Robert Bosch LLC v. ADM21., Ltd. et al
Filing
75
ORDER Granting 73 Motion to Compel Production of Documents. Signed by Magistrate Judge Lawrence R. Leavitt on 9/12/11. (Copies have been distributed pursuant to the NEF - MMM)
Michael D. Rounds, Nevada Bar No. 4734
Adam K. Yowell, Nevada Bar No. 11748
WATSON ROUNDS
5371 Kietzke Lane
Reno, Nevada 89511-2083
Telephone: (775) 324-4100
Facsimile: (775) 333-8171
E-Mail: mrounds@watsonrounds.com
E-Mail: ayowell@watsonrounds.com
Russell E. Levine, P.C., pro hac vice
Craig D. Leavell, pro hac vice
Matthew J. Shiels, pro hac vice
Bryce A. Budin, pro hac vice
KIRKLAND & ELLIS LLP
300 North LaSalle Drive
Chicago, Illinois 60654
Telephone: (312) 862-2000
Facsimile: (312) 862-2200
E-Mail: russell.levine@kirkland.com
E-Mail: craig.leavell@kirkland.com
E-mail: matthew.shiels@kirkland.com
E-mail: bryce.budin@kirkland.com
Attorneys for Defendants
UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA
ROBERT BOSCH LLC,
Plaintiff,
Civil Action No. 2:10-CV-1930-LRH-(LRL)
vs.
ADM 21 CO. LTD.; ADM USA; and ADM
NORTH AMERICA,
Defendants.
DEFENDANTS’ UNOPPOSED MOTION TO COMPEL PRODUCTION OF DOCUMENTS
FROM PLAINTIFF ROBERT BOSCH LLC
I.
INTRODUCTION
ADM has requested from Bosch agreements relating to its beam-type wiper blade patents,
and the files of negotiations associated with such agreements. But Bosch will not produce all of
these documents despite their relevance to this case, claiming its third-party confidentiality
obligations require a Court order to produce the documents. ADM now requests this Court order
production of these agreements and related documents withheld on the basis of Bosch’s third-party
confidentiality obligations. Bosch has communicated to ADM it does not oppose this motion and
does not intend to file an opposition.
Pursuant to Federal Rule 37 and LR 26-7(b), ADM attempted to resolve these issues through
a meet and confer process. Declaration of M. Shiels. Bosch refuses to produce certain agreements
and related documents, such as the negotiation correspondence and draft agreements (collectively,
“Settlement Documents”), into which it has entered to settle at least one other beam-type wiper blade
litigation.
Ex. 1, 6/1/11 Letter from Shiels to Cowell regarding Settlement Documents.1
In
particular, Bosch claims the documents relating to Bosch’s agreement with Transbec cannot be
produced because Bosch does not have Transbec’s permission. Ex. 2, 6/2/11 Letter from Cowell to
Shiels Regarding Settlement Documents. Bosch will not produce the Settlement Documents even
after ADM has cited case law contrary to Bosch’s position. Ex. 3, 6/3/11 Letter from Shiels to
Cowell Regarding Settlement Documents.
On June 7, Matthew Shiels, attorney for ADM,
participated in a telephonic meet and confer with Richard Cowell, attorney for Bosch, in which Mr.
Cowell stated that, absent an order from this Court, Bosch would not produce the Settlement
Documents that Bosch says are subject to third-party confidentiality obligations. Ex. 5, 6/7/11 Letter
from Shiels to Cowell Regarding Discovery Issues. On August 30, in a telephonic meet and confer
1
All citations to exhibits (e.g., “Ex. 1,” “Ex. 2,” etc.) herein refer to the exhibits to the Declaration of Matthew Shiels
in support of this motion.
-1-
Mr. Shiels confirmed with Jeffrey Ginsberg, counsel for Bosch, that Bosch maintained its objection
to producing the Settlement Documents, but would not oppose this motion to compel. Bosch
confirmed this position during a September 6 telephonic meet and confer, as well.
II.
ARGUMENT
Bosch will not produce certain of the Settlement Documents that ADM has requested.2 For
example, ADM particularly seeks these documents from Robert Bosch LLC v. Transbec, Case No.
10-cv-1933-RLH-PAL. These documents are responsive to ADM’s Document Request Nos. 15, 46,
47, and 48.3 Ex. 1, 6/1/11 Letter from Shiels to Cowell regarding Settlement Documents. Bosch,
citing no case law for its position, wrongly asserts that it cannot produce to ADM the Transbec
agreement because it lacks permission from Transbec. Ex. 2, 6/2/11 Letter from Cowell to Shiels
Regarding Settlement Documents. Because the Settlement Documents are relevant, and there is a
Stipulated Protective Order in place, Bosch’s third-party confidentiality obligations should not bar
production of these documents.
The Settlement Documents are relevant to the calculation of a reasonable royalty.
ResQNet.com, Inc. v Lansa, Inc., 594 F.3d 860, 872 (Fed. Cir. 2010) (remanding on issue of
damages and noting “the most reliable license in this record arose out of litigation” rather than
2
Bosch has produced some Settlement Documents in response to ADM’s requests. ADM seeks an order from this
Court compelling the Settlement Documents Bosch has withheld, or will withhold, based on Bosch’s third-party
confidentiality obligations. At this time, Bosch has represented that this includes only documents relating to the
Transbec agreement. However, so as to avoid the need for future, piece-meal motion practice, ADM respectfully
requests an Order compelling Bosch to produce all such Settlement Documents, including but not limited to those
involving Transbec.
3
At issue here are Requests Nos. 15 and 48.
Request No. 15 reads: All documents and things referring or relating to any proposed or actual agreements to obtain
from, or provide to a third party, an assignment, license, sublicense, or covenant not to sue for products allegedly
within the scope of any claim of the Patents-in-suit, or any patent in the same family as any Patent-in-suit, or any
corresponding foreign patents or applications.
Request No. 48 reads: All documents and things referring to or relating to any proposed or actual settlement
agreements, including any drafts or communications, from Robert Bosch LLC v. Transbec, District of Nevada, Dkt.
No. 10-CV-1933-RLH-PAL.
-2-
hypothetical negotiations).
The Settlement Documents also are relevant, “at a minimum,” to
damages calculations. C&C Jewelry Mfg, Inc. v. West, No 09-1303, 2010 WL 3943672, at *2 (N.D.
Cal. Oct. 7, 2010) (citation omitted).
The Settlement Documents are also relevant for other purposes, such as determining the
extent of infringement liability or patent validity, forming a litigation strategy, or understanding a
third party’s reasoning in accepting a license. High Point SARL v. Sprint Nextel Corp., No. 09-2269,
2011 WL 3241432, at *5 (D. Kan. July 29, 2011) (“Though it may be true, . . . that the licensing
correspondence would be inadmissible to calculate a reasonable royalty, the discovery of the
correspondence is nonetheless relevant, for other purposes, to the claims or defenses of the parties.”)
(internal citation omitted). The Settlement Documents are also relevant for determining whether an
injunction is appropriate. Bosch does not dispute these documents are relevant, but will not produce
them.
Bosch’s refusal to produce the Settlement Documents also is in direct contravention with
other decisions in the Ninth Circuit. See, e.g., Phoenix Solutions Inc. v. Wells Fargo Bank, N.A., 254
F.R.D. 568, 582-583 (N.D. Cal 2008) (finding licensing or settlement negotiations, along with the
parties’ final positions, relevant and discoverable); Bd. of Trs. Leland Stanford Jr. Univ. v. Tyco Int’l
Co., 253 F.R.D. 521, 523 (C.D. Cal. 2008) (noting “the simple fact that the parties to the settlement
agreement agreed to its confidentiality ‘does not shield it from discovery.’ . . . This is especially true,
here, where ‘there is a Confidentiality Order in place’ . . . .”) (citations omitted). There is no federal
privilege shielding discovery of settlement agreements and related documents.
Id.
(citing
Matsushita Elec. Indus. Co., Ltd. v. Mediatek, Inc., No. 05-3148, 2007 WL 963975, *3 (N.D. Cal.
Mar. 30, 2007)). Bosch should produce the Settlement Documents it is withholding on the basis of
Bosch’s third-party confidentiality obligations, including but not limited to, those from the Transbec
settlement.
-3-
III.
CONCLUSION
ADM requests this Court order Bosch to produce all agreements and related documents,
such as the negotiation correspondence and draft agreements, into which Bosch has entered to settle
any other beam-type wiper blade litigation, including but not limited to, its litigation with Transbec.
-4-
DATED: September 8, 2011
By: /s/_Craig D. Leavell______
Michael D. Rounds, Nevada Bar No. 4734
Adam K. Yowell, Nevada Bar No. 11748
WATSON ROUNDS
5371 Kietzke Lane
Reno, Nevada 89511-2083
Telephone: (775) 324-4100
Facsimile: (775) 333-8171
E-Mail: mrounds@watsonrounds.com
E-Mail: ayowell@watsonrounds.com
Russell E. Levine, P.C., pro hac vice
Craig D. Leavell, pro hac vice
Matthew J. Shiels, pro hac vice
Bryce A. Budin, pro hac vice
KIRKLAND & ELLIS LLP
300 North LaSalle Drive
Chicago, Illinois 60654
Telephone: (312) 862-2000
Facsimile: (312) 862-2200
E-Mail: russell.levine@kirkland.com
E-Mail: craig.leavell@kirkland.com
E-mail: matthew.shiels@kirkland.com
E-mail: bryce.budin@kirkland.com
Attorneys for Defendants.
9-12-11
CERTIFICATE OF ELECTRONIC SERVICE
I hereby certify that on September 8, 2011, I caused the foregoing DEFENDANTS’
UNOPPOSED MOTION TO COMPEL PRODUCTION
OF
DOCUMENTS FROM PLAINTIFF ROBERT
BOSCH LLC with the Clerk of the Court for the United States District Court for the District of
Nevada using the ECF System, which will send notification to the following registered participants
of the ECF System as listed on the Court’s Notice of Electronic Filing:
Jennifer L. Braster, Richard M. Cowell, Jeffrey S. Ginsberg, Mark
Hannemann, Robert W. Hernquist, Michael J. Lennon, Todd M. Touton
I also certify that I have mailed by United States Postal Service the paper to the following
non-participants in the ECF System:
None.
By: /s/ Craig D. Leavell
Craig D. Leavell
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