPs (Docket # 251) are each GRANTED IN PART and DENIED IN PART.
ATO shall produce, subject to the terms of the protective order, the documents and affidavits

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ordered herein on or before April 4, 2013.
SO ORDERED.
Entered this 29th day of March, 2013.
S/ Roger B. Cosbey
Roger B. Cosbey,
United States Magistrate Judge

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