Paper Thermometer Company, Inc. v. Murray et al

Filing 70

ORDER granting in part and denying in part 28 Motion to Compel. So Ordered by Magistrate Judge Landya B. McCafferty.(gla)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE

Paper Thermometer Company,
Inc. and Joseph D. Loconti
v.

Civil No. 10-cv-419-SM

Nathanael Murray, Individually
and d/b/a Dishtemp Safety Company,
William Duerig and Cathleen L. Duerig
O R D E R
Plaintiffs Paper Thermometer Company, Inc. (“PTC”) and
Joseph D. Loconti (“Laconti”) bring this lawsuit against
defendants Nathanael Murray (“Murray”), his business, Dishtemp
Safety Company (“Dishtemp”), and William and Cathleen L. Duerig
(collectively “the Duerigs”).
thermometers.

PTC manufactures and sells paper

The Duerigs are former PTC employees.

Plaintiffs

allege that the Duerigs have stolen PTC trade secrets and
breached a non-competition agreement while assisting Murray in
setting up his competing and infringing business, Dishtemp.
Before the court is document no. 28, the Duerigs’ motion to
compel plaintiffs to produce discovery responsive to their first
set of interrogatories (“Interrogatories”) and requests for
production (“RPOD”).

For the reasons that follow, the motion is

granted in part and denied in part.

Rules
Fed. R. Civ. P. 26(b)(1) allows discovery of “any
nonprivileged matter that is relevant to any party’s claim or
defense.”

“[W]hen an objection arises as to the relevance of

discovery, the court would become involved to determine whether
the discovery is relevant to the claims or defenses and, if not,
whether good cause exists for authorizing it, so long as it is
relevant to the subject matter of the action.”

In re Subpoena to

Witzel, 531 F.3d 113, 118 (1st Cir. 2008) (internal citation and
quotation marks omitted); In re Sealed Case (Med. Records), 381
F.3d 1205, 1215 n.11 (D.C. Cir. 2004) (recognizing that Rule 26
distinguishes discovery relevant to claims or defenses from
discovery relevant to the subject matter of the action, and that
the rule tolerates discovery of both).
The court “must limit the frequency or extent of discovery
otherwise allowed” if and when it determines that:
(i) the discovery sought is unreasonably cumulative
or duplicative, or can be obtained from some
other source that is more convenient, less
burdensome, or less expensive;
(ii) the party seeking discovery has had ample
opportunity to obtain the information by
discovery in the action; or
(iii)

the burden or expense of the proposed
discovery outweighs its likely benefit . . . .

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Fed. R. Civ. P. 26(b)(2)(C).

Rule 37(a) of the Federal Rules

permits a party to “move for an order compelling disclosure or
discovery.”

Fed. R. Civ. P. 37(a)(1).

“[T]he purpose of pretrial discovery is to ‘make trial less
a game of blindman’s bluff and more a fair contest with the basic
issues and facts disclosed to the fullest practicable extent.’”
Wamala v. City of Nashua, No. 09-cv-304-JD, 2010 WL 3746008, at
*1 (D.N.H. Sept. 20, 2010) (quoting Macaulay v. Anas, 321 F.3d
45, 53 (1st Cir. 2003)).

In this court, the party moving to

compel discovery over an adversary’s objection bears the burden
of showing that the information he seeks is relevant and not
privileged.

Id. at *2; see also Saalfrank v. Town of Alton, No.

08-cv-46-JL, 2009 3578459, at *3 (D.N.H. Oct. 27, 2009).
On the other hand, a party invoking a “privilege bears the
burden of establishing that it applies to the communications at
issue and that it has not been waived.”

XYZ Corp. v. United

States of America (In re Keeper of the Records (Grand Jury
Subpoena Addressed to XYZ Corp.), 348 F.3d 16, 22 (1st Cir. 2003)
(addressing attorney-client privilege).

With regard to

invocations and privilege:
When a party withholds information otherwise
discoverable by claiming that the information is
privileged . . . the party must:

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(i) expressly make the claim; and
(ii) describe the nature of the documents,
communications, or tangible things not produced or
disclosed – and do so in a manner that, without
revealing information itself privileged or
protected, will enable other parties to assess the
claim.
Fed. R. Civ. P. 26(b)(5)(A).
is insufficient.

“A blanket assertion of privilege

Rather, the applicable privilege must be

claimed for each document withheld.”

6 James Wm. Moore, Moore’s

Federal Practice § 26.90[1], at 26-493 (3d ed. 2010).

Application
With the foregoing principles as a backdrop, the court turns
to the specific discovery requests at issue.
1.

Privilege Log.
In plaintiffs’ original response to defendants’ discovery

requests, plaintiffs asserted objections on the basis of the
attorney-client privilege but provided no privilege log.

In the

motion to compel, defendants seek an order directing plaintiffs
to provide a privilege log.

Since the filing of this motion,

plaintiffs have produced a privilege log.

See Doc. no. 44-11.

As defendants do not complain about the sufficiency of that log
in their reply brief, the court presumes that this dispute is
resolved.

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2. Production of Electronically Stored Information (“ESI”)1 and
documents related to PTC Resellers.
Central to plaintiffs’ trade-secret and breach-of-contract
claims against the Duerigs is the allegation that the Duerigs
shared PTC trade secrets with Dishtemp so that Dishtemp could
manufacture and sell PTC thermometer products as its own.

In

response, the Duerigs argue, inter alia, that because PTC allowed
certain customers to resell and repackage its products, any
assistance the Duerigs provided to Murray and Dishtemp to do the
same cannot constitute contributory copyright infringement, false
advertising, or breach of the noncompetition argument.2
Plaintiffs do not dispute the Duerigs’ entitlement to the
discovery; rather, plaintiffs argue that they have provided
everything the Duerigs requested.
Apparently, the Duerigs were aware of the names of certain
PTC Resellers but asked in discovery for plaintiffs to produce
“all” such names and any documentation related to PTC Resellers.
See Interrogatory Nos. 16-17 (doc. no. 28-3) and RPOD Nos. 16-18

The court notes that the discovery order in this case provides
that “Any electronic documents shall be produced in TIFF files.”
Plaintiffs concede that the only ESI that they have provided to
defendants is in “paper format.” Doc. no. 37, at 4. As
defendants are not disputing the format of the ESI plaintiffs
have provided, the court does not address that issue.
1

For the sake of simplicity, the court refers throughout this
order to the alleged resellers and repackagers of PTC products as
“PTC Resellers.”
2

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(doc. no. 28-2).

According to the Duerigs, since the filing of

its motion to compel, plaintiffs have produced invoices from 2009
and 2010 for the PTC Resellers identified by the Duerigs.

In

their objection, plaintiffs assert that they have provided “all
responsive materials concerning the customers identified by the
Duerigs as allegedly having been permitted to re-sell paper
thermometers.”

Doc. no. 37, at 5 (emphasis added).

The Duerigs are correct to ask for the names of PTC
Resellers not known to them, and are entitled to all documents,
ESI and other records responsive to their discovery requests
concerning the PTC Resellers.

See Interrogatory Nos. 16-17 (doc.

no. 28-3) and RPOD Nos. 16-18 (doc. no. 28-2).

The court orders

plaintiffs to conduct a more comprehensive search for such
records.

To the extent plaintiffs are unable to locate any

additional records, plaintiffs shall certify such fact in writing
to defendants, along with a description of their search
methodology, which certification shall satisfy plaintiffs’
obligations under this order.

To the extent the Duerigs’ motion

seeks discovery of ESI or records other than that discussed
above, the motion is denied.

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3. Documents and ESI related to the creation of the alleged
trade secrets and website.
Defendants request a court order compelling plaintiffs to
produce documents and ESI related to the creation of the alleged
trade secrets at issue in the case and the PTC website.
Plaintiffs respond by asserting that they have produced every
document they possess which is responsive to these discovery
requests.

The Duerigs have provided the court with no reason to

doubt plaintiffs’ assertion.

The court will not order plaintiffs

to provide documents which they maintain do not exist.
Plaintiffs have satisfied their obligations with respect to this
discovery dispute.
4.

Re-opening Garvey and Loconti depositions.
Defendants argue that they should be able to re-depose

Loconti, PTC’s founder, and his daughter, Jo Anne Garvey, a PTC
shareholder and current PTC employee.

Defendants argue that, to

the extent plaintiffs provide further discovery pursuant to this
order, defendants ought in fairness be permitted to re-open the
depositions and ask Garvey and Loconti questions about the
documents.

Defendants deposed Garvey and Loconti (whom the court

notes is ninety-six years old), and each deposition lasted almost
a full day.

Both Garvey and Loconti answered questions related

to their knowledge of alleged PTC resellers and repackagers.

The

court finds that re-opening those depositions is not warranted.
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5.

Protective order for alleged trade secrets.
Plaintiffs claim that the Duerigs misappropriated PTC’s

trade secrets by taking and/or retaining formulas for PTC’s paper
thermometer products.

The Duerigs claim, inter alia, that the

formulas at issue are not trade secrets because the information
can be readily derived from public information and patents
Loconti obtained when Loconti was employed by the United States
government.

Mindful that plaintiffs would deem this information

confidential, defendants seek this discovery pursuant to a
protective order.

Plaintiffs do not dispute defendants’ right to

the discovery; rather, plaintiffs dispute the terms of
defendants’ proposed protective order.
Defendants propose that plaintiffs provide the discovery to
defendants’ counsel under the following conditions: (a)
defendants’ counsel would have sole possession of the discovery,
(b) the defendants and their experts would have access only in
the presence of defendants’ counsel, and (c) defendants’ counsel
would retain any notes made by either defendants or their
experts.
Plaintiffs object to providing a copy of their confidential
documents to the defendants.

Plaintiffs propose instead to

produce the documents in accordance with defendants’ proposed
protective order only after redacting from the documents the

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chemical ingredients and compound formulations -- the precise
data that defendants claim they need to disprove the trade secret
claim.

Further, plaintiffs will allow access to the discovery

only at the office of the plaintiffs’ local counsel upon five
days prior written notice and on condition that note-taking is
not permitted by counsel, the Duerigs, or their experts.
Weighing the parties’ competing interests, the court
concludes that a protective order such as that proposed by
defendants is more reasonable.

The court is mindful of

plaintiffs’ concerns regarding disclosure, but plaintiffs’
proposed protective order adequately addresses those concerns by
limiting custody of the confidential documents to defendants’
counsel and requiring any review by the Duerigs and their experts
to be conducted in counsels’ presence and under their
supervision.

Violations of the protective order would constitute

contempt and be punished accordingly.

At the close of the case

the documents would be, pursuant to plaintiffs’ instructions,
either returned or destroyed.
The court does not approve paragraph six of defendants’
proposed protective order, as it is currently worded.

That

paragraph shall be redrafted to include a requirement that
counsel shall file sealed material with the court in accordance
with Local Rule 83.11.

Additionally, the phrase “court

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personnel” in the definitional section at 1(c)(iii) must be
removed from any proposed protective order, as “court personnel”
are not bound by the parties’ protective order.

Should

defendants edit paragraph six to reflect that the parties shall
comply with the requirements of Local Rule 83.11 and remove the
phrase “court personnel” from 1(c)(iii), and then resubmit their
proposed protective order, the court will likely grant it.

Any

such proposed protective order shall be filed on or before
October 28, 2011.

As soon as a proposed protective order is

filed, the clerk’s office shall forward it to the court for
expedited ruling.

Conclusion
The court grants the Duerig’s motion to compel (doc. no. 28)
to the extent that it seeks additional discovery related to the
PTC Resellers and seeks access to plaintiffs’ alleged trade
secrets pursuant to a protective order.

To the extent the motion

seeks discovery beyond that herein described, it is denied.
Accordingly, plaintiffs are ordered to produce documents, records
and ESI responsive to Interrogatory Nos. 16-17 and RPOD Nos. 1618 on or before October 28, 2011, and the court will entertain a

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renewed proposed protective order on or before October 28, 2011,
as outlined above.
SO ORDERED.

_________________________
Landya B. McCafferty
United States Magistrate Judge
October 20, 2011
cc:

Gary Ervery Lambert, Esq.
Victor H. Polk, Jr., Esq.
William B. Pribis, Esq.
Cameron G. Shilling, Esq.
Cathryn E. Vaughn, Esq.

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