International Mezzo Technologies, Inc. v. Frontline Aerospace, Inc. et al

Filing 109

RULING 71 Defts SEALED MOTION to Compel Discovery is granted in part and denied in part. By noon on 10/4/2011, the pltf shall produce all documents described. The Attorney's Eyes Only designation of the Master Services and License Agreement previously produced to the defts is lifted and the agreement is designated as Confidential Information. The parties shall bear their respective costs. Signed by Magistrate Judge Stephen C. Riedlinger on 9/27/2011. (JDL)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF LOUISIANA

INTERNATIONAL MEZZO TECHNOLOGIES,
INC.

CIVIL ACTION

VERSUS

NUMBER 10-397-SCR

FRONTLINE AEROSPACE, INC., ET AL
RULING ON DEFENDANTS’ MOTION TO COMPEL DISCOVERY
Before the court is Defendants’ Motion to Compel Discovery
(Filed Under Seal).

Record document number 71.

The motion is

opposed.1
Plaintiff International Mezzo Technologies, Inc. filed this
action seeking damages resulting from the alleged misappropriation
of certain designs and drawings by defendants Frontline Aerospace,
Inc. and Ryan Wood of a heat recuperator device used in aircraft
engines.

Plaintiff alleged that defendants used these designs and

drawings to obtain U.S. Patent No. 7,775,031 (‘031 Patent) and
violated terms of a nondisclosure agreement (“NDA”).
Defendants’ filed this motion to compel the plaintiff to
provide sufficient responses to Defendants’ Second Set of Discovery
Requests to Plaintiff served on May 11, 2011, which relate to the
plaintiff’s business relationship with Triumph Thermal Systems,
Inc. (“Triumph”). Defendants argued that during the Rule 30(b)(6),
Fed.R.Civ.P., deposition of the plaintiff May 2, 2011, they learned

1

Record document number 72.

that Triumph entered into a relevant license agreement with Mezzo
during the same time frame as the events that are subject of this
case.

Plaintiff provided responses to the defendants’ discovery

requests on June 24, 2011 in which it objected to all requests and
provided little information.

Plaintiff produced a copy of the

Master Services and License Agreement2 between itself and Triumph
and designated it as Attorney’s Eyes Only pursuant to the Joint
Stipulation and Protective Order.3

In this motion the defendants

seek to obtain substantive responses to its discovery requests and
lift the Attorney’s Eyes Only designation of the Mezzo-Triumph
agreement.
Plaintiff argued that the defendants’ motion was untimely
filed after the expiration of the scheduling order deadline for
filing motions to compel discovery, May 15, 2011.4

However, the

defendants have shown that good cause exists to permit filing the
motion after the deadline.

Defendants discovery requests were

propounded a few days prior to the fact discovery deadline.
Defendants asserted that they did not discover the degree of
relevancy of Mezzo’s business relationship with Triumph to the
issues in this case until the plaintiff’s May 2, 2011 deposition.
A review of the statements from the deposition cited by the

2

Record document number 71-2.

3

Record document number 37.

4

Record document number 39, Amended Scheduling Order.
2

defendants in their supporting memorandum show that the defendants
then

discovered

that

the

dealings

between

Triumph

and

Mezzo

correlated in time to the events at issue in this case.
Plaintiff argued that the defendants should have propounded
their discovery requests earlier to allow them enough time to file
a motion to compel discovery prior to the deadline.

Plaintiff

relied on an October 6, 2008 email from Ryan Wood to Dr. Kevin
Kelly to show that the defendants should have been aware of
Triumph’s involvement with Mezzo and the technology at issue well
before Mezzo’s deposition.5

But Wood’s mention of Triumph in the

email does not show that he knew, or even should have known, there
was already an agreement in place between Mezzo and Triumph.

The

record does not support finding that the defendants had sufficient
knowledge of Triumph’s business dealings with Mezzo to reasonably
propound their second set of discovery requests earlier.6
In their motion to compel, the defendants sought substantive
response to Interrogatory No. 1 which asked for a description
Mezzo’s business relationship with Triumph, including when it was

5

Record document number 72-2.

6

Documents responsive to Request for Production No. 3 would
also have been responsive to Interrogatory No. 5 of the defendants
first set of discovery requests. See record document number 49-2,
Plaintiff’s Response to Defendants’ First Set of Discovery Requests
to Plaintiff, p. 8-9. Plaintiff did not identify any document from
its original response to Interrogatory No. 5 which would have
informed the defendants that it had entered into a contractual
agreement with Triumph.
3

first contacted by Triumph, a description of all meetings and
negotiations with Triumph, a description of any agreements with
Triumph, and a description of how any such agreements with Triumph
relate to the ’031 Patent.

In Request for Production Nos. 1, 2,

and 3, the defendants asked for: (1) all documents relating to
Mezzo’s dealing with Triumph concerning heat exchangers; (2) all
e-mails exchanged between Triumph and Mezzo; and, (3) all documents
received from or sent to Triumph related to the ‘031 patent.
All of the defendants arguments have been considered and none
provide a persuasive reason to require Mezzo to provide additional
information

or

documents,

except

Request for Production No. 3.

for

documents

responsive

to

With the exception of Request for

Production No. 3, the defendants have not demonstrated that the
information

and

documents

sought

are

relevant

or

calculated to lead to relevant admissible evidence.

reasonably
Request for

Production No. 3 seeks “documents received from or sent to Triumph
related to the ‘031 patent.” Other than Request for Production No.
3, the defendant’s discovery requests are also overbroad.
Plaintiff

also

argued

that

the

requested

information

subject to the attorney-client privilege or is protected
product.

is

work

Plaintiff asserted that each communication discovered

through its investigation which discusses Wood, Frontline or the
‘031 patent either involved counsel or settlement discussions of
this case.

However, the plaintiff failed to identify any specific

4

document withheld from production based on either the attorneyclient privilege or as work product.

Plaintiff failed to assert

and support the privilege or protection as provided by Rule
26(b)(5)(A), Fed.R.Civ.P.

Plaintiff’s generic invocation of the

attorney-client

and

privilege

work

product

protection

in

the

preface of its discovery response is insufficient to preserve the
privilege or protection.
Moreover, the plaintiff’s argument is unpersuasive because
Request for Production No. 3 sought documents received from or sent
to Triumph.
protected

Plaintiff asserted that responsive documents would be
by

the

“common

interest

subset

of

the

attorney-

client/attorney work- product privileges” and cited a single case
from the Federal Circuit to support it argument.7

Plaintiff has

not shown how responsive documents sent from Triumph to the
plaintiff would be directly covered by the plaintiff’s attorneyclient privilege or be protected work product.

Nor has it shown

that documents it voluntarily disclosed to Triumph somehow retained
any

privilege

disclosure.

or

protection

they

may

have

had

before

the

Plaintiff’s common interest argument is unpersuasive

since the plaintiff did not identify what interests it and Triumph
have in common related to the parties claims and defenses in this
case.

Plaintiff’s generic argument that it and Triumph share an

7

Plaintiff did not assert that Triumph has an attorney client
relationship with any of the plaintiff’s attorneys.
5

interest in protecting their intellectual property rights is simply
too amorphous when the discovery request seeks “documents received
from or sent to Triumph related to the ‘031 patent.”8
Defendants
designation

of

also

requested

that

Mezzo-Triumph

Confidential Information.

the

Attorney’s

agreement

be

Eyes

Only

downgraded

to

Under Rule 26(c), Fed.R.Civ.P., the

party asserting the need for a protective order has the burden of
showing good cause for the protection sought.

Plaintiff has not

shown

of

that

the

Attorney’s

Eyes

Only

level

warranted as to the Mezzo-Triumph agreement.
identified

any

particular

provision

of

protection

is

Plaintiff has not

the

agreement,

the

disclosure of which to the defendants would cause it substantial
commercial harm. Unlike the plaintiff, the court cannot begin with
the assumption that the defendants fraudulently misappropriated the
plaintiff’s intellectual property, and then go on from there to
argue that the highest level of protection is needed to prevent
further bad acts by the defendants.

8

Moreover, the agreement

If the plaintiff and Triumph shared a common interest in a
claim or defense asserted in this case and exchanged information
and documents in furtherance of that common interest, then at least
the fact of communications between the plaintiff and Triumph
regarding that common interest should have been disclosed.
Similarly, the plaintiff should have at least identified documents
received from or provided to Triumph relevant to that common
interest even it maintained that the documents were not
discoverable because they were protected by the attorney-client
privilege or were attorney work product.
That the plaintiff
apparently did not disclose such communications and documents
supports an inference that the plaintiff and Triumph did not have
any relevant shared common interest.
6

contains mostly what can be described as boilerplate provisions
likely to be found in similar contracts.9

Other than the fact that

the agreement exists and pursuant to it Mezzo and Triumph granted
licenses to each other, the agreement does not appear to actually
disclose any technology, intellectual property or trade secret. To
the extent that the agreement contains confidential information,
e.g.

Section

Information

6.1,

Price

designation

and

Payment

affords

Terms,

sufficient

the

Confidential

protection

to

the

plaintiff.
Under Rule 37(a)(5)(C), if a motion to compel discovery is
granted in part and denied in part, the court shall allocate the
costs necessitated by the motion between the parties.

Although

only a portion of the defendants’ motion is granted, the relief
provided is not insignificant.

Therefore the parties shall bear

their respective costs.
Accordingly, the Defendants’ Motion to Compel Discovery (Filed
Under Seal) is granted in part and denied in part.
October

4,

2011,

the

plaintiff

shall

produce

all

By noon on
documents

responsive to Request for Production No. 3 of the Defendants’

9

See e.g. Sections 1.17, 1.18 and 1.21.
These sections
define a Licensed Product, Licensed Technology and Mezzo
Confidential Information, respectively.
One might expect the
definitions sections of an agreement dealing with confidential
information, technology and licensing of technology to describe the
confidential information and technology with some specificity. But
the definitions of these terms in the Mezzo-Triumph agreement do
not.
7

Second Set of Discovery Requests to Plaintiff. The Attorney’s Eyes
Only designation of the Master Services and License Agreement
previously produced to the defendants is lifted and the agreement
is designated as Confidential Information.
Baton Rouge, Louisiana, September 27, 2011.

STEPHEN C. RIEDLINGER
UNITED STATES MAGISTRATE JUDGE

8