Josef Maatuk v. Emerson Electric, Inc. et al

Filing 81

Order denying Defendant's Motion to compel discovery (Related Doc # 75 ). A Telephone Status Conference has been set for 7/25/2018 at 02:00 PM in Chambers 11B before Magistrate Judge Thomas M. Parker. Call-in instructions will be sent separately. Magistrate Judge Thomas M. Parker on 7/10/2018. (D,JJ)

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
JOSEF MAATUK,
Plaintiff,
v.
THERM-O-DISC,
Defendant.

I.

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Case No. 1:16-cv-03023-TMP

MAGISTRATE JUDGE
THOMAS M. PARKER

ORDER DENYING MOTION TO
COMPEL DICOVERY

Introduction
This order addresses defendant Therm-o-Disc, Incorporated’s (“TOD”) motion to compel

responses to its first set of interrogatories, numbers 5, 9, and 12. See ECF Doc. 75. For the
following reasons, TOD’s motion to compel is DENIED.
This lawsuit involves U.S. Patent 7,775,105 (“the ’105 patent”), issued to Prasad
Khadkikar and Bernd D. Zimmermann, by the U.S. Patent and Trademark Office (“USPTO”) on
August 17, 2010. See ECF Doc. 1, Ex. A. The inventors assigned the patent to TOD. Id. The
claims arise from discussions between the parties and the disclosure of confidential information
concerning liquid sensors related to automotive fuel tank sensing and other technology. See ECF
Doc. 1. Maatuk brought claims for correction of inventorship, misappropriation of trade secrets,
and unjust enrichment against TOD and other defendants. Id. After preliminary rounds of
dispositive motions, only one claim remains, the First Cause of Action, which seeks correction of
inventorship of the ’105 patent under 35 U.S.C. § 256. See ECF Doc. 69, p. 4, 7.

II.

Factual History
On September 6, 2017, the parties jointly moved for a telephone conference, in which

TOD sought: full and complete responses to certain interrogatories concerning a detailed
description of Maatuk’s alleged trade secrets that he alleged TOD misappropriated; an
identification of where the alleged trade secrets may be disclosed in each of Maatuk’s patents
and patent applications; and an identification of where the alleged trade secret was disclosed to
TOD. See ECF Doc. 59. The court conducted a telephone status conference on September 14,
2017. See ECF Doc. 60. At the status conference, TOD asserted that it had not received
sufficient responses to three interrogatory requests, which TOD paraphrased as follows,
interrogatories inquiring about: (1) the specificity of each trade secret; (2) the date and mode of
each disclosure of a trade secret to TOD; and (3) whether any of the secrets were contained in
Maatuk’s own patents. See ECF Doc. 60. As to the first two issues, Maatuk explained that he
provided approximately 172 documents in lieu of a specific response to the questions. Id. As to
the third issue, Maatuk appeared to be unsure whether he had to provide information on patents
he filed after his disclosures to TOD. Id. The court ordered Maatuk to submit a supplemental
response to his interrogatory answers, in which he was make an itemized list of each trade secret
he alleges TOD misappropriated, including the elements of each secret, the date Maatuk
disclosed the trade secret to TOD, and the mode of disclosure. Id.
On October 10, 2017, Maatuk filed his list of the alleged trade secrets he gave to TOD
(“supplemental response”). See ECF Doc. 61. An excerpt from Maatuk’s list is included below.

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Id. On October 16, 2017, TOD filed a letter regarding Maatuk’s trade secret chart, in which
TOD argued Maatuk’s response did not satisfy the court’s order because Maatuk “completely
fail[ed] to describe with any specificity the alleged trade secrets included on his list” and “it
appear[ed] that Maatuk did not review all of his patent applications to determine whether they
contain[ed] his alleged trade secrets.” See ECF Doc. 62, p.2. TOD argued that Maatuk denied it
“the ability to understand and defend against his allegations by failing to provide a detailed
description of his alleged trade secrets.” Id.
On May 7, 2018, after the court adjudicated the preliminary dispositive motions in the
case and granted TOD summary judgment with respect to Counts Two and Three (See ECF Doc.
69), the court conducted a telephone conference concerning the discovery dispute regarding the
sufficiency of Maatuk’s trade secret disclosures provided in response to TOD’s interrogatories.
See ECF Doc. 72. The court ordered TOD to file any motions regarding the sufficiency of
Maatuk’s trade secret disclosure and interrogatory responses on or before May 29, 2019 and
ordered Maatuk to file his response on or before June 12, 2018. Id.
On May 29, 2019, TOD filed the current motion, in which TOD requests the court order
Maatuk to provide full and complete answers to TOD’s interrogatories Nos. 5, 6, and 12. TOD’s
interrogatories that are at issue are reproduced below.
INTERROGATORY NO. 5:
Separately describe, in full and complete detail, each alleged Confidential
Information that you contend Defendant has misappropriated.
INTERROGATORY NO. 9:
With respect to each alleged Confidential Information you identified in response
to Interrogatory No. 5, identify with specificity, with reference to column and line
number(s), everywhere the Maatuk Patents provides a disclosure, description,
specification, or the like of the alleged Confidential Information.
INTERROGATORY NO. 12:

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With respect to each alleged Confidential Information you identified in response
to Interrogatory No.5, describe in detail when (month/day/year) how, and to
whom the alleged Confidential Information was disclosed by the Plaintiff to the
Defendant, if at all.
See ECF Doc. 75-2, Page ID# 1186-88.
III.

Procedural Background
On August 17, 2016, Maatuk sued TOD and other defendants, who have subsequently

been dismissed. See ECF Doc. 1. The complaint asserted three causes of action: (1) recognition
as co-inventor and correction of inventorship pursuant to 35 U.S.C. § 256; (2) misappropriation
of trade secrets; and (3) unjust enrichment. Id.
On March 17, 2017, TOD filed a motion for summary judgment, in which TOD sought to
have Counts I and II dismissed (ECF Docs. 47 and 47-1), and a motion for judgment on the
pleadings, in which TOD sought to have Count III dismissed. See ECF Docs. 48 and 48-1. The
court held an in-person hearing on these motions on October 23, 2017 and ordered the parties to
engage in supplemental briefing to facilitate adjudication of the motions. See ECF Doc. 63-65.
In a Report and Recommendation issued on November 14, 2017, the Magistrate Judge
recommended the court deny TOD’s motion for summary judgment as to Count I and grant the
motions for summary judgment and judgment on the pleadings as to Counts II and III. See ECF
Doc. 66. On January 24, 2018, the court adopted the Report and Recommendation in its entirety.
See ECF Doc. 69.
On May 30, 2018, the parties consented to the transfer of the case to the docket of the
undersigned for further proceedings. ECF Doc. 76.
On May 29, 2018, TOD filed the present motion to compel pursuant to Federal Rules of
Civil Procedure 33 and 37, and requested that the court order Maatuk to provide full and
complete answers to TOD’s interrogatory nos. 5, 9, and 12. See ECF Doc. 75-1, Page ID# 1166.
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Maatuk filed his response to TOD’s motion to compel on June 14, 2018. ECF Doc. 77. TOD
filed a reply in support of its motion to compel on June 21, 2018. ECF Doc. 78.
IV.

Law and Analysis
A. Motion to Compel Standard
Federal Rule of Civil Procedure 37 permits a party to request that the court compel a non-

responsive party to comply with discovery. Rule 37(a)(3)(B) provides in pertinent part:
(B) To Compel a Discovery Response. A party seeking discovery may move for an order
compelling an answer, designation, production, or inspection. This motion may be made
if: ...
(iii) a party fails to answer an interrogatory ...; or
(iv) a party fails to respond that inspection will be permitted—or fails to permit
inspection—as requested under Rule 34.
If a response is evasive or incomplete, it must be treated as a failure to answer or respond.
Fed.R.Civ.P. 37(a)(4). Federal Rule of Civil Procedure 33 provides for discovery through
interrogatories to parties, which “may relate to any matter that may be inquired into under Rule
26(b).” Fed.R.Civ.P. 33(a)(2). If the answer to an interrogatory may be determined by
examining or abstracting a party’s business records, and if the burden of deriving the answer will
be substantially the same for either party, the responding party may answer by: specifying the
records to be reviewed in sufficient detail and giving the interrogating party a reasonable
opportunity to examine and audit the records. Fed.R.Civ.P. 33(d).
The Sixth Circuit has determined that the trial court has broad discretion to determine the
proper scope of discovery. Lewis v. AB Bus. Servs., Inc., 135 F.3d 389, 402 (6th Cir. 1998);
Davis v. Creditors Interchange Receivable Mgmt., LLC, 585 F. Supp. 2d 968, 970 (N.D. Ohio
2008). Evidence is discoverable if it is non-privileged and relevant to the claims or defenses of
either party and “proportional to the needs of the case, considering the importance of the issues
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at stake in the action, the amount in controversy, the parties’ relative access to the relevant
information, the parties’ resources, the importance of the discovery in resolving the issues, and
whether the burden or expense of the proposed discovery outweighs the likely benefit.
Information within this scope of discovery need not be admissible in evidence to be
discoverable.” Fed. R. Civ. P. 26(b)(1)..
The proponent of a motion to compel discovery bears the initial burden of proving the
information sought is relevant. O’Malley v. NaphCare Inc., 311 F.R.D. 461, 463 (S.D. Ohio
2015). “Once the information is shown to be discoverable, the burden shifts to the opponent of
the motion to compel “to show why the discovery is irrelevant, overly broad, or unduly
burdensome or oppressive, and thus should not be permitted.” Giunto v. Metro. Grp. Prop. &
Cas. Ins. Co., No. 1:11 CV 2774, 2013 WL 12131306, at *2 (N.D. Ohio Aug. 20, 2013).
B. Defendant’s Motion to Compel
TOD argues that Maatuk’s supplemental response (ECF Doc. 61) failed to meet the
requirements of the court’s order (ECF Doc. 60) and Fed. R. Civ. P. 33. See ECF Doc. 75-1,
Page ID# 1169. Maatuk argues that the present litigation is no longer a trade secret
misappropriation dispute, because the only remaining cause of action concerns the alleged coinventorship of the ’105 patent. See ECF Doc. 77, Page ID# 1260.
Having reviewed Maatuk’s list of trade secrets (ECF Doc. 61) filed in response to the
court’s September 15, 2017 order (ECF Doc. 60), this court agrees that Maatuk’s responses are
largely inadequate. Maatuk’s list of alleged trade secrets merely consists of a list of generic
and/or vague labels, such as “business connections,” “dimensions of wire heater,” “experimental
results,” etc., that fails to include “the elements of each secret and specifics such as dimensions
and ratios” the court’s order required. See ECF Docs. 60 and 61. Maatuk also failed to “identify

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in that list which document(s), if any, relate[d] to each itemized disclosure[].” Id. However,
TOD’s arguments regarding the court’s order issued on September 15, 2017 – which explicitly
concerned the allegedly misappropriated trade secrets – are moot now that Maatuk’s trade secret
misappropriation claims have been dismissed. See ECF Docs. 66 and 69. TOD’s motion to
compel, with respect to Maatuk’s failure to comply with the court’s September 15, 2017 order, is
moot and hereby DENIED.
In regard to TOD’s contention that Maatuk failed to provide intelligible and meaningful
responses to TOD’s Interrogatories 5, 9 and 12, Maatuk argues that he properly responded by
producing business records, in accordance with Fed. R. Civ. P. 33(d). Id. See ECF Doc. 77,
Page ID# 1260. TOD argues the burden of deriving or ascertaining the answer to the
interrogatories is not substantially the same for either party. See ECF Doc. 82, p.2 n.2. As stated
above, Rule 33(d) permits a party to provide business records in response to interrogatories, if
(1) the answer may be determined by examining a party’s business records and (2) “the burden
of deriving or ascertaining the answer will be substantially the same for either party.”
Fed.R.Civ.P. 33(d). Rule 33(d) requires, however, that a responding party specify the record in
sufficient detail to permit the interrogating party to locate and to identify, as readily as the
responding party, the records from which the answer may be ascertained. Id. Upon review, the
court agrees Maatuk’s use of Rule 33(d) was not proper. However, TOD’s interrogatory nos. 5,
9, and 12 all sought information concerning “Confidential Information” that Maatuk contended
TOD misappropriated and were, thus, related to Maatuk’s second claim for misappropriation of
trade secrets. See ECF Doc. 75-2, Page ID# 1186-88. As discussed above, the court has
dismissed the trade secret misappropriation cause of action. Consequently, TOD’s

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