JUNKER v. MEDICAL COMPONENTS, INC. et al

Filing 106

MEMORANDUM AND ORDER THAT DEFENDANT'S MOTION TO COMPEL ADDITIONAL DISCOVERY RESPONSES IS GRANTED IN PART AND DENIED IN PART; ETC.. SIGNED BY MAGISTRATE JUDGE ELIZABETH T. HEY ON 2/9/15. 2/10/15 ENTERED AND E-MAILED.(jl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
LARRY G. JUNKER
v.
MEDICAL COMPONENTS,
INC., et al.

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CIVIL ACTION

NO. 13-4606

MEMORANDUM AND ORDER
ELIZABETH T. HEY, U.S.M.J.

February 9, 2015

Defendants have filed a motion to compel additional discovery responses in this
patent dispute, claiming that Plaintiff’s responses “lacked specificity, were answered
without particularity, and were non-responsive.” Doc. 67 at 1. The motion is fully
briefed, as is a related defense motion to strike. See Docs. 76, 80, 81, 84, and 86. The
Honorable L. Felipe Restrepo heard argument on the motions on January 16, 2015,
Docs. 89 & 99, and thereafter referred disposition to the undersigned. Doc. 91.
I.

Interrogatories and Document Production Requests
Because the Interrogatories and Document Production Requests overlap, I will

address the related topics together.
A.

Interrogatory 16 & Request for Production 72

In Interrogatory 16, Defendants asked Plaintiff to
Describe all times that You requested a contract with James
Eddings, Xentek, or Galt Medical Corporation [“Eddings, et
al.”] to reflect Your business relationship with [Eddings, et
al.], and the substance of any/all communications, and
include the Bates # of any document produced that are [sic]
responsive to that information requested in this interrogatory.

Plaintiff first objected on the bases of vagueness and relevancy. Plaintiff also
referred Defendants to written non-disclosure agreements (with referenced Bates
numbers), and oral agreements between Plaintiff and Eddings, et al. regarding the
production of a saleable product.
Considering that Plaintiff responded to this interrogatory by stating that he and
Eddings, et al. had a business relationship for the development of the sheath that is the
subject of the patent at issue, clearly the agreements and understandings between
Plaintiff and Eddings, et al. are relevant to the litigation. Although Plaintiff identified
agreements that he and Eddings, et al. entered into, see Doc. 67-6 at 3, he failed to
identify any other times that he requested a contract with any of them. If there are no
other times that Plaintiff requested agreements with any of Eddings, et al., he shall so
state. If Plaintiff made such requests but was spurned, he shall identify when he made
such request and to whom, and shall identify the response he received and any ensuing
discussion, and produce any document evidencing such communication.
In related Document Request 72, Defendants sought
Any and all documents sufficient to show any
communication made from You to [Eddings, et al.] which
reflect your business relationship with [Eddings, et al.],
including any/all contracts signed by the parties, or draft
contracts not signed by the parties.
Plaintiff responded that the request was vague and unintelligible. I disagree. The
relationship between these parties is at the core of the case and documents evidencing
that relationship are relevant to the litigation. Plaintiff shall produce any documents,
signed or unsigned, final version or draft, that evidence the relationship between
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Plaintiff and any of Eddings, et al. If such documents have previously been produced,
Plaintiff shall identify the responsive documents by Bates number.
B.

Interrogatory 17 & Request for Production 73

In Interrogatory 17, Defendants asked Plaintiff to
Describe any written agreements which showed that there
was an understanding between You and [Eddings, et al.]
regarding who owns the designs as reflected in U.S. Patent
No. D450,839 [“the 839 patent”], and include the Bates # of
any documents produced that are responsive to the
information requested in this interrogatory.
In related Document Request 73, Defendants sought
Any and all documents sufficient to show any written
agreement between You and [Eddings, et al.] which showed
that there was an understanding regarding which party owns
the designs as reflected in [the 839 patent].
Plaintiff responded that the interrogatory was irrelevant to the issues pleaded in
the litigation and referred Defendants to prior litigation, which he asserts establishes that
he is the owner and inventor of the 839 patent. Such information is not responsive to the
request.1 In responding to both the interrogatory and the document request, Plaintiff
contended that the request was vague and unintelligible.
If Plaintiff entered into any written agreements commenting directly or indirectly
on the ownership of the designs in the 839 patent, he shall produce it or, if previously
produced, shall identify it by Bates number. If Plaintiff does not have any written

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Plaintiff has presented a collateral estoppel argument based on prior litigation in
his summary judgment motion. Doc. 93 at 29-33.
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agreement evidencing the ownership of the designs in the 839 patent, he shall so inform
Defendants.
C.

Interrogatory 18 & Request for Production 74

In Interrogatory 18, Defendants asked Plaintiff to
Describe any written agreements which identified that
[Eddings, et al.] worked for You and that You owned all of
the ideas and inventions of [the 839 patent], and include the
Bates # of any documents produced that are responsive to the
information requested in this interrogatory.
Plaintiff objected to this interrogatory as irrelevant, vague and unintelligible based on
the term “ideas and inventions.” Plaintiff then referred to his responses to
Interrogatories 16 and 17. Plaintiff’s reliance on the prior litigation is unresponsive to
this request. If Plaintiff has any written agreements indicating that any of Eddings, et al.
worked for him or that he owned any of the ideas embodied in the 839 patent, he shall
produce or identify them by Bates number. If there are no agreements to that effect, he
shall so state.
In related Document Request 74, Defendants sought
Any and all documents sufficient to show any written
agreements which identified that [Eddings, et al.] worked for
you and that You owned all of the ideas and inventions of
[the 839 patent].
In response, Plaintiff objected to the request as vague and unintelligible. Again, the
relationship between Plaintiff and Eddings, et al. is relevant to the development of the
patent. If, as Plaintiff indicated, he has produced all responsive documents, he shall
further identify the responsive documents by Bates number.
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D.

Interrogatory 19 & Request for Production 75

In Interrogatory 19, Defendants asked Plaintiff to
Describe any drawings of [the 839 patent] that were made at
your direction including who you instructed to design said
drawings at your direction, the substance of any
communications and whether or not any changes to said
designs were done by You or your subordinate, including the
identity of said subordinate, and include the Bates # of any
documents produced that are responsive to the information
requested in this interrogatory.
In related Document Request 75, Defendants sought
Any and all documents sufficient to show that the drawings
of [the 839 patent] were made at your direction, including
who You instructed to design said drawings at your
direction, the substance of any communications, and whether
or not any changes to said designs were done by You or your
subordinate, including the identity of said subordinate.
Plaintiff objected to both on the basis of vagueness and intelligibility. Plaintiff
also stated that “all drawings for [the 839 patent] were prepared at [Plaintiff’s] direction
in consultation with his patent attorney and a draftsman,” and that the drawings were not
changed once the patent was filed. Doc. 67-6 at 5. In their motion, Defendants seek the
identity of the draftsman referred to in the response, explaining that the information
received by the draftsman is crucial. Doc. 67 at 5. In response to the motion, Plaintiff
represented that he does not know the identity of the draftsman. Doc. 76 at 3. Plaintiff
shall amend his response to provide a formal response to this interrogatory, identifying
any persons he is aware of that drafted or contributed to the drafting of the drawing of
the patent. If he does not know their identities, he shall make such a representation in a

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formal response. He shall also identify any previously produced documents responsive
to Request for Production 75 by Bates number.
II.

Requests for Admissions
Defendants also seek the court to compel Plaintiff to respond to the Requests for

Admissions. In the first Request for Admission, Defendants asked that Plaintiff admit
that he was the inventor of “all of the features of the Patent-In-Suit.” Doc. 67-5 at 1.
The subsequent Requests for Admissions ask Plaintiff to admit that individual items or
details are “claimed feature[s] of the Patent-In-Suit,” and then to admit that he did not
invent that claimed feature or was not the sole contributor to all of the pertinent design
features. Id. at 1-6. The remainder of the Requests for Admissions focus on the
functionality of the rounded handles. Id. at 5-8.
Plaintiff objected to each of the requests. Because these admissions call for
conclusions of law that are at the core of the case, I will sustain Plaintiff’s objections.
Although Rule 36 and Requests for Admissions are designed to expedite a trial by
establishing some material facts as true, “requests for admissions may not be applied to a
controverted legal issue lying at the heart of the case.” Pittsburgh Hotels Ass’n v. Urban
Redevelopment Auth. of Pittsburgh, 29 F.R.D. 512, 513 (W.D. Pa. 1962). “Requests for
Admission calling for conclusions of law and relating to facts of the case are ‘properly
objectionable’ when they call ‘for a conclusion of one of the ultimate issues in the
case.’” McCarthy v. Darman, Civ. No. 07-3968, 2008 WL 2468694, at *1 (E.D. Pa.
2008) (quoting Ghazerian v. United States, No. 89-8900, 1991 WL 30746, at *2 (E.D.
Pa. Mar. 5, 1991)).
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Defendants have asked the court to conduct claim construction and determine
whether Defendants were selling an identical product prior to Plaintiff’s filing for the
patent. See Doc. 95 at 1-5. Plaintiff argues that “a proper claim construction should not
unduly emphasize individual features but must encompass the overall visual impression
of the design.” Doc. 93 at 15-16. Thus, these requests for admissions go to the heart of
the claim construction and the parties’ differences on how the court should proceed.
Therefore, I will sustain Plaintiffs’ objections.
III.

Motion to Strike
Finally, Defendants have filed a motion to strike Plaintiff’s opposition to the

motion to compel, citing Judge Restrepo’s Policies and Procedures. Having considered
the response to the motion to compel in the prior discussion, my decision on this issue
should be apparent.
The cited policy requires the filing of a response to a motion to compel within
five days. Here, Plaintiff filed his response 14 days after the filing of the motion.
However, Judge Restrepo’s policy is applicable when the court has already considered
letter briefs and conducted a telephonic conference. In such a case, the responding party
had already prepared a response and it need only be made formal for filing within the
five days. In this case, rather than drown in a sea of paper, the court had earlier taken
the drastic measure of ordering the parties to cease letter correspondence to the Court.
See Doc. 60. Thus, the informal mechanism for discovery dispute resolution was off the
table, as was the benefit of having provided the court with a letter brief and orally
presenting a response to the motion. Employing the formal mechanism, Plaintiff had 14
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days to file a response. Loc. R. Civ. P. 7.1(c). Therefore, the motion to strike will be
denied.
An appropriate Order follows.

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