W E T Automotive Systems, Ltd v. IGB Automotive Ltd
Filing
101
INTERIM ORDER SETTING SUPPLEMENTAL BRIEFING SCHEDULE re: 85 SEALED MOTION to Compel IGB to Produce Withheld Materials and to Reopen a Deposition re 83 Notice (Other), 84 MOTION to Compel IGB to Produce Withhe ld Materials and to Reopen a Deposition [REDACTED VERSION] filed by Gentherm GmbH, Gentherm Canada ULC, 84 MOTION to Compel IGB to Produce Withheld Materials and to Reopen a Deposition [REDACTED VERSION] filed by Gentherm GmbH, Gentherm Canada ULC., ( Sur-reply due by 3/18/2016)(See document for additional dates) Signed by Magistrate Judge Anthony P. Patti. (MWil)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
GENTHERM CANADA ULC., et al.,
Plaintiffs,
Case No. 2:13-cv-11536
District Judge Arthur J. Tarnow
Magistrate Judge Anthony P. Patti
v.
IGB AUTOMOTIVE, LTD.,
Defendant.
___________________________________/
INTERIM ORDER ON PLAINTIFF’S MOTION TO COMPEL AND TO
SET SUPPLEMENTAL BRIEFING SCHEDULE
Plaintiff, Gentherm Canada, ULC (“Gentherm”), filed a motion to compel
discovery on January 19, 2016, which was referred to me the next day by Judge
Tarnow. (DE 84, 85, and 86.) Defendant, IGB Automotive, Ltd. (“IGB”), filed its
response on February 5, 2016 (DE 90),Gentherm filed its reply on February 16,
2016 (DE 95 and 96), and the parties filed a joint statement of resolved and
unresolved issues on February 24, 2016 (DE 99). Judge Tarnow referred the
motion to me on January 20, 2016. (DE 86.)
Gentherm seeks an order compelling IGB to produce certain documents
identified in its privilege log relating to communications involving Thorsten
Schleucher, a German patent engineer. (See DE 85 at 3-7, identifying privilege log
numbers 150, 192, 193, 197, 198, 224, 225, 229, 232, 233, 234, 249, and 250 as
those at issue.) In addition, it asks the Court to reopen the deposition of Dmitri
Axakov at IGB’s expense. In its response, IGB contends that the motion should be
denied as moot because it already withdrew its objections with respect to Mr.
Schleucher and produced log numbers 150, 232, 249, 250, and 324. According to
IGB, the remaining documents are independently protected by attorney-client
privilege and/or the work product doctrine. Gentherm replies that IGB has failed
to satisfy its burden of proof that the documents are so protected from discovery.
The matter came before me for a hearing on February 26, 2016. At the
hearing, the Court was informed that IGB recently produced additional documents,
privilege log numbers 233 and 234. In addition, counsel for IGB indicated that it
would withdraw its privilege and work product objections as to numbers 192 and
193 in exchange for Gentherm’s counsel’s stipulation that it would not constitute a
general waiver of privilege as to other documents, to which counsel stipulated on
the record.
There seems to have been some genuine confusion on the part of both parties
with respect to the scope of Gentherm’s motion. Specifically, Gentherm filed the
motion seeking certain documents withheld due to attorney-client or work product
privilege relating to communications with Mr. Schleucher. IGB limited its
response to items in which it had claimed privilege with respect to Mr. Schleucher
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and produced those items, except for the documents it believed were covered by
attorney-client privilege or the work product doctrine, for reasons independent of
Mr. Schleucher’s involvement. Specifically, IGB noted in its response that some
of the communications were protected on the basis that they involved German
counsel Ekkehard Grimm. In its reply, however, Gentherm asserts that IGB failed
to properly support its assertions of privilege in its response. In addition,
Gentherm argues that communications involving Mr. Grimm are not protected by
privilege because he is not admitted to a bar of a state or federal court in the United
States and is not admitted to practice before the U.S. Patent Office. As these issues
were first raised in Gentherm’s reply brief, IGB was, understandably, unable to
respond to Gentherm’s contentions at the time of the hearing.
Accordingly, the Court requires additional information to resolve this matter.
For the reasons stated on the record, Gentherm’s motion remains pending and the
parties are hereby ORDERED to do the following:
1. On or before MARCH 11, 2016, the parties must meet and confer pursuant
my practice guidelines and Eastern District of Michigan Local Rule 37.1.
The parties are expected to resolve all issues possible, including but not
limited to the status of Mr. Grimm’s licensure to practice before German or
European Union patent offices and/or German or European Union courts,
and whether the communications at issue are subject to privilege. The parties
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are ordered to follow the instructions set forth in my March 18, 2015 order
with respect to the logistics of the meet and confer. (DE 57 at 2.)
2. If issues remain outstanding after the meet and confer conference, IGB shall
file a sur-reply with the intent of 1) establishing its entitlement to claim
attorney-client and/or work product privilege (with supporting affidavits
and/or declarations) with respect to the contested documents and 2) to
address the question of law issue related to German counsel. The sur-reply
will be limited to ten pages and must be filed n or before MARCH 18, 2016.
3. On MARCH 18, 2016, IGB shall also submit to the Court a copy of the
documents that remain at issue for an in camera review. If the documents
are written in whole or in part in German, they must be professionally
translated by an outside company at IGB’s expense, and must contain a
certification of their accuracy.
4. On MARCH 25, 2016, Gentherm shall file its supplemental brief, limited to
eight pages, responding to IGB’s sur-reply.
5. When preparing their supplemental briefing, both parties are instructed to
consider the following article and cases:
a. Laurence H. Pretty, The Boundaries of Discovery in Patent Litigation:
Privilege, Work Product, and Other Limits, 18 AIPLA Q.J. 101, 10809 (1990);
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b. Toledo Edison Co. v. GA Techs., Inc., Torrey Pines Tech. Div., 847
F.2d 335, 339 (6th Cir. 1988);
c. Amway Corp. v. Procter & Gamble Co., No 1:98-cv-726, 2001 WL
1818698, at *7 (W.D. Mich. Apr. 3, 2001); and
d. In re Rivastigmine Patent Litigation, 237 F.R.D. 69, 74 (S.D.N.Y.
2006).
6. The deposition of Mr. Axakov shall be reopened at IGB’s expense after
either the parties resolve the outstanding discovery issues or the Court rules
on any remaining disputes. The deposition shall occur on a day and at a
location in the United States where other depositions are occurring.
Expenses shall be limited to the time required for the deposition itself. The
scope of the deposition will be limited to any relevant documents and related
information or communications regarding U.S. patents or U.S. patent law
that IGB was withholding at the time of Mr. Axakov’s previous deposition,
but which has subsequently been produced.
IT IS SO ORDERED.
Dated: February 26, 2016
s/Anthony P. Patti
Anthony P. Patti
UNITED STATES MAGISTRATE JUDGE
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I hereby certify that a copy of the foregoing order was sent to parties of record on
February 26, 2016, electronically and/or by U.S. Mail.
s/Michael Williams
Case Manager for the
Honorable Anthony P. Patti
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