Carson Optical, Inc. et al v. Prym Consumer USA, Inc.

Filing 32

ORDER re 30 31 : see attached Order for details. Ordered by Magistrate Judge Arlene R. Lindsay on 9/7/2012. c/ecf (Johnston, Linda)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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CARSON OPTICAL, INC., et al.,
Plaintiffs,
CV 11-3677 (SJF)(ARL)
-againstPRYM CONSUMER USA, INC., et al.,
Defendants.
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LINDSAY, Magistrate Judge:
Before the court is plaintiffs Carson Optical, Inc. and Leading Extreme Optimist Indus.,
Ltd. (“plaintiffs”) motion to compel defendant Prym Consumer USA, Inc.’s (defendant”) to
comply with plaintiffs’ discovery requests. Specifically, plaintiffs request that the undersigned
(i) direct that defendant produce responsive documents to their requests for production and
interrogatories that they served on defendant on March 28, 2012 within one week of the court’s
order; (2) deem defendant’s claims of attorney-client and work-product privilege waived; (3)
overrule defendant’s overbreadth and burdensomeness objections; (4) direct that defendant
respond to plaintiffs’ contention interrogatories (Nos. 4 and 5) within one week of the court’s
order; and (5) require that defendant provide dates for two depositions noticed by plaintiffs.
Defendant opposes the motion and cross moves to compel plaintiffs to (1) identify the precise
amount of damages which plaintiffs are seeking for each category of damages; (2) provide an
itemized breakdown of those amounts; and (3) produce all documents supporting their damage
computations. Plaintiffs have not responded to defendant’s cross motion. For the reasons set
forth below, the plaintiffs’ motion is granted in part and denied in part, and defendant’s cross
motion is granted.
With respect to plaintiffs’ requests for production, defendant represents that it anticipates
making an initial document production within two weeks which will be supplemented as
necessary. Thus, plaintiff’s motion in this regard is moot. Plaintiffs’ request that defendants’
claims of privilege be deemed waived because defendant has not produced a privilege log or
taken action to perfect its privilege claim is denied. Defendant has asserted its privilege in
response to certain of plaintiffs’ discovery requests and represents that once documents are
produced, any document withheld from production based on privilege will be placed on a
privilege log and produced to plaintiffs. See Local Civil Rule 26.2. The court will not consider
plaintiffs’ general requests that the court overrule defendant’s overbreadth and burdensomeness
objections. Counsel for plaintiffs may submit a letter application pursuant to Local Rule 37.3
that sets forth the specific requests and responses to those requests that he believes were
inadequate, along with legal support for the motion.
Plaintiffs’ request that defendant respond to plaintiffs’ contention interrogatories is
denied as premature. Pursuant to Fed. R. Civ. P. 33(a), a court may postpone a response to
contention interrogatories until discovery is closer to completion:

An interrogatory is not objectionable merely because it asks for an opinion or
contention that relates to fact or the application of law to fact, but the court may
order that the interrogatory need not be answered until designated discovery is
complete or until a pre-trial conference or some other time.
Fed. R. Civ. P. 33(a)(2). This Rule “protects the responding party from being hemmed into
fixing [its] position without adequate information.” Roth v. Commonwealth, No. CIV-79-36E,
1988 WL 43963, at *4 (W.D.N.Y. May 4, 1988). Here, Interrogatory No. 4 requests that
defendant identify the pieces of prior art that you contend alone on [sic] in combination render
any of the Patents invalid and particularly describe your contentions as to why each such piece of
prior art alone or in combination renders any of the patents invalid; and Interrogatory No. 5 asks
that for each of the Patents particularly describe the basis for your contention of noninfringement. Considering that plaintiffs have not yet responded to defendant’s discovery
demands (and substantial discovery remains to be exchanged between the parties), the burden
imposed on defendant in responding to these requests at this juncture outweighs the likelihood
that useful information will be produced where defendant has not had discovery of plaintiffs’
documents. See Protex Int’l Corp. v. Vanguard Products Group, Inc., No. CV 05-5355
(ADS)(ARL), 2006 WL 3827423, at *2 (E.D.N.Y. Dec. 27, 2006); see E.E.O.C. v. Sterling
Jewelers Inc., No. 08-CV-00706(A)(M), 2012 WL 1680811, at *7-8 (W.D.N.Y. May 14, 2012).
Finally, with respect to the scheduling of the two depositions, plaintiffs’ counsel is directed to
contact defense counsel to arrange a mutually convenient time to schedule the depositions. See
Local Civil Rule 26.4.
Defendant’s cross motion to compel is granted. Plaintiffs are directed to provide
defendant with a computation of each category of damages and produce the documents or other
evidentiary material on which each computation is based. See Fed. R. Civ. P. 26(a)(1)(A)(iii).

Dated: Central Islip, New York
September 7, 2012

SO ORDERED:

_________/s/______________
ARLENE R. LINDSAY
United States Magistrate Judge

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