Thompson Automotive Labs, LLC v. Illinois Tool Works, Inc.

Filing 135

ORDER denying 79 Motion to Compel. Counsel is reminded to read the order in its entirety for critical deadlines and information. Signed by Magistrate Judge James E. Gates on 12/11/2017. (Collins, S.)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
WESTERN DIVISION
5: 15-CV-282-FL
THOMPSON AUTOMOTIVE LABS, INC.,
Plaintiff/Counter-Defendant,

)
)
)
)

)

~

ORDER

)
)
)
)

ILLINOIS TOOL WORKS INC.,
,Defendant/Counter-Plaintiff.

This case comes before the court on a motion (D.E. 79) by plaintiff/counter-defendant
Thompson Automotive Labs, LLC ("plaintiff') to compel supplemental responses to
interrogatories nos. 11, 13, 15, and 18 and requests for production of documents nos. 21-25, 6268, 79, 82, 85, and 91-96 in its first set of discovery requests to defendant/counter-plaintiff Illinois
Tool Works Inc. ("defendant" or "ITW"). Defendant opposes the motion, which has been fully
briefed.. For the reasons set forth below, the motion will be denied.

I.

BACKGROUND
Plaintiffs claims arise from an Exclusive Supply Agreement (the "Agreement") entered

into by the parties. See 1st Supp. Compl. ("complaint") (D.E. 21)

~~

1. Specifically, under the

Agreement, defendant agreed to purchase a certain number of plaintiffs Combustion Performance
Test Tools, or CPT Tools.

Id~~

1, 29. After an attempt by defendant to purchase plaintiffs CPT

Tool technology was not successful, plaintiff contends that defendant breached the Agreement and
marketed and sold a competing product, the AutoEKG, a product which it contends infringes
plaintiffs trademarks and trade dress. Id.
breach of contract (id

~~

~~

60, 75. In its complaint, plaintiff asserts claims for

104-07); trademark and trade dress infringement (id

~~

108-18);

inducem¢nt of trademark and trade dress infringement (id
competition (id

ifif 119-24); false advertising and unfair

ifif 125-33); violations of the North Carolina Unfair and Deceptive Trade Practices

Act, N.C. Gen. Stat. § 75.1-1 et al. (id
registration no. 4,771,676 (id

ifif 134-39); and cancellation of United States trademark

ifif 140-49).

Defendant asserts a number of affirmative defenses as

well as counterclaims for breach of contract (Am. Aff. Defs. & Counterclaims (D.E. 43)
52); fraudulent misrepresentation (id
misrepresentation (id
Practices Act (id

ifif

ifif 74-83);

ifif 47-

ifif 53-62); fraudulent concealment (id. ifif 63-73); negligent

violations of the North Carolina Unfair and Deceptive Trade

84-90); and rescission based on unilateral mistake (id

alternatively, rescission based on mutual mistake (id

ifif 99-108).

ifif

91-98) or

Plaintiff denies the material

allegations of the counterclaims. See generally Ans. to Am. Counterclaims (D.E. 44).
Plaintiff served its first set of interrogatories (Interrogs. (D.E. 80-1)) and first requests for
productkm of documents (Prod. Reqs. (D.E. 80-2)) on 26 January 2016. On 29 February 2016,
defendant served its responses to the discovery requests. See Resp. to Interrogs. (D.E. 80-3); Resp.
to Prod. Reqs. (D.E. 80-4). Defendant objected to all the discovery requests at issue. In response
to interrogatory no. 11, it stated that it would provide no additional information; in response to
interrogatories nos. 13 and 15, it stated that it would provide information after entry of an
acceptable protective order; and in response to interrogatory no. 18, it provided some of the
information requested. See Resp. to Interrogs. Nos. 11, 13, 15, 18. In response to production
requests nos. 22, 24, 91, 93, and 95, defendant stated that it would produce some documents
requeste,d after entry of an acceptable protective order; and in response to the other production
requests; that it would not produce any of the documents requested. See Resp. to Prod. Reqs. Nos.
21-25, 62-68, 79, 82, 85, 91-96. A protective order was entered on 3 October 2016 (D.E. 66). On
8 February 2017 and 9 February 2017, plaintiff notified defendant of alleged deficiencies in

2

defendant's responses. See 8 Feb. 2017 Ltr. (D.E. 80-5); 9 Feb. 2017 Ltr. (D.E. 80-6). Defendant
'

served supplemental responses to interrogatories nos. 13, 15, and 18 on 27 February 2017. Supp.
Resp. to Interrogs. (D.E. 80-7) Nos. 13, 15, 18. Defendant did not serve any supplemental
'

responses to the production requests. In an email sent 15 May 2017 (consisting of pp. 2-3 ofD.E.
82-4), plaintiff requested that the discovery requests at issue in its motion be included in a
telephonic discovery conference with the court which defendant had requested pursuant to § II.D
of the Case Management Order ("CMO") (D.E. 32) (see 3 May 2017 Email (consisting of pp. 7-8
ofD.E. 82-4)).
The conference was held on 23 May 2017. See Minute Entry on 23 May 2017 Conf. In a
written order entered that day memorializing deadlines stated during the conference, the court
permitted plaintiff to file by 6 June 2017 a motion relating to the matters presently at issue if they
were not resolved by that date by the parties. See Ord. on 23 May 2017 Conf. (D.E. 77)

~

3.

Plaintiff, filed the instant motion to compel on that date.
Again, the discovery requests as to which plaintiff seeks an order compelling supplemental
responses are interrogatories nos. 11, 13, 15, and 18 and requests for production of documents nos.
21-25, 62-68, 79, 82, 85, and 91-96. These discovery requests relate to (1) financial information
concerning defendant's liquids, supplies, or other related products, and (2) technical data regarding
defendant's AutoEKG. Defendant opposes the motion, arguing that it is untimely and seeks
production of information and documents not relevant under the Federal Rules of Civil Procedure.

II.

APPLICABLE LEGAL PRINCIPLES
The Federal Rules of Civil Procedure enable parties to obtain information by serving

requests for discovery on each other, including interrogatories and requests for production of
documents. See generally Fed. R. Civ. P. 26-37. Rule 26 provides for a broad scope of discovery:

3

Parties may obtain discovery regarding any nonprivileged matter that is relevant to
8*Y party's claim or defense and proportional to the needs of the case, considering
tlie importance of the issues at stake in the action, the amount in controversy, the
parties' relative access to relev,ant information, the parties' resources, the
importance of the discovery in resolving the issues, and whether the burden or
expense of the proposed discovery outweighs its likely benefit. Information within
this scope of discovery need not be admissible in evidence to be discoverable.
Fed. R. Civ. P. 26(b)(l).
'Ihe district court has broad discretion in determining relevance for , discovery purposes.

Seaside Farm, Inc. v. United States, 842 F.3d 853, 860 (4th Cir. 2016); Watson v. Lowcountry Red
Cross, 974 F.2d 482, 489 (4th Cir. 1992). The party resisting discovery bears the burden of
establishing the legitimacy of its objections. Eramo v. Rolling Stone LLC, 314 F.R.D. 205, 209
(W.D. Va. 2016) ("[T]he party or person resisting discovery, not the party moving to compel
discovery, bears the burden of persuasion." (quoting Kinetic Concepts, Inc. v. ConvaTec Inc., 268
F.R.D. 226, 243 (M.D.N.C. 2010))); Brey Corp. v. LQ Mgmt., L.L.C., No. AW-11-cv-00718-AW,
2012 WL 3127023, at *4 (D. Md. 26 Jul. 2012) ("In order to limit the scope of discovery, the
'party resisting discovery bears the burden of showing why [the discovery requests] should not be
granted.1" (quoting Clere v. GC Servs., L.P., No. 3:10-cv-00795, 2011 WL 2181176, at *2 (S.D.
W. Va. 3 June 2011))).
Rule 33 governs interrogatories. Fed. R. Civ. P. 33. It provides that "[u]nless otherwise
stipulated or ordered by the court, a party may serve on any other party no more than 25 written
interrogatories, including all discrete subparts." Fed. R. Civ. P. 33(a)(l). Rule 33 requires that a
party served with interrogatories answer each fully under oath to the extent that the party does not
object to the interrogatory. Id.(b)(3). Objections not made timely are waived, subject to the court
excusing the untimeliness for good cause. Id. (b)(4).

4

Rule 34 governs requests for production of documents. A party asserting an objection to a
particular request "must specify the part [to which it objects] and permit inspection of the rest."
Fed. R. €iv. P. 34(b)(2)(C).
Rule 37 allows for the filing of a motion to compel discovery responses. See Fed. R. Civ.
P. 37(a)(3)(B). Rule 37 requires that a motion to compel discovery "include a certification that
the movant has in good faith conferred or attempted to confer with the person or party failing to
make

dis~losure

or discovery in an effort to obtain it without court action." Jd(a)(l). Similarly,

Local Civil Rule 7.l(c), E.D.N.C. requires that "[c]ounsel must also certify that there has been a
good faith effort to resolve discovery disputes prior to the filing of any discovery motions." Local
'

Civ. R. 7. l(c), E.D.N.C.; see Jones v. Broadwell, No. 5:10-CT-3223-FL, 2013 WL 1909985, at *1
(E.D.N.C. 8 May 2013) (denying motion to compel which did not state that party complied with
Rule 37(a) or Local Civil Rule 7.l(c)).
'

In addition, Rule 37 requires that the moving party be awarded expenses when a motion to
compel discovery is· granted except when the movant filed the motion without attempting in good
faith beforehand to obtain the discovery without court intervention, the opposing party's
opposition to the discovery was substantially justified, or other circumstances would make an
award of expenses unjust. Fed. R. Civ. P. 37(a)(5)(A). If a motion to compel is denied, expenses
'

must be awarded to the person opposing the motion except when the motion was substantially
justified: or other circumstances would make an award of expenses unjust. Id (a)(5)(B). If a motion
to compel is allowed in part and denied in part, the court may apportion the expenses for the
motion.· Jd(a)(5)(C).

5

III.

ANALYSIS
The initial ground upon which defendant urges the court to deny plaintiffs motion to

compel i.s that it was not timely filed pursuant to provisions in the CMO. The CMO provides in
pertinent part:
Any motion to compel discovery shall be filed and served within 30 days of the
a~t or omission in discovery complained of, after good faith effort between the
parties to resolve the matter, unless the time for filing such a motion is extended for
good cause shown. Prior to any filing, the complaining party shall convene a
conference among the parties and this court by telephone through the office of the
case manager, at [phone] ..... Motions to compel filed after the deadline
and/or without advance conference with the court, absent extenuating
circumstances, summarily will be denied.
CMO § II.D (emphasis original).
The court agrees that plaintiffs motion was tardy. Defendant unambiguously indicated in
the discovery responses it served on 29 February 2016 that it was not providing all the information
or docru;nents plaintiff requested. Thus, the 30-day limit arguably began running as to all the
discovery requests on that date, yielding a motion deadline of 30 March 2016.
Of course, in response to two of the four interrogatories at issue (nos. 13 and 15), defendant
stated that it would produce information upon entry of a satisfactory protective order. It stated in
its response to 5 of the 21 production requests at issue (nos. 22, 24, 91, 93, 95) that it would produce
some documents after entry of an acceptable protective order. A protective order was entered on
3 October 2016. Assuming plaintiff could reasonably allow defendant 30 days from that date or
until 2 November 2016 to supplement its responses, plaintiff should have filed a motion to compel
as to these responses by 2 December 2016.
l;>efendant subsequently confirmed that it would not be producing the information and
'

documehts plaintiff seeks by its motion without prompting plaintiff to seek relief from the court
within 30 days. Specifically, by letter dated 17 February 2017, defendant reiterated its refusal to
6

I

supplement its production in the areas at issue, namely, "(1) financial information regarding sales
of FSC fluids; and (2) technical data regarding the Auto EKG device beyond what ITW has already
produced." 17 Feb. 2017 Ltr. (D.E. 80-8). Its supplemental responses to interrogatories, served
27 February 2017, did not include any supplementation for interrogatory no. 11 and purportedly
deficient supplementation for interrogatories nos. 13, 15, and 18. There was no supplementation
of defen4ant's responses to the production requests at issue. Plaintiff sought no relief from the
court within 30 days after these events in February 2017.
Defendant reiterated its position in a 16 March 2017 letter to plaintiff. 16 Mar. 2017 Ltr.
(D.E. 82-:-3). Again, plaintiff did not approach the court within 30 days. While plaintiff notes that
at some point it "subsequently" requested by phone that defendant reconsider its position (see PL' s
Mem. (D.E. 80) 2-3), plaintiff only first raised the issue with the court in its 15 May 2017 email.
As noted, the email related to a discovery conference with the court that defendant had requested,
not plaintiff. Plaintiff ultimately filed its motion on 6 June 2017.
Thus, plaintiffs motion can reasonably be deemed to have come more than a year-about
14 months-after it was due, in March 2016. Even if delay is deemed justified for the responses
as to which defendant stated that it was awaiting entry of a protective order, which occurred in
October ,2016, plaintiffs motion was filed about seven months after it was plausibly due in
'

December 2016. Between that date and the filing date, plaintiff was given repeated reminders by
defendant that the requested information and documents would not be forthcoming, but it did not
act to curtail the delay.
In its memorandum, plaintiff does not directly address its tardiness.

In particular, it

presents no "extenuating circumstances" that would justify its failure to meet the 30-day deadline

7

for its m~tion, however calculated. CMO § 11.D. Indeed, it would be difficult to conceive of any
I
'

circumstances that would justify a delay of this magnitude.
While plaintiff now contends that the documents and information it seeks by its motion to
compel are critical to the prosecution of its case, its lack of diligence in pursuing production of
these materials from defendant belies this contention.
The record clearly shows that plaintiff knew or should have known within the time allowed
for its motion of the deficiencies in defendant's discovery responses it now alleges. At the same
time, defendant could justifiably have proceeded with development of its case based on plaintiff's
not seeking court action to secure production of the information and documents it now seeks.
Further, the CMO warned all parties that failure to file a motion by the applicable deadline
would be summarily denied. CMO § II.D. Plaintiff was therefore on notice of the consequences
of not acting timely.
Scheduling orders such as the CMO are, of course, critical tools used by the courts to ensure
that litigation proceeds in a timely, orderly, and efficient manner. "[T]he scheduling order 'is not
a frivolous piece of paper, idly entered, which can be cavalierly disregarded by counsel without
peril."' Forstmann v. Culp, 114 F.R.D. 83, 85 (M.D.N.C. 1987) (quoting Gestetner Corp. v. Case
Equipmen,t Co., 108 F.R.D. 138, 141 (D. Me. 1985)). To acquiesce in plaintiffs unjustified delay

here would disrupt proceedings in this case and set a precedent that could undermine compliance
with scheduling orders in future cases.
The court will accordingly deny plaintiff's motion as tardy. It therefore does not reach the
other grounds asserted by defendant for denial of the motion.
While ordinarily denial of a motion to compel for unjustifiable tardiness, as here, would
merit the award of expenses, the fact the court permitted plaintiff to file a motion-though without

8

ruling on the issue of tardiness-would make the award of expenses unjust. See Fed. R. Civ. P.
37(a)(5)(B); Ord. on 23 May 2017 Conf.

if 3. The court will accordingly direct that each party

bear its 9wn expenses.
IV.

CONCLUSION

For the reasons stated, IT IS ORDERED as follows:
1.

Plaintiffs motion to compel (D.E. 79) is DENIED.

2.

Each party shall bear its own expenses incwred on the motion.

SO ORDERED, this 11th day of December 2017.

J~

United States Magistrate Judge

9