High Point Sarl v. Sprint Nextel Corporation et al
Filing
669
MEMORANDUM AND ORDER granting 544 Sprint's Motion to Compel Production of High Point's Licensing Communications. Within thirty (30) days of the date of this Memorandum and Order, High Point shall serve its responses to Sprint's vari ous discovery requests requesting High Point's third-party licensing communications. IT IS FURTHER ORDERED that High Point show cause in writing, no later August 12, 2011, why the Court should not order it to pay a portion of Sprint's reasonable expenses incurred in filing the motion to compel, as a sanction pursuant to Fed. R. Civ. P. 26(g)(3) for asserting a discovery objection not warranted by existing law. Signed by Magistrate Judge David J. Waxse on 7/29/2011. (byk)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
HIGH POINT SARL,
)
)
Plaintiff and Counterclaim )
Defendant,
)
)
v.
)
)
SPRINT NEXTEL CORP., et al.,
)
)
Defendants and
)
Counterclaimants.
)
CIVIL ACTION
Case No. 09-2269-CM-DJW
MEMORANDUM AND ORDER
Pending before the Court is Sprint’s Motion to Compel Production of High Point’s
Licensing Communications (ECF No. 544). Pursuant to Fed. R. Civ. P. 37(a), Sprint seeks an order
compelling High Point to produce its patent licensing communications with third parties. High Point
objects to producing its confidential, unconsummated licensing negotiations with third parties
beyond the initial offer letters, arguing that the information is not relevant, cumulative, inadmissible
under Fed. R. Evid. 408, as well as its disclosure being highly prejudicial to High Point. For the
reasons discussed below, the motion is granted.
I.
BACKGROUND
High Point SARL (hereinafter, “High Point”) filed this patent infringement action against
Sprint Nextel Corporation; Sprint Spectrum L.P.; SprintCom, Inc.; Sprint Communications
Company L.P.; Sprint Solutions, Inc.; APC PCS, LLP; APC Realty and Equipment Company, LLC;
and STC Two LLC (collectively referred to as “Sprint”). High Point alleges that Sprint’s cellular
telephone networks infringe upon four United States patents assigned to High Point. The patents
and their foreign counterparts are directed to telecommunications equipment for a wireless cellular
telephone network. High Point seeks a declaratory judgment of infringement, a permanent
injunction against Sprint, a declaration that this is an exceptional case under 35 U.S.C. § 285 and
an award of attorney’s fees, actual damages not less than a reasonable royalty under 35 U.S.C. §
284, treble damages under 35 U.S.C. § 284, and interest and costs under 35 U.S.C. § 284. Sprint
has asserted a counterclaim for declaratory judgment of invalidity and/or non-infringement as to
each of the four patents.
High Point acquired the patents-in-suit and their foreign counterparts on March 13, 2008.
On March 17, 2008, High Point sent initial letters offering licenses in those patents to several
telecommunications companies in the United States and abroad. When the offers to license the
patents were not accepted, this and other litigation ensued.
Throughout the course of discovery, High Point has refused to disclose its third-party
licensing and/or settlement correspondence beyond the initial letters of offers to license. Sprint has
requested the correspondence (or information regarding or contained within the correspondence) via
three avenues: its requests for production,1 its interrogatories,2 and its deposition topics for High
Point’s Rule 30(b)(6) deposition.3 High Point consistently asserted objections to each of these
requests. As a representative example, Document Request No. 9 of Sprint’s First Set of Requests
for Production requests that High Point produce:
1
Defendants-Counterclaimants’ First Set of Requests for Production to High Point SARL
(ECF No. 544-3) (Document Request Nos. 9, 74, and 75).
2
Defendants-Counterclaimants’ First Set of Interrogatories to High Point SARL (ECF No.
544-5) (Interrogatory Nos. 8 and 15).
3
Notice of Deposition of High Point SARL Pursuant to Rule 30(b)(6) (ECF No. 544-6)
(Topic Nos. 2, 4, 9, and 21).
2
All documents evidencing or referencing communications with third parties
regarding High Point’s Asserted Patents, the Related Patents, the Related
Applications and the Corresponding Applications, including, but not limited to, all
opinions and/or evaluations of High Point’s Asserted Patents, the Related Patents,
the Related Applications and the Corresponding Applications, all negotiations
regarding obtaining or granting of a license to High Point’s Asserted Patents, the
Related Patents, the Related Applications and the Corresponding Applications or
discussion of third party products involving the Technology at Issue.4
High Point responded in pertinent part to Document Request No. 9 as follows:
High Point objects to this request to the extent it seeks production of third-party
confidential documents or documents that High Point is under an obligation not to
disclose pursuant to a non-disclosure agreement, protective order, or other legal
restriction. High Point objects to providing information about communications or
negotiations with potential licensees where those communications or negotiations
have not yet culminated in a license agreement. Such information would be
inadmissible under Rule 408, and discovery of such information before the
culmination of a license would make it highly difficult, if not impossible, to continue
such communications or negotiations. For cases where High Point’s discussions have
not culminated in a license, High Point objects to providing information other than
its initial letters to potential licensees.5
The Court construes this representative discovery response as making three objections: (1)
confidentiality, (2) inadmissibility pursuant to Federal Rule of Evidence 408, and (3) prejudicial
effect. High Point also questions the relevance of such communications and asserts in its response
brief that such requests are cumulative of other previously produced discovery. The parties
conferred as required by Federal Rule of Civil Procedure 37(a)(1) and D. Kan. Rule 37.2 to no avail.
This discovery dispute remains unresolved. Sprint filed the instant motion on February 8, 2011,
4
Defendants-Counterclaimants’ First Set of Requests for Production to High Point SARL
(ECF No. 544-3) at 8.
5
Plaintiff’s and Counterclaim-Defendant’s Responses to Defendants-Counterclaimants’ First
Set of Requests for Production (ECF No. 544-4) at 9.
3
taking issue with the grounds upon which High Point is withholding disclosure of information and
materials responsive to these requests.
II.
DISCUSSION
In response to Sprint’s motion, High Point generally asserts four stand-alone objections to
the discoverability of the requested information: (1) confidentiality; (2) cumulativeness; (3)
relevance; and (4) inadmissibility pursuant to the policy considerations of Federal Rule of Evidence
408. The Court addresses each in turn. In addition to those stand-alone objections, and interrelated
with (3) and (4), is High Point’s prejudicial effect objection. The Court will consider prejudicial
effect with regard to both relevance and Fed. R. Evid. 408, because harm to the disclosing party may
outweigh a “marginal” relevance, precluding discovery, and the prejudice entailed by a chilling
effect on negotiations is a consideration underlying Rule 408.
A.
Confidentiality Objection
High Point’s objection that the requests seek confidential business information is unavailing
for two reasons. First, “[a] concern for protecting confidentiality does not equate to a privilege.”6
In fact, “it is well settled that confidentiality does not act as a bar to discovery and is generally not
grounds to withhold documents from discovery.”7 The federal rules simply provide no basis upon
which High Point may refuse to disclose relevant, nonprivileged discovery merely because the
discovery request seeks information it considers confidential.
6
Heartland Surgical Specialty Hosp., LLC v. Midwest Div., Inc., No. 05-2164-MLB-DWB,
2007 WL 1246216, at *2 (D. Kan. Apr. 27, 2007).
7
Dean v. Anderson, No. 01-2599-JAR, 2002 WL 1377729, at *3 (D. Kan. June 6, 2002)
(citing McCoo v. Denny’s, Inc., 192 F.R.D. 675, 689-90 (D. Kan. 2000); Mackey v. IBP, Inc., 167
F.R.D. 186, 196 (D. Kan. 1996)).
4
Second, there is a confidentiality agreement in place in this case that can be used to protect
High Point and any alleged third-party infringers. “Confidentiality concerns in many cases may be
addressed with an appropriate protective order.”8 On facts similar to those surrounding this
discovery dispute, the Eastern District of Missouri recently noted “‘other courts have routinely
recognized that license agreements relating to the patent-in-suit, and entered into in connection with
settlement, are discoverable’ despite a plaintiff’s confidentiality concerns.”9 That court held that the
confidentiality agreement already in place was sufficient to allay such concerns. Similarly, here,
the Court notes that a protective order10 has already been entered, which serves to protect the
confidentiality of certain documents and information produced in this case. The Court therefore
overrules High Point’s confidentiality objection.
B.
Cumulativeness Objection
The Court is not persuaded by High Point’s argument that Sprint’s requests for its licensing
correspondence is cumulative of previously disclosed discovery in this case or discovery that High
Point is under a continuous obligation to produce. The Court is required by Federal Rule of Civil
Procedure 26(b)(2)(C) to “limit the frequency or extent of discovery . . . if it determines that: (i) the
discovery sought is unreasonably cumulative or duplicative.”11 Thus, in certain circumstances, if
8
Dean, 2002 WL 1377729, at *3 (citing Mackey, 167 F.R.D. at 196).
9
Pandora Jewelry, LLC v. Bajul Imports, Inc., No. 1:10-CV-135 SNLJ, 2011 WL 976623,
at *2 (E.D. Mo. Mar. 17, 2011) (quoting Wyeth v. Orgenus Pharma Inc., No. 09-3235, 2010 WL
4117157 (D.N.J. Oct. 19, 2010)).
10
ECF No. 169, amended by ECF No. 498.
11
Fed. R. Civ. P. 26(b)(2)(C).
5
one discovery request seeks information duplicative of another, the Court must limit the discovery
even if both are relevant requests.
Though High Point claims to have agreed to produce discovery relating to each of Sprint’s
stated purposes for requesting the licensing correspondence, High Point has not sufficiently shown
that all of the information sought would be cumulative of other discovery requests. High Point in
effect concedes this point by thus far zealously protecting the material contained in its licensing
correspondence.
The Court agrees with Sprint that High Point may not “pick and choose” which aspects of
the requested discovery it will produce, if such discovery is in fact relevant and nonprivileged as
required by Federal Rule of Civil Procedure 26(b)(1). High Point has not shown that Sprint’s
requests for third-party licensing correspondence are unreasonably cumulative of other discovery
already produced or to be produced. The Court will now consider relevance and privilege as they
relate to High Point’s third-party licensing correspondence.
C.
Relevance Objection
Federal Rule of Civil Procedure 26(b)(1) governs the scope of discovery. It provides that
“[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s
claim or defense.”12 Furthermore, “[r]elevant information need not be admissible at the trial if the
discovery appears reasonably calculated to lead to the discovery of admissible evidence.”13 To reach
the issue of relevance, the Court must first separate High Point’s relevance objection from its
objection based upon Fed. R. Evid. 408.
12
Fed. R. Civ. P. 26(b)(1).
13
Id.
6
i.
Separation of Relevance and Rule 408-Based Objections
The Court notes initially that, although High Point concedes that Federal Rule of Evidence
408 does not govern discovery (or, therefore, dictate the outcome of a relevance inquiry), High Point
nonetheless intertwines its relevance and Federal Rule of Evidence 408 arguments. The two must
be considered separately.
High Point’s logic in coupling the two objections appears to be as follows: the
communications would be inadmissible at trial pursuant to Rule 408, therefore, their discovery is
not calculated to lead to admissible evidence, therefore, the requested discovery is irrelevant. This
logic conflates whether the requests may be admitted at trial with whether they must be disclosed
in the discovery process as a party forms its position for trial. As the text of Federal Rule of Civil
Procedure 26(b)(1) makes clear, admissibility and discoverability are not one and the same, and in
fact the standards are far from identical. Because the standard for the former is “much more
encompassing than the latter,” an objection based on “inadmissibility at trial is not a proper
objection to discovery in a civil case.”14 Though the Court need not reach the question of whether
the licensing correspondence would be admissible at trial, High Point has put in issue the question
of whether the public policy underlying Fed. R. Evid. 408, that is, a policy in favor of settling
disputes out of court, should be a valid basis on which to withhold the licensing correspondence.
In sum, although High Point intertwines these two objections, the Court will consider each
in turn. As discussed in further detail below, the Court will treat High Point’s Rule 408-based
objection as claiming a “settlement privilege” that has been recognized by some courts as
14
Orleman v. Jumpking, Inc., No. 99-2522-CM, 2000 WL 1114849, at *2 (D. Kan. July 11,
2000).
7
prohibiting discovery, and the Court will consider it separately from the discovery’s relevance to
this litigation.
ii.
Relevance Standard
Having separated the Rule 408 objection from the relevance objection, the Court now
considers the relevance of third-party licensing correspondence to the instant action between High
Point and Sprint. The federal discovery rules broadly construe relevance, and a request for
discovery should be considered relevant if there is “any possibility” that the information sought may
be relevant to the claim or defense of any party.15 A discovery request “should ordinarily be allowed
unless it is clear that the information sought can have no possible bearing on the subject matter of
the action.”16 When the discovery sought appears relevant on its face, the party resisting the
discovery has the burden to establish the lack of relevance by demonstrating that (1) the requested
discovery does not come within the broad scope of relevance as defined under Rule 26(b)(1), or (2)
is of such marginal relevance that the potential harm the discovery may cause would outweigh the
presumption in favor of broad disclosure.17
iii.
Whether Licensing Communications Between High Point and Thirdparties is Relevant
Because the requested discovery relates to the courses of action followed by similarly
situated alleged infringers of the patents-in-suit, the Court finds that these discovery requests seek,
on their face, information relevant to the claims or defenses of the parties. Thus, High Point has the
15
McCoy v. Whirlpool Corp., 214 F.R.D. 642, 643 (D. Kan. 2003) (citation omitted).
16
Snowden v. Connaught Labs., Inc., 137 F.R.D. 336, 341 (D. Kan. 1991).
17
Id. (citation omitted); see also DIRECTV, Inc. v. Puccinelli, 224 F.R.D. 677, 684 (D. Kan.
2004).
8
burden of showing the requested discovery does not come within the broad scope of relevance or
is of such marginal relevance that the potential harm the discovery may cause would outweigh the
presumption in favor of broad disclosure. The Court is not persuaded by High Point’s conclusory
statement that, because most of the correspondence regards its attempts to license its patents outside
the United States, the requests are not relevant because its “patent claims in foreign jurisdictions are
different, infringement positions based on other[’]s systems are necessarily different, and foreign
patent law governing infringement and validity is different.”18 High Point has not shown that, for
example, the defense of a foreign company operating a similar telecommunications network under
a similar alleged infringement threat would be irrelevant to Sprint’s defenses in this case.
High Point next argues that the requests seek irrelevant communications because the
communications cannot be considered for one of Sprint’s admitted reasons for seeking the requested
materials or information. Though it may be true, as High Point suggests, that the licensing
correspondence would be inadmissible to calculate a reasonable royalty,19 the discovery of the
correspondence is nonetheless relevant, for other purposes, to the claims or defenses of the parties.
Sprint asserts that the requests are relevant to the availability and terms of potential licenses, the
valuation of the patents, and the reasoning expressed by third parties accepting or declining licenses
in the patents-in-suit.
18
High Point’s Mem. in Opp. to Sprint’s Mot. to Compel Produc. of High Point’s Licensing
Communications (ECF No. 566) at 12.
19
See Clear with Computers, LLC v. Bergdorf Goodman, Inc., 753 F. Supp. 2d 662, 663 (E.D.
Tex. 2010) (“[S]ome courts have held that settlement licenses are admissible to prove a reasonable
royalty while other courts have held that they are not.”).
9
Other courts have found a patent holder’s correspondence with third parties related to
licensing negotiations to be relevant in patent infringement suits.20 Courts have found it relevant to
ascertaining the extent of liability, formulating an appropriate litigation strategy,21 infringement and
validity of the patents at issue,22 whether prior licenses are comparable, and calculation of reasonable
royalty.23
High Point argues that the Court should limit discovery to correspondence pertaining to
consummated licensing agreements. The Court is not persuaded by this argument. As noted by the
court in Phoenix Solutions, Inc. v. Wells Fargo Bank, N.A., requiring the disclosure of only
consummated agreements would “fail[] to acknowledge that licensing and infringement positions
may be taken and discarded or otherwise changed over time based on a myriad of extrinsic factors
20
See, e.g., Phoenix Solutions, Inc. v. Wells Fargo Bank, N.A., 254 F.R.D. 568, 582 (N.D.
Cal. 2008) (“There are a multitude of ways in which Phoenix’s correspondences with third parties
related to license negotiations could be relevant to this litigation,” including helping Wells Fargo
to “ascertain the extent of its liability to Phoenix and to formulate an appropriate litigation
strategy.”); Conopco, Inc. v. Warner-Lambert Co., No. Civ. A. 99-101(KSH), 2000 WL 342872,
at *6 (D.N.J. Jan. 26, 2000) (holding that licensing correspondence, because it could contain
admissions against interest, “may be considered by a court when construing the scope of a patent
and are relevant to the issues of infringement and validity”). See also MSTG, Inc. v. AT&T Mobility
LLC, No. 08 C 7411, 2011 WL 841437, at *3 (N.D. Ill. Mar. 8, 2011) (finding communications,
including settlement negotiations with third-party licensees of patents at issue relevant to whether
prior licenses are comparable to patents in suit in calculating a reasonable royalty); Tyco Healthcare
Grp. LP v. E-Z-EM, Inc., Civ. A. No. 2:07-CV-262 (TJW), 2010 WL 774878, at *2 (E.D. Tex. Mar.
2, 2010) (recognizing a shift in approach toward discoverability of settlement negotiations and
compelling production of settlement negotiations of patent license agreement between the defendant
and a third party).
21
Phoenix Solutions, 254 F.R.D. at 582.
22
Conopco, 2000 WL 342872, at *6.
23
MSTG, 2011 WL 841437, at *3.
10
that could well be relevant to another party accused of infringement.”24 The Court agrees, especially
where, as here, there have been no successful executions to date. Thus, High Point’s offer to
disclose consummated agreements rings hollow.
Additionally, the Court is hard pressed to distinguish High Point’s licensing agreements from
its settlement agreements on the facts of the record before the Court. The two are interrelated in that
High Point seeks compensation either for the use or for the infringement of the patents-in-suit.
Furthermore, absent consummated agreements of either variety, the correspondence of either
licensing or settlement negotiations may be the best reflection of the value of the patents.25 The
Court finds persuasive Sprint’s argument that Heartland Surgical Specialty Hospital, LLC v.
Midwest Division, Inc.26 is distinguishable on these grounds.
Nor has High Point shown that the discovery sought has merely “marginal” relevance.
Having determined that the requests seek relevant documents or information, the Court considers
whether, as High Point argues, the relevance is so “marginal” as to be outweighed by the harm to
High Point if disclosed. Courts have found that “when the requests approach the outer bounds of
24
Phoenix Solutions, 254 F.R.D. at 582.
25
See Clear with Computers, 753 F. Supp. 2d at 664 (finding that settlement agreements were
likely “the only licenses of the patents-in-suit, making an accurate understanding of them more
important,” and it had not been shown that there were “other non-litigation licenses that reflect[ed]
the value of the invention”); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872 (Fed. Cir. 2010)
(prior license agreement that resulted from litigation can be a “most reliable” evidence of
hypothetical reasonable royalty); Volumetrics Med. Imaging, LLC v. Toshiba Am. Med. Sys., Inc.,
No. 1:05CV955, 2011 WL 2470460 (M.D.N.C. June 20, 2011) (concluding that in general
settlement-derived licenses are relevant to the question of a reasonable royalty at the discovery
stage).
26
No. 05-2164-MLB-DWB, 2007 WL 1246216, at *5 (D. Kan. Apr. 27, 2007) (compelling
production of settlement agreements, but finding preceding settlement negotiations not relevant and
likely to have “chilling effect” on settlement negotiations).
11
relevance and the information requested may only marginally enhance the objectives of providing
information to the parties or narrowing the issues, the Court must then weigh that request with the
hardship to the party from whom the discovery is sought.”27 High Point, however, has not shown
that the requested discovery to be nearing the “outer bounds” of relevance. The relevance of the
information sought to Sprint’s case is far from being marginal. Furthermore, though some harm may
be occasioned by the disclosure of this correspondence, the Court finds this harm is of the sort
incidental to full disclosure and the equal factual footing envisioned by the federal discovery
process.
D.
Fed. R. Evid. 408-Based Objection
As noted above, the Court treats High Point’s objection based upon Fed. R. Evid. 408 as an
assertion of a version of a “settlement privilege” that would protect its unconsummated settlement
and/or licensing negotiations. Though High Point argues that it is not asserting a legal privilege over
negotiations, it seems to be doing just that by disputing whether it must disclose such negotiations.
As noted above, the Court does not find that a Rule 408-based objection can be logically intertwined
with a relevance objection. And because the Court finds the discovery sought relevant and noncumulative, the only remaining grounds on which the discovery may be withheld is by some
privilege that protects it from disclosure.28
Federal Rule of Evidence 408 precludes the admission of evidence of compromise and offers
to compromise. Under the Rule, the following evidence is not admissible when offered to prove
liability for, invalidity of, or amount of a claim that was disputed as to validity or amount, or to
27
Carlson Companies, Inc. v. Sperry & Hutchinson Co., 374 F. Supp. 1080, 1088 (D. Minn.
28
See Fed. R. Civ. P. 26(b)(1).
1974).
12
impeach through a prior inconsistent statement or contradiction:
(1) furnishing or offering or promising to furnish--or accepting or offering or
promising to accept--a valuable consideration in compromising or attempting to
compromise the claim; and
(2) conduct or statements made in compromise negotiations regarding the claim,
except when offered in a criminal case and the negotiations related to a claim by a
public office or agency in the exercise of regulatory, investigative, or enforcement
authority.29
The Advisory Committee notes to Rule 408 state as a basis for the rule the “promotion of the public
policy favoring the compromise and settlement of disputes.” The Sixth Circuit has recognized the
existence of a “settlement privilege” based upon Fed. R. Evid. 408 by expanding the protection
afforded by that rule based on its underlying policy considerations.30 The courts recognizing such
a privilege agree with High Point that the disclosure of such settlement communications could have
a chilling effect on the settlement of disputes.31 Some courts have found the “prejudicial effect” of
producing settlement-related discovery can be addressed by entry of a protective order limiting the
parties’ use and disclosure of the information.32
Furthermore, as the court noted in Heartland Surgical Speciality Hospital LLC v. Midwest
Division, Inc., “courts have reached widely divergent conclusions about whether or not a federal
29
Fed. R. Evid. 408.
30
Goodyear Tire & Rubber Co. v. Chiles Power Supply, Inc., 332 F.3d 976, 980 (6th Cir.
2003).
31
Software Tree, LLC v. Red Hat, Inc., No. 6:09-CV-097, 2010 WL 2788202, at *4 (E.D.
Tex. June 24, 2010); Mondis Tech., Ltd. v. LG Elecs., Inc., Civ. A. Nos. 2:07–CV–565–TJW–CE,
2:08–CV–478–TJW, 2011 WL 1714304, at *5 (E.D. Tex. May 4, 2011).
32
Heartland Surgical Specialty Hosp., LLC v. Midwest Div., Inc., No. 05-2164-MLB-DWB,
2007 WL 1246216, at *4 (D. Kan. Apr. 27, 2007); DIRECTV, 224 F.R.D. at 687.
13
settlement privilege exists.”33 In Heartland, the court, in the absence any controlling Tenth Circuit
authority on the issue, declined to recognize a federal settlement privilege under either Fed. R. Evid.
408 or under Fed. R. Evid. 501.34 The Court has found no such direction from the Tenth Circuit
since the Heartland case, and thus will similarly not recognize such a settlement privilege here. The
Court therefore overrules High Point’s objections to discovery of its third-party licensing
communications based upon Fed. R. Evid. 408.
III.
EXPENSES
Under Fed. R. Civ. P. 37(a)(5)(A), if a motion to compel is granted, then the court after
providing an opportunity to be heard, must require the party whose conduct necessitated the motion
to pay the movant’s reasonable expenses, including attorney’s fees, incurred in making the motion.
But the court must not order this payment if the opposing party’s response or objection was
substantially justified.35 Sprint does not request expenses in its motion to compel. Upon review of
the briefing, the Court finds that all of High Point’s objections, except its confidentiality objection,
to the discovery requests were substantially justified.
Finding that High Point’s confidentiality objection was not substantially justified, the Court
orders High Point to show cause why the Court should not order it to pay a portion of Sprint’s
reasonable expenses incurred in filing the motion to compel, as a sanction pursuant to Fed. R. Civ.
33
Heartland, 2007 WL 1246216, at *4.
34
Id. (relying on reasons outlined in Matsushita Elec. Ind. Co. v. Mediatek, Inc., No. C-053148-MMC, 2007 WL 963975, at *2-3 (N.D. Cal. Mar. 30, 2007) and White v. Kenneth Warren &
Son, Ltd., 293 F.R.D. 364, 368 (N.D. Ill. 2001)). See also In re Urethane Antitrust Litig., No.
04-MD-1616-JWL, 2009 WL 2058759, at *4 (D. Kan. July 15, 2009) (finding that plaintiffs had not
met their burden of establishing that a settlement privilege existed to shield documents from
discovery).
35
Fed. R. Civ. P. 37(a)(5)(A)(ii).
14
P. 26(g)(3) for asserting a discovery objection not warranted by existing law.36
IV.
CONCLUSION
The Court overrules High Point’s confidentiality, cumulativeness, relevance, and Rule 408
-based objections to disclosure of its third party licensing correspondence. Having overruled each
of those objections, the Court finds that Sprint is entitled to an order compelling production of the
licensing communications between High Point and third party alleged infringers, as requested in
Sprint’s discovery requests.
IT IS THEREFORE ORDERED that Sprint’s Motion to Compel Production of High
Point’s Licensing Communications (ECF No. 544) is granted. Within thirty (30) days of the date
of this Memorandum and Order, High Point shall serve its responses to Sprint’s various discovery
requests requesting High Point’s third-party licensing communications.
IT IS FURTHER ORDERED that High Point show cause in writing, no later August 12,
2011, why the Court should not order it to pay a portion of Sprint’s reasonable expenses incurred
in filing the motion to compel, as a sanction pursuant to Fed. R. Civ. P. 26(g)(3) for asserting a
discovery objection not warranted by existing law.
IT IS SO ORDERED.
Dated in Kansas City, Kansas on this 29th day of July, 2011.
s/ David J. Waxse
David J. Waxse
U. S. Magistrate Judge
cc:
All counsel and pro se parties
36
Counsel for all parties should read Mancia v. Mayflower Textile Servs., Co., 253 F.R.D. 354
(D. Md. 2008), wherein Magistrate Judge Grimm provides an in-depth analysis of Fed. R. Civ. P.
26(g), the consequences of a violation of that rule and the Court’s obligation to sanction violations
of the rule.
15
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