Responsive Innovations, LLC v Holtzbrinck Publishers, LLC, et al

Filing 194

Order. Plaintiffs' Motion to Prohibit Defendants from Presenting Evidence, Testimony or Argument Relating to an Alleged Design-Around (Related doc # 169 ) is denied in part. The Court Orders Defendants to provide all relevant discovery to Plaintiffs on the alleged design-around and make available any witness with relevant information of the design-around to Plaintiffs for deposition. Defendants shall pay all reasonable expenses incurred by Plaintiffs to obtain the discovery. The Court may consider further sanctions after discovery is completed upon a motion by Plaintiffs. Plaintiffs shall file with the Court, by 3/28/2014, an expedited proposed time frame for conducting discovery on the design-around. Judge Christopher A. Boyko on 3/25/2014.(H,CM)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

RESPONSIVE INNOVATIONS, LLC.
ET AL.,
Plaintiff,
Vs.
HOTLZBRINCK PUBLISHERS, LLC
ET AL.,
Defendant.

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CASE NO.4:08CV1184

JUDGE CHRISTOPHER A. BOYKO

ORDER

CHRISTOPHER A. BOYKO, J:
This matter is before the Court on Plaintiffs Responsive Innovations. LLC and Turning
Technologies, LLC.,’s Motion to Prohibit Defendants from Presenting any Evidence, Testimony
or Argument Relating to an Alleged Design-Around in this Case (ECF # 169). For the following
reasons, the Court denies, in part, Plaintiffs’ Motion insofar as it asks for exclusion, however the
court may consider it at a later date. The Court will allow additional discovery by Plaintiffs on
the alleged design-around to be paid for by Defendants.
This case was first filed in 2008. Discovery closed in 2010. Prior to the close of
discovery, Defendants never alleged a design-around defense nor did they disclose any evidence
of a design-around in their initial disclosures, responses to Plaintiffs’ interrogatories and requests
for production. In 2013, for the first time since the inception of the case Defendants raised, in
writing, the design-around issue in their damages expert’s responsive report served May 15,

2013.1 That report acknowledged that the design-around was developed in 2010 and was
offered for sale in 2011. Thus, nearly two years passed before it was disclosed to Plaintiffs. As
a result, Plaintiffs’ damages expert, Andrew Carter, could not have addressed the design-around
issue as relates to damages, because it was never raised until after he had served his report on
Defendants. Plaintiffs further argue Defendants violated Fed. R. Civ. P. 26(e) by initially
denying any documents existed in response to Plaintiffs’ discovery request for production for all
“documents, things or ESI that refer or relate to any effort or attempt to design around the patent
in suit,” then failing to timely supplement. Plaintiffs argue they have been prejudiced by not
having an opportunity to do discovery on the alleged design-around. Plaintiffs contend
Defendants should be precluded from offering any such defense due to their violation of Rule
26(e) duty to supplement.
Defendants contend they could not have produced in discovery any responsive
documents regarding the design-around because it did not exist until after discovery closed. The
design-around was implemented after Plaintiffs’ August 2010 Reply brief wherein Plaintiffs
argued the receiver cannot transmit before the remote unit does. Because the design-around was
easy to implement, Defendants did so and admit selling the design in 2011. Defendants further
contend they offered to allow Plaintiffs to do discovery once they disclosed the design-around
but Plaintiffs refused.
Defendants contend there was no Rule 26(e) violation because they disclosed the designaround two days after the Court’s 2012 summary judgment order confirming the exclusion of

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Defendants did represent to the Court and Plaintiffs the existence of the design
around at a February 2013 conference.
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devices containing a receiver first signal. Defendants further argue that Plaintiffs themselves
have delayed discovery in failing to disclose issues with their first damages expert. Also,
Defendants contend Plaintiffs were informed of the design around in a phone call in November
2012. Lastly, Plaintiffs expert was aware of a design-around as reflected in his
acknowledgments but was told by counsel to ignore them and assume the design-around
infringed.
Because no trial date is presently pending, prejudice to Plaintiffs is correctable by
permitting additional discovery.
LAW AND ANAYSIS
There are many tools available to courts to ensure the orderly progress of discovery and
to punish misconduct. These derive from the Federal Rules of Civil Procedure, federal statute
and the Court’s own inherent authority to manage its docket.
Federal Rule of Civil Procedure 26(e) requires:
(e) Supplementing Disclosures and Responses.
(1) In General. A party who has made a disclosure under Rule 26(a)--or who has responded to
an interrogatory, request for production, or request for admission--must supplement or correct its
disclosure or response:
(A) in a timely manner if the party learns that in some material respect the
disclosure or response is incomplete or incorrect, and if the additional or
corrective information has not otherwise been made known to the other parties
during the discovery process or in writing; or
(B) as ordered by the court.

Federal Rule of Civil Procedure 37(c) states in pertinent part:

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(1) Failure to Disclose or Supplement. If a party fails to provide information or
identify a witness as required by Rule 26(a) or (e), the party is not allowed to use
that information or witness to supply evidence on a motion, at a hearing, or at a
trial, unless the failure was substantially justified or is harmless. In addition to or
instead of this sanction, the court, on motion and after giving an opportunity to be
heard:
(A) may order payment of the reasonable expenses, including attorney's fees,
caused by the failure;
(B) may inform the jury of the party's failure; and
(C) may impose other appropriate sanctions, including any of the orders listed in
Rule 37(b)(2)(A)(i)-(vi).

The Sixth Circuit established a straightforward, easily applied test to determine if
sanctions are appropriate for a failure to supplement. “[T]he test is very simple: the sanction is
mandatory unless there is a reasonable explanation of why Rule 26 was not complied with or the
mistake was harmless.” Bessemer & Lake Erie R.R. Co. v. Seaway Marine Transport 596 F.3d
357, 370 (6th Cir.,2010).
This matter appears straightforward. Defendants waited nearly two years before
disclosing a design-around they admittedly implemented and offered for sale in 2010-2011.
While it was after close of discovery, the duty to supplement does not expire at the close of
discovery. Here, Defendants arguments do not support the conclusion that the failure was
reasonable or the mistake was harmless. The duty to supplement is not dependent on a
determination by the Court in a claim construction; instead the Rule imposes an independent
duty on the party to supplement disclosures. Plaintiffs’ requested production of all information
of a design- around which Defendants responded was not implicated in the case. Once
Defendants did in fact create a design around or, at the latest offered for sale the design-around,
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then their duty to supplement was triggered. By admitting the design-around was offered for
sale at the beginning of 2011 and admitting that they waited until the end of 2012 to disclose this
information to Plaintiffs, Defendants did not supplement in a timely manner.
Therefore, the Court holds Defendants violated their obligation to timely supplement
under Rule 26(e). The Court, having broad discretion to fashion a sanction under Rule 37,
orders Defendants to provide all relevant discovery to Plaintiffs on the alleged design-around
and make available any witness with relevant information of the design-around to Plaintiffs for
deposition. Defendants shall pay all reasonable expenses incurred by Plaintiffs to obtain the
discovery. The Court may consider further sanctions after discovery is completed upon a motion
by Plaintiffs. Plaintiffs shall file with the Court an expedited proposed time frame for
conducting discovery on the design-around. Plaintiffs shall file no later than Friday, March 28,
2014.
IT IS SO ORDERED.

s/ Christopher A. Boyko
CHRISTOPHER A. BOYKO
United States District Judge
Dated: March 25, 2014

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