Steuben Foods, Inc. v. GEA Process Engineering,Inc. et al
Filing
242
DECISION AND ORDER granting in part and denying in part 216 Motion for Protection. Signed by Hon. Jeremiah J. McCarthy on 12/28/15. (DAZ)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
STEUBEN FOODS, INC.,
DECISION AND
ORDER
Plaintiff,
v.
12-CV-00904-EAW-JJM
GEA PROCESS ENGINEERING, INC.,
d/b/a GEA PROCOMAC and GEA
PROCOMAC S.p.A.,
Defendants.
INTRODUCTION
Before me is defendants’ (collectively referred to as “GEA”) Motion for
Protection [216]. 1 Oral argument was held on October 23, 2015 [225, 226]. For the reasons
stated from the bench on December 21, 2015 [240] and in this Decision and Order, the Motion
for Protection is granted in part and denied in part.2
ANALYSIS
Familiarity with the relevant facts is presumed, and therefore will not be
discussed at length.
1
2
Bracketed references are to the CM/ECF docket entries.
Certain aspects of the motion which have been addressed in the December 21, 2015 proceedings
[240] are not repeated in this Decision and Order.
A.
Attorney Billing Records
GEA seeks to prevent litigation counsel for plaintiff (“Steuben”) from attempting
to obtain GEA’s redacted attorney billing records in the hope of eventually arguing to the Patent
Trial and Appeal Board (“PTAB”) that the inter partes review (“IPR”) proceedings commenced
by Nestlé USA, Inc. (“Nestlé”), the defendant in a related action, should be dismissed because
GEA and Nestlé are or were in privity.
Although the redacted billing records were produced to Steuben’s Patent Office
counsel (not its litigation counsel) in connection with GEA’s IPR proceedings, the PTAB’s
Stipulated Protective Order in those proceedings required each recipient of the materials to agree
that they would be used “only in connection with this proceeding and for no other purpose”.
[216-2], p. 8 of 8. Unless and until the PTAB modifies its Stipulated Protective Order, I lack the
power to consider Steuben’s request. Therefore, GEA’s Motion to preclude Steuben from
sharing the redacted billing records with its litigation counsel or from otherwise utilizing those
records is granted, without prejudice to Steuben’s right renew its request if and when it obtains a
modification of the PTAB’s Stipulated Protective Order.
B.
Steuben’s Interrogatory 4
Steuben’s Interrogatory 4 asks GEA to “[i]dentify with particularity each
individual that participated in the preparation of any Petition filed in the [GEA] IPR Proceedings,
including by identifying each individual’s: (a) name; (b) title; (c) employer; (d) role played in
preparing any Petitions; and (e) the nature of any input provided in connection with the
preparation of any Petitions”. [216-9], p. 5 of 10.
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Steuben argues that “the interrogatory seeks only information that is included on a
privilege log. The local rules require that where communications are to be withheld from
disclosure, a party must identify the individuals involved in the communication, the date of the
communication, and the general subject matter of the communication. W.D.N.Y. Local Rule
26(e)(1)(B)(ii). Steuben’s interrogatory does not require that GEA divulge the content of any
communication”. Steuben’s Memorandum in Opposition [223], pp. 7-8.
GEA responds that the parties had “agreed that . . . privilege logs need only log
privileged documents dated before the September 24, 2012 filing of this suit”. GEA’s Reply
[218], p. 5 (citing a March 4, 2013 e-mail from its attorney (Benjamin Kiersz) to Steuben’s
attorney (Joseph Stanganelli) ([218-1], p. 3 of 4)). However, Local Rule 29 (made applicable to
this case by Local Patent Rule 1.2) requires that “[a]ll stipulations, except stipulations made in
open court and recorded by the court reporter, shall be in writing and signed by each attorney”
(emphasis added). See also Allied Semi-Conductors International, Ltd. v. Pulsar Components
International, Inc., 907 F. Supp. 618, 623 (E.D.N.Y. 1995) (“the validity of a stipulation is
dependent upon a clear and unequivocal expression, either in writing or on the record in open
court”). Therefore, GEA’s unilateral e-mail does not relieve it of its obligation to provide a
proper privilege log.
GEA states that it “has already offered to supplement its interrogatory response to
state that: counsel for Nestlé USA has communicated with counsel for [GEA] regarding [GEA’s]
IPR proceedings and that the substance of those communications is protected by a joint defense
privilege . . . . This is as much substance as a privilege log entry would include. Further details
about the specific substance of those communications are protected by attorney-client privilege,
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work product privilege, and joint defense privilege.” GEA’s Reply [218], p. 6. However,
Steuben is not seeking the “specific substance” of communications – instead, it seeks “the
general subject matter of the communication”. Steuben’s Memorandum in Opposition [223],
p. 8. That information is required not only by Local Rule 26(e)(1)(B)(i) and (ii), but also by
Rule 26(b)(5)(A), which requires that a party invoking privilege in response to a discovery
demand must “(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”. See also Burns v. Imagine Films Entertainment, Inc., 164 F.R.D. 589, 594 (W.D.N.Y.
1996) (Foschio, M.J.) (“The summary should be specific enough to permit the court or opposing
counsel to determine whether the privilege asserted applies”).
Therefore, by January 18, 2016 GEA shall provide Steuben with a privilege log
complying with the requirements of Rule 26(b)(5)(A) and Local Rule 26(e)(1)(B).
C.
Production of Agreement
In its Memorandum in Opposition ([217], pp. 8-9, [223], pp. 8-9), Steuben
requests the production of a certain agreement between GEA and Nestlé. However, as GEA
correctly notes (GEA’s Reply [218], p. 6), that request was not the subject of the letters which
gave rise to the pending motion. Therefore, Steuben’s request is denied, without prejudice to
renewal.
-4-
CONCLUSION
For these reasons, GEA’s Motion for Protection [216] is granted in part and
denied in part.
SO ORDERED.
Dated: December 28, 2015
/s/ Jeremiah J. McCarthy
Jeremiah J. McCarthy
United States Magistrate Judge
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