MCP IP, LLC v. Bowtech, Inc.

Filing 137

ORDER: Denying Objections 130 and 99 to Magistrate Judges Order in case 6:17-cv-01896-MK; Denying Objections (64) to Magistrate Judges Order in case 6:18-cv-01087-MK. Signed on 5/17/2019 by Judge Michael J. McShane. Associated Cases: 6:17-cv-01896-MK, 6:18-cv-01087-MK (cp)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
MCP IP, LLC,

Plaintiff,

6:17-1896 (lead case)
6:18-cv-1087-TC
ORDER

v.
BOWTECH, INC.,
Defendant-Counterclaim Plaintiff,
MCP, LLC, MATHEW McPHERSON,
MATHEWS ARCHERY, INC., and
SHERRY McPHERSON,
Counterclaim Defendants.
____________________________
MCSHANE, Judge:
Federal Rule of Civil Procedure 72 allows a party to object to any nondispositive order. A
district judge must “modify or set aside any part of the order that is clearly erroneous or is
contrary to law.” Fed. R. Civ. P. 72(a).
Counterclaim defendants object to a minute order entry (ECF No. 98) that they allege
conflicts with an oral ruling Judge Coffin made during the hearing. See ECF No. 99.
Specifically, counterclaim defendants seek to strike the following language of the minute order:
“Denying Motion for a Protective Order [69] without prejudice to refile if necessary after the
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parties confer and draft a less broad protective order.” Counterclaim defendants argue that
because Judge Coffin stayed discovery pending resolution of the jurisdictional issues, his order
denying the requested protective order was clearly erroneous. There is nothing erroneous (and
certainly nothing “clearly erroneous”) in the minute order. The requested protective order was
quite broad. As I read the motion for a protective order, counterclaim defendants requested both
a stay and an order that they need not respond to any discovery requests. See ECF No. 65, 15
(counterclaim defendants “respectfully request that the Court grant their motion for Entry of
Protective Order, relieving them from responding to the Requests, and otherwise staying
discovery as to [counterclaim defendants] until there is a ruling on the pending Motion to
Dismiss.”]; see also id. at 1 (counterclaim defendants “move for a protective order from the
Court deferring any Bowtech discovery until the Court rules on the pending Motion to Dismiss
which is based on the Court’s lack of personal jurisdiction and venue over [the counterclaim
defendants]”). Because Judge Coffin clearly allowed discovery related to the jurisdictional
issues, counterclaim defendants’ motion was overbroad and Judge Coffin correctly denied it with
leave to refile “a less broad protective order.”1 Counterclaim defendants’ objections (ECF No.
99) are DENIED.
Defendant objects to Judge Coffin’s denial of its motion to compel discovery (ECF No.
117). Specifically, defendant seeks to compel plaintiff to produce documents it is able to obtain
from the counterclaim defendants. Judge Coffin’s ruling was not clearly erroneous nor contrary
to law. As noted by Judge Coffin, nothing prevented defendant from issuing subpoenas to the
counterclaim defendants. Judge Coffin stated he would not give an advisory ruling at that time,
1

The court understands that the parties disagree on whether much of the sought after discovery is in fact related
to the jurisdictional issues. Those questions may be dealt with on a case-by-case basis rather than a broad
prohibition on any discovery from the counterclaim defendants.

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but would wait for any subpoenas to be presented before him. Plaintiff MCP appears to agree (at
least for the purpose of responding to defendant’s objection) that nothing prevents defendant
from issuing subpoenas. Counterclaim defendants note that their own motion for a protective
order (ECF No. 69, discussed above) “was directed to the pending discovery requests, not on any
future, not yet served subpoenas.” ECF No. 133. Considering the counterclaim defendants agree
nothing prevents defendant from serving subpoenas, defendant’s motion to compel appears
premature. Defendant’s objections (ECF No. 130) are denied.2
After reviewing the extensive record to date, I echo Judge Coffin’s comment that, “I can
see this case lasting for I don’t know how many years before it ever sees a trial date, given all the
squabbling that is taking place over literally almost everything in the case.” In an earlier hearing,
Judge Coffin compared this case to litigation forming the basis of the novel Bleak House by
Charles Dickens. The litigation in that novel lasted over 100 years and Judge Coffin noted this
case “has the earmarks of turning into” that case. Transcript of June 22, 2018 Hearing, 12.
Transcript of March 22, 2019 hearing, 21-22.
Plaintiff filed this action in November of 2017. The parties are not yet finished with
limited discovery relating to the question of jurisdiction over the counter defendants. While this
litigation without a doubt involves complex questions of patent law, the parties should strive to
work better going forward towards resolving disputes regarding discovery without requiring the

2

This is not a ruling to prevent defendant from filing a future motion compelling MCP to provide information it has
access to from the other counterclaim defendants. Any arguments related to the subpoenas will take place at that
time, not now (before any subpoenas have been filed). Depending on the success with the subpoenas, defendant
may refile. At that time, the court could consider the interchangeability or connectedness of the parties. If
necessary, the court will rule on such a motion at the appropriate time. As noted by Judge Coffin, “You know, quite
frankly, everyone can make this case as complicated as they want, and ultimately if the subpoena is issued to
[counterclaim defendant] Mr. McPherson, that’s one way to get the materials if that’s the journey that everybody
wants to take on this case.” Transcript of March 22, 2019 Hearing, 21. Judge Coffin also noted he would not
provide any advisory ruling on any issue related to subpoenas not presently before him.

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assistance of a magistrate judge, followed by objections and responses to those objections. One
reason the district requires local counsel is to make out-of-state counsel aware of the obligations
and expectations regarding attorneys involved in litigation in the District of Oregon. In my five
years on the federal bench, I have never witnessed the sheer amount of objections filed at this
stage of litigation. Local counsel shall communicate with pro hac vice counsel to ensure all
attorneys involved in this action are aware of the expectations for attorneys practicing in this
district. If the parties remain unable to agree on practically anything without the court’s
assistance, one option is to resolve any similar future motions with in-person hearings in Eugene
(for local counsel as well as out-of-state counsel), with the losing party responsible for fees and
costs incurred on the prevailing party.
As Judge Coffin recently retired, these actions were reassigned to Judge Kasubhai. If the
parties believe objecting to any adverse discovery ruling will simply provide them another shot
at the apple, they are mistaken. Consistent with rule 72, I will give Judge Kasubhai’s
nondispositive rulings proper deference, overruling only those orders that are clearly erroneous
or contrary to law. As the parties are no doubt aware, the federal rules provide trial judges with
great leeway and latitude in conducting pretrial matters, including discovery. In dealing with any
potential future objections, I will certainly keep those rules in mind. Hopefully, the parties work
together to provide discovery in an efficient, responsible, and professional manner.
IT IS SO ORDERED.
DATED this 17th day of May, 2019.
_______/s/ Michael J. McShane________
Michael McShane
United States District Judge

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