ATI INDUSTRIAL AUTOMATION, INC. v. APPLIED ROBOTICS, INC.

Filing 170

MEMORANDUM OPINION AND ORDER signed by MAG/JUDGE L. PATRICK AULD on 07/25/2014; that Plaintiff's Motion to Compel (Docket Entry 158 ) is GRANTED, in that, on or before August 1, 2014, Defendant shall supplement its answers to Plaintiff 's interrogatories numbered 22 through 24 and shall amend its answers to Plaintiff's requests for admission numbered eight through twelve. FURTHER that, on or before August 1, 2014, Plaintiff either 1) shall file a N otice with the Court renouncing any expense-shifting; or 2) shall serve Defendant with a statement setting out the reasonable expenses, including attorney's fees, Plaintiff incurred in making the instant Motion. Failure by Plainti ff to comply with this Order will result in denial of any expense-shifting. FURTHER that, if Plaintiff timely serves such a statement of reasonable expenses, Defendant shall file, on or before August 15, 2014, either: 1) a Not ice indicating its and/or its counsel's agreement to pay the claimed expenses; or 2) a Memorandum of no more than ten pages setting out Defendant's argument as to why the Court should not require Defendant and/or its counsel to pa y such expenses (including any argument challenging the reasonableness of such expenses), along with a certification that, since the date of this Order, Defendant has attempted to confer in good faith with Plaintiff about resolution of the issue of expense-shifting. Failure by Defendant to comply with this Order will result in the Court ordering, upon the filing of a Notice by Plaintiff of its reasonable expenses as contained in the statement served upon Defendant, the payment of such expe nses by Defendant. FURTHER that, on or before August 22, 2014, Plaintiff shall file a Response of no more than ten pages to any Memorandum timely filed by Defendant. Failure by Plaintiff to comply with this Order will result in denial of any expense-shifting. FURTHER that, on or before August 27, 2014, Defendant may file a Reply of no more than five pages to any Response timely filed by Plaintiff. FURTHER that, upon completion of the foregoing briefing or the time for such briefing, the Clerk shall refer this matter back to the undersigned Magistrate Judge for further action. (Garland, Leah)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

ATI INDUSTRIAL AUTOMATION, INC.,
Plaintiff,
v.
APPLIED ROBOTICS, INC.,
Defendant.

)
)
)
)
)
)
)
)
)

1:09CV471

MEMORANDUM OPINION AND ORDER
This matter comes before the Court on Plaintiff’s Motion to
Compel.

(Docket Entry 158.)

For the reasons that follow, the

Court will grant Plaintiff’s instant Motion.
I.

BACKGROUND

Plaintiff’s Second Amended Complaint alleges that Defendant
has infringed

three

changers

that

and

functional.

of

its

utility

Defendant’s

patents

design

(Docket Entry 154 at 4-9.)1

for

patent

is

robotic
invalid

tool
as

On February 6, 2014,

Plaintiff served on Defendant interrogatories and requests for
admission related to Defendant’s design patent.
at 2.)

(Docket Entry 163

Defendant responded with objections on March 11, 2014.

(Docket Entry 159-1 at 1-16.)]

1

In response to Defendant’s assertion of a counterclaim
against Plaintiff for infringement of its design patent, Plaintiff
raised an affirmative defense of invalidity and, with the Court’s
permission, amended its Complaint to bring a claim for design
patent invalidity. (See Docket Entry 153 at 1-2, 8.)

According to Defendant, it “did not merely object to the
contested requests, but provided responsive answers to each request
subject to its objections.”
disagreed

and,

characterizing

on

March

(Docket Entry 163 at 2.)
14,

Defendant’s

requesting supplementation.

2014,

answers

sent
as

Defendant

Plaintiff
a

letter

“non-responsive”

(Docket Entry 159-2 at 1.)

and

Plaintiff

further proposed that the Parties meet and confer as to the
disagreement via teleconference.
responded

by

letter

dated

(Id. at 2.)

March

18,

Defendant then

2014,

maintaining

its

objections and asserting the sufficiency and responsiveness of its
answers.

(Docket Entry 159-3 at 2.)

Defendant’s letter did not

address Plaintiff’s request to meet and confer.

(See id. at 1-2.)

Discovery for design patent claim construction subsequently
closed on March 25, 2014.

(Docket Entry 124.) Plaintiff filed the

instant Motion on May 7, 2014.

(Docket Entry 158.)

Defendant

responded (Docket Entry 163) and Plaintiff replied (Docket Entry
168).
II.

DISCUSSION

“The purpose of discovery is to provide a mechanism for making
relevant information available to the litigants.”
26 advisory committee’s note, 1983 amend.

Fed. R. Civ. P.

Accordingly, under the

Federal Rules of Civil Procedure, “[u]nless otherwise limited by
court order . . . [p]arties may obtain discovery regarding any
nonprivileged matter that is relevant to any party’s claim or

-2-

defense . . . . ”

Fed. R. Civ. P. 26(b)(1) (emphasis added).

“Relevant information need not be admissible at the trial if the
discovery appears reasonably calculated to lead to the discovery of
admissible

evidence.”

1:02CV305,

2004

WL

Id.;

3249257,

see
at

also
*2

Elkins

(M.D.N.C.

v.

Broome,

Jan.

12,

No.

2004)

(unpublished) (“[R]elevancy at discovery is a far different matter
from relevancy at trial.

At discovery, relevancy is more properly

considered synonymous with ‘germane’ as opposed to competency or
admissibility.”); Flora v. Hamilton, 81 F.R.D. 576, 578 (M.D.N.C.
1978) (“It is clear that what is relevant in discovery is different
from what is relevant at trial, in that the concept at the
discovery stage is much broader.”).

Moreover, the commentary to

the Rules indicates that “[a] variety of types of information not
directly pertinent to the incident in suit could be relevant to the
claims or defenses raised in a given action.”

Fed. R. Civ. P. 26

advisory committee’s note, 2000 amend., subdiv. (b)(1).
Consistent with the foregoing principles, the United States
Court

of

Appeals

for

the

Fourth

Circuit

has

declared

that

“[d]iscovery under the Federal Rules of Civil Procedure is broad in
scope and freely permitted.”

Carefirst of Md., Inc. v. Carefirst

Pregnancy Ctrs., Inc., 334 F.3d 390, 402 (4th Cir. 2003). “A party
seeking discovery may move for an order compelling an answer [when]
. . . a party fails to answer an interrogatory submitted under Rule
33[.]” Fed. R. Civ. P. 37(a)(3)(B)(iii). Similarly, in connection

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with requests for admission, “[t]he requesting party may move to
determine the sufficiency of an answer or objection.” Fed. R. Civ.
P. 36(a)(6).

District judges and magistrate judges in the Fourth

Circuit (including members of this Court) have repeatedly ruled
that the party or person resisting discovery, not the party moving
to compel discovery, bears the burden of persuasion.

See Kinetic

Concepts, Inc. v. ConvaTec Inc., 268 F.R.D. 226, 243–44 (M.D.N.C.
2010) (citing cases).
In this case, as an initial matter, Defendant contends that,
because Plaintiff waited roughly six weeks after the close of
discovery for design patent claim construction to file the instant
Motion, it constitutes “nothing more than a strategic tactic to
gain leverage in a related motion [for consolidation of the claim
construction hearings].” (Docket Entry 163 at 3.) In that regard,
Defendant further asserts that “Plaintiff, apparently realizing
that its argument in opposition to the Motion for Consolidation was
not credible absent a motion to compel, filed the instant [M]otion
the

night

before

Consolidation].”

the

hearing

(Id. at 4.)2

[as

to

Defendant’s

Motion

for

Given that (as discussed below)

2

Defendant, however, does not assert that Plaintiff’s instant
Motion qualifies as untimely or that the Court should deny the
instant Motion on that basis.
(See Docket Entry 163 at 1-11.)
Neither the Federal Rules of Civil Procedure nor this Court’s Local
Rules provide a specific timeframe in which a party must file a
motion to compel. See Fed. R. Civ. P. 37(a); M.D.N.C. R. 37.1. In
this Court, “[g]enerally, a party must file a motion to compel
before the close of discovery in order for that motion to be deemed
(continued...)
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Plaintiff

had good

reason

to

move

to compel

and

Defendant’s

discovery responses, in fact, require supplementation, the Court
rejects the contention that Plaintiff’s instant Motion reflects
“nothing more than a strategic tactic to gain leverage in a related
motion” (id. at 3).

(...continued)
timely.”
Lane v. Lucent Techs., Inc., No. 1:04CV789, 2007 WL
2079879, at *3 (M.D.N.C. July 17, 2007) (unpublished) (Osteen, Sr.,
J.).
However, the Fourth Circuit has granted “substantial
discretion to a district court in managing discovery . . .
[including the] discretion to consider an untimely motion to compel
if the movant ‘offer[s] an acceptable explanation for [the
motion’s] tardiness.’”
United States ex rel. Becker v.
Westinghouse Savannah River Co., 305 F.3d 284, 290 (4th Cir. 2002)
(quoting Spencer Med. Assocs. v. Commissioner of Internal Revenue,
155 F.3d 268, 273 (4th Cir. 1998)). Morever, numerous courts have
accepted a motion to compel filed beyond the discovery deadline
when warranted by the circumstances.
See, e.g., Centennial
Archaeology, Inc. v. AECOM, Inc., 688 F.3d 673, 682 (10th Cir.
2012) (affirming district court’s decision to entertain motion to
compel filed over three months following discovery deadline where
movant sought voluntary compliance); Blanchard v. EdgeMark Fin.
Corp., 192 F.R.D. 233, 235-36 (N.D. Ill. 2000) (excusing
untimeliness of motion to compel filed one month following
discovery deadline where movant’s delay resulted, in part, from
meeting other court-ordered deadlines).
In the instant case,
Plaintiff contends the delay resulted from “addressing the court
ordered deadlines for utility patent claim construction and
mediation.” (Docket Entry 168 at 1 n.2.) The Court notes that the
record does reflect extensive briefing on other matters related to
this case during the period at issue. (See Docket Entries dated
Mar. 18, 2014, to May 7, 2014.) Although the need to meet other
court-imposed deadlines might not have ordinarily justified the
filing of a motion to compel outside the discovery period,
Defendant has not asserted the untimeliness of Plaintiff’s instant
Motion as grounds for denial of the instant Motion and, further,
the claim construction hearing will not occur until October 14,
2014 (see Docket Entry dated May 8, 2014), after which the
Scheduling Order provides for additional fact discovery (see Docket
Entry dated May 2, 2013). Under these circumstances, the Court
will consider the merits of Plaintiff’s instant Motion.
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A.

Plaintiff’s Interrogatories
Plaintiff’s

interrogatories

numbered

22

through

24

ask

Defendant to identify the elements of its D500,510 design which it
considers functional, the elements which it considers ornamental,
and the elements which it considers both functional and ornamental,
respectively.
further

(Docket Entry 159-1 at 4-5.)

request

“the

functions

performed

These interrogatories
by

each

identified

[functional] element” (id. at 4); “an explanation as to why each
[ornamental] element should be considered ornamental, any function
performed by that element, and documents regarding the same” (id.);
and “an explanation as to why each element [designated as both
functional and ornamental] is ornamental, how each element is
functional, and documents regarding the same” (id. at 5).

In

response, Defendant provided similar objections to each of these
three interrogatories:
[Defendant] objects to this interrogatory as irrelevant
and an attempt to alter the standard for design patents
which protect the overall appearance of the claimed
design.
[Defendant] also objects to the word
‘functional’ on the basis that such word has multiple
meanings including reference to a defense for design
patent infringement which applies to the overall claimed
design.
Design patents are directed to ornamental
designs for utilitarian objects and thus are directed to
such articles of manufacture.

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(Id. at 4 (objecting to interrogatory no. 22); see also id. at 4-5
(objecting to interrogatory nos. 23-24).) Defendant further stated
in similar fashion as to each interrogatory:
Subject to the general and specific objections,
[Defendant] contends that the overall design of D500,510
is not dictated solely by function and is thus
non-functional, there are no features of the D500,510
that are dictated solely by function or by the use or
purpose of the article, and that the features can be
altered without adversely affecting the article’s
utility, and that all of the features of the D500,510
design are ornamental and not dictated solely by
function.
(Id. at 5 (emphasis added) (responding to interrogatory no. 24);
see also id. at 4-5 (objecting to interrogatory nos. 22-23).)
Plaintiff’s instant Motion defends these interrogatories on
the ground

that

“the

Federal

Circuit

[has]

noted

that

claim

construction for design patents could include an identification by
the court of functional elements.”

(Docket Entry 158 at 2 (citing

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-80 (Fed.
Cir. 2008)).)

As Plaintiff observes (see Docket Entry 159 at 3),

the Federal Circuit recently upheld a district court’s claim
construction which “properly factored out the functional aspects of
[Plaintiff’s] design . . . . [because,] [b]y definition, the
patented design is for a multifunction tool that has several
functional components, and we have made clear that a design patent,
unlike a utility patent, limits protection to the ornamental design
of the article,” Richardson v. Stanley Works, Inc., 597 F.3d 1288,
1293 (Fed. Cir. 2010). Accordingly, Plaintiff contends that, “[it]
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has a right to know the bounds of [Defendant’s] design patent
claim, and to investigate functionality with regards to claim
construction . . . . [and] its invalidity affirmative defense.”
(Docket Entry 158 at 2.)
In opposition, Defendant asserts that “the function of the
article itself

[i.e.,

the robotic

tool

changer] must

not

be

confused with the ‘functionality’ of the design of the article
itself, which is precisely what Plaintiff attempts to do.” (Docket
Entry 163

at

7-8.)

Defendant

further

argues

that,

“[w]hile

functionality may be considered on an element-by-element basis for
purposes of claim construction, the functionality analysis for
purposes of invalidity unequivocally applies to the claimed design
‘as a whole.’”

(Id. at 10 (citing High Point Design, LLC v. Buyers

Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013)).)

In this

regard, Defendant appears to contend that, because the Court should
consider the design as a whole in evaluating the invalid-asfunctional defense to the design patent infringement claim, the
Court should now protect Defendant from answering questions about
any specific elements of that same design (as to any functions
those elements may or may not perform).

(See id.)

Even assuming

that Defendant has correctly interpreted the Federal Circuit’s
standard for design patent invalidity, Defendant has not shown that

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an interrogatory which seeks information about the functionality of
individual

elements

of

a

design

bears

no

relevance

to

the

functionality of the design as a whole.
Accordingly, the Court need not decide whether the disputed
interrogatories adequately track the Federal Circuit’s standard for
design patent claim construction to find them relevant, because
“relevancy at discovery is a far different matter from relevancy at
trial,” Elkins, 2004 WL 3249257, at *2.

Furthermore, Defendant

cannot withhold such requested information concerning its design
patent on grounds that it does not agree with Plaintiff’s theory of
the case.

See Wright, Miller, & Kane, 8B Federal Practice &

Procedure, § 2168 (3d ed. 2001) (“A party may base interrogatories
on its theory of the case.

The interrogatories cannot be objected

to because, on the interrogated party’s theory, they are based on
a false assumption.”).

Under these circumstances and given that

Defendant (as the party resisting discovery) has the burden of
persuasion, see Kinetic Concepts, 268 F.R.D. at 243–44, the Court
concludes that Defendant’s relevance objection does not excuse its
resistance to Plaintiff’s interrogatories.
Defendant further opposes Plaintiff’s instant Motion on the
basis

that

Defendant

has

“[s]ufficiently

[i]nterrogatory [s]ubject to its [o]bjections.”
at 5.)

[a]nswered

[e]ach

(Docket Entry 163

In this regard, Defendant characterizes its responses as

complete because “‘all of the features of the D500,510 design are

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ornamental

and

not

dictated

solely

by

function.’”

(Id.

(quoting Docket Entry 159-1 at 5) (emphasis added).)

at

6

However,

Defendant’s repeated use of the phrase “not dictated solely by
function” renders its answers evasive and nonresponsive.
Even

if no

element

of

the

patented

design

qualifies

as

“dictated solely by function,” Defendant must address whether and
to

what extent

aspect.3

any

ornamental

element

may

have

a

functional

Because Defendant’s answers evade the clear intent of

Plaintiff’s interrogatories, they constitute no response at all.
See

Fed.

R.

Civ.

P.

37(a)(4)

(“[A]n

evasive

or

incomplete

disclosure, answer, or response must be treated as a failure to
disclose,

answer,

or

respond.”)

In

addition,

as

noted

by

Plaintiff, Defendant has failed to respond at all to particular

3

The Federal Circuit has used the language “dictated solely
by function” (or “governed solely by function”) in considering
whether patented designs as a whole qualify as invalid as
functional, but it has not applied the term when considering
individual elements of a design. See, e.g., Rosco, Inc. v. Mirror
Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002) (“[T]he design must
not be governed solely by function, i.e., that this is not the only
possible form of the article that could perform its function.”
(citing Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360,
1368 (Fed. Cir. 1999))); Best Lock Corp. v. Ilco Unican Corp., 94
F.3d 1563, 1566 (Fed. Cir. 1996) (“[I]f the design claimed in a
design patent is dictated solely by the function of the article of
manufacture, the patent is invalid because the design is not
ornamental.”).
Given that Plaintiff’s interrogatories seek to
determine the functional and ornamental aspects of individual
elements of Defendant’s design (not whether Defendant considers
such elements to qualify as invalid as functional), Defendant’s
application of this language evades the plain meaning of
Plaintiff’s interrogatories.

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components of Plaintiff’s interrogatories; specifically, Defendant
has not identified any individual elements of its design, it has
not explained why all elements of its design qualify as ornamental,
and it has identified no supporting documents.

(See Docket Entry

158 at 3; Docket Entry 159-1 at 5.)
Under

these

circumstances,

Defendant

must

supplement

its

answers to Plaintiff’s interrogatories 22 through 24 to provide
non-evasive and complete responses.
B.

Plaintiff’s Requests for Admission
Plaintiff’s requests for admission numbered eight through

twelve seek to understand the functions and advantages of various
components of the design for Defendant’s product:
REQUEST NO. 8: The hexagon design of the D500,510 allows
a tool changer incorporating that design to handle more
jobs at one station.
. . . .
REQUEST NO. 9: A tool changer with the hexagon design of
the D500,510 accommodates more utilities compared to the
prior art tool changers.
. . . .
REQUEST NO. 10: One advantage of tool changers
incorporating the D500, 510 design is the simple coupling
module adaptation made possible by the hexagonal body
design.
. . . .
REQUEST NO. 11: The use of a six sided adaptor plate in
a tool changer is functional.
. . . .

-11-

REQUEST NO. 12: Accessories may be mounted to the
D500,510 design through the use of the recesses shown in
Figure 5 of the Design Patent.
(Docket Entry 159-1 at 13-15.)

Defendant objected to all five

above-listed requests as “vague and ambiguous” (id.), citing (but
providing no explanation for) its confusion as to certain terms
used, including terms such as “the hexagon design of the D500,510”
and “at one station” (see id. at 13-14).

Defendant further

objected to requests numbered ten and twelve “as irrelevant and an
attempt to alter the standard for design patents . . . .”
14-15.)
response:

(Id. at

In each case, Defendant concluded with the following
“Subject

to

the

general

and

foregoing

objections,

[Defendant] admits that no feature of the D500,510 is dictated
solely by function or by the use or purpose of the article and the
features can be altered without adversely affecting the article’s
utility and, therefore, denies this admission request.”

(Id. at

13-16 (emphasis added).)
As discussed in the preceding subsection, Defendant has failed
to establish the irrelevance (at least at the discovery stage) of
requests that explore the functionality of elements of the patented
design, in light of Plaintiff’s claim of design-patent invalidity
and

its

related

invalid-as-functional

affirmative

defense.

Moreover, in the absence of any explanation or argument from

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Defendant as to why it characterizes these requests as “vague and
ambiguous” (id.), no reasonable basis exists to conclude that
Defendant properly objected to Plaintiff’s requests on that basis.
In opposing the instant Motion, Defendant also asserts that it
“properly responded in good faith by admitting that no feature of
the D500,510 design is dictated solely by use or purpose of the
article and, therefore, denied each admission request.”
Entry 163 at 9 (first emphasis added).)

(Docket

This contention fails

because “[a] denial must fairly respond to the substance of the
matter,” Fed. R. Civ. P. 36(a)(4); see also Lynn v. Monarch
Recovery Mgmt., Inc., 285 F.R.D. 350, 363 (D. Md. 2012) (citing
Wright, Miller, & Kane, supra, § 2260, for proposition that, “[i]t
is

expected

that

unconditional”).
subsection

denials

will

be

forthright,

specific,

and

For the same reasons discussed above in the

addressing

Defendant’s

answers

to

Plaintiff’s

interrogatories, Defendant’s qualification of its denials with the
phrase “no feature . . . is dictated solely by function” evades the
requests for admission.
For instance, Plaintiff’s eighth request for admission asks
Defendant to admit or deny that, “[t]he hexagon design of the
D500,510 allows a tool changer incorporating that design to handle
more

jobs

at

one

station.”

(Docket

Entry

159-1

at

13.)

Defendant’s response, that it denies the admission because “no
feature of the D500,510 design is dictated solely by function or by

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the use or purpose of the article and the features can be altered
without adversely affecting the articles utility”

(id. at 13-14),

does not fairly respond to the substance of the matter.

The

request at issue does not ask whether the hexagon design could be
altered; rather, it asks whether this particular design “allows a
tool changer . . . to handle more jobs at one station,” (id. at
13).

If such design does not allow a tool changer to handle more

jobs at one station (presumably, as compared to the prior art),
Defendant can simply deny that request for admission, as its
Response now suggests (incorrectly) that it has already done (see
Docket Entry 163 at 9).

Defendant’s responses to the remaining

contested requests for admission similarly fail to forthrightly
deny the applicable statement.

(See Docket Entry 159-1 at 14-16.)

Under these circumstances, Defendant must unconditionally
respond to Plaintiff’s requests for admission eight through twelve.
C.

Expense-Shifting
Because the Court has granted Plaintiff’s instant Motion, “the

[C]ourt must, after giving an opportunity to be heard, require the
party or deponent whose conduct necessitated the motion, the party
or attorney advising that conduct, or both to pay the movant’s
reasonable

expenses

attorney’s fees.”

incurred

in

making

the

motion,

including

Fed. R. Civ. P. 37(a)(5)(A); see also Biovail

Corp. v. Mylan Labs., Inc., 217 F.R.D. 380, 382 (N.D. W. Va. 2003)
(“‘The great operative principle of [Rule 37] is that the loser

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pays.’” (quoting Rickels v. City of South Bend, 33 F.3d 785, 786
(7th Cir. 1994))); Fed. R. Civ. P. 36(a)(6) (“Rule 37(a)(5) applies
to an award of expenses.”).

“But the [C]ourt must not order this

payment if: (i) the movant filed the motion before attempting in
good faith to obtain the disclosure or discovery without court
action; (ii) the opposing party’s nondisclosure, response, or
objection was substantially justified; or (iii) other circumstances
make an award of expenses unjust.”

Fed. R. Civ. P. 37(a)(5)(A).

The Parties’ filings in connection with the instant Motion do
not address expense-shifting.
168.)

(See Docket Entries 158, 159, 163,

Accordingly, the Court now will order the Parties to do so.
III.

CONCLUSION

Plaintiff has established grounds for relief under Federal
Rules of Civil Procedure 36(a)(6) and 37(a)(3)(B)(iii).
IT IS THEREFORE ORDERED that Plaintiff’s Motion to Compel
(Docket Entry 158) is GRANTED, in that, on or before August 1,
2014,

Defendant

shall

supplement

its

answers

to

Plaintiff’s

interrogatories numbered 22 through 24 and shall amend its answers
to

Plaintiff’s

requests

for

admission

numbered

eight

through

twelve.
IT IS FURTHER ORDERED that, on or before August 1, 2014,
Plaintiff either 1) shall file a Notice with the Court renouncing
any expense-shifting; or 2) shall serve Defendant with a statement
setting out the reasonable expenses, including attorney’s fees,
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Plaintiff incurred in making the instant Motion.

Failure by

Plaintiff to comply with this Order will result in denial of any
expense-shifting.
IT IS FURTHER ORDERED that, if Plaintiff timely serves such a
statement of reasonable expenses, Defendant shall file, on or
before August 15, 2014, either: 1) a Notice indicating its and/or
its counsel’s agreement to pay the claimed expenses; or 2) a
Memorandum of no more than ten pages setting out Defendant’s
argument as to why the Court should not require Defendant and/or
its

counsel

to

pay

such

expenses

(including

any

argument

challenging the reasonableness of such expenses), along with a
certification that, since the date of this Order, Defendant has
attempted to confer in good faith with Plaintiff about resolution
of the issue of expense-shifting.

Failure by Defendant to comply

with this Order will result in the Court ordering, upon the filing
of a Notice by Plaintiff of its reasonable expenses as contained in
the statement served upon Defendant, the payment of such expenses
by Defendant.
IT IS FURTHER ORDERED that, on or before August 22, 2014,
Plaintiff shall file a Response of no more than ten pages to any
Memorandum timely filed by Defendant.

Failure by Plaintiff to

comply with this Order will result in denial of any expenseshifting.

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IT IS FURTHER ORDERED that, on or before August 27, 2014,
Defendant may file a Reply of no more than five pages to any
Response timely filed by Plaintiff.
IT IS FURTHER ORDERED that, upon completion of the foregoing
briefing or the time for such briefing, the Clerk shall refer this
matter back to the undersigned Magistrate Judge for further action.
/s/ L. Patrick Auld
L. Patrick Auld
United States Magistrate Judge
July 25, 2014

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