Automated Merchandis v. Crane Co., et al
Filing
272
MEMORANDUM, OPINION AND ORDER: denying 253 Plaintiff's Motion to Compel in case 3:03-cv-00088-JPB -JES; denying (222) Motion to Compel in case 3:08-cv-00097-JPB -JES; denying (95) Motion to Compel in case 3:04-cv-00048-JPB -JES; denying (84) M otion to Compel in case 3:04-cv-00075-JPB -JES; denying (92) Motion to Compel in case 3:04-cv-00080-JPB -JES. Signed by Magistrate Judge James E. Seibert on 7/6/2011. Associated Cases: 3:03-cv-00088-JPB -JES, 3:04-cv-00048-JPB -JES, 3:04-cv-00075-JPB -JES, 3:04-cv-00080-JPB -JES, 3:08-cv-00097-JPB -JES(cmd)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF WEST VIRGINIA
AUTOMATED MERCHANDISING
SYSTEMS INC.,
Plaintiff,
v.
Civil Action No. 3:03-cv-88
(consolidated with 3:08-cv-97, 3:04-cv-80,
3:04-cv-75 and 3:04-cv-48)
CRANE CO., and SEAGA
MANUFACTURING, INC.,
Defendants.
MEMORANDUM OPINION AND ORDER DENYING
PLAINTIFF’S MOTION TO COMPEL
This matter comes before the Court on Plaintiff’s, Automated Merchandising Systems,
Inc. (hereinafter “AMS”), Motion to Compel filed June 9, 2011.1 The Court held an evidentiary
hearing and argument on Plaintiff’s Motion on June 27, 2011. Plaintiff appeared by Charles F.
Printz, Jr., Esq. and James D. Berquist, Esq., by phone. Defendant, Crane Co., appeared by John
S. Torkelson, Esq. and Michael T. Smith, Esq., by phone. Defendant, Seaga Manufacturing, Inc.
(hereinafter “Seaga”), appeared by Matthew P. Heiskell, Esq. and Amy L. Linder, Esq., by
phone. No testimony was taken nor was any other evidence adduced.
I. INTRODUCTION
A.
Background
This action was initially filed on December 29, 2003 alleging patent infringement by
Defendant, Crane Co., of four of Plaintiff’s patents in 3:03-cv-88. A detailed history of this
1
Dkt. No. 253.
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litigation is set forth in the Order denying Plaintiff’s Motion to Lift Stay (Dkt. No. 185) which
was entered February 2, 2009. This action was stayed by Order of Court entered on December 2,
2008 and the stay was lifted on April 5, 2011 (Dkt. No. 218). AMS filed the instant Motion to
Compel on June 9, 2011 requesting the Court to compel Crane Co. to provide complete answers
to AMS’s discovery.
B.
The Motion
Plaintiff’s Motion to Compel Discovery.2
C.
Decision
Plaintiff’s Motion to Compel is hereby DENIED because Defendant Crane Co. has
adequately responded to Plaintiff’s Interrogatory No. 13 and Requests for Production Nos. 7683, and because Interrogatory No. 24 is premature.
II. FACTS
1.
On June 9, 2011, Plaintiff filed a Motion to Compel Discovery from Crane Co.
2.
This Court set an evidentiary hearing and argument on Plaintiff’s Motion to Compel
for June 27, 2011.
3.
Defendant, Crane Co. filed its Response to Plaintiff’s Motion on July 1, 2011.3
4.
On July 5, 2011, Plaintiff filed its Reply to Crane Co.’s Response.
5.
The evidentiary hearing and argument was held on June 27, 2011.
III. PLAINTIFF’S MOTION TO COMPEL
A.
Contentions of the Parties
2
Dkt. No. 253.
3
Dkt. No. 268.
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In support of its Motion, Plaintiff requests the Court to compel certain discovery
responses from Crane Co. Plaintiff argues Defendant must answer Interrogatory No. 24 and
disclose its factual basis for asserting non-infringement because “[Defendant] is in the best
position...[to] identify the basis upon which it asserts that its products [] do not infringe the
patent claims [Plaintiff] identified.” See Pl.’s Mot., Pg. 7-8 (Dkt. 253). Plaintiff contends
Defendant also “needs to identify the vend detection systems it has used since it introduced its
SureVend product [] and to explain how each works” in accordance with Interrogatory No. 13.
Id. at 8. Plaintiff contends the “relevance of this information is not subject to reasonable debate”
because “it is at the center of the present dispute.” Id. Additionally, Plaintiff argues Fed. R. Civ.
P. 33(d) is inapplicable because neither condition under this rule is met. Id. at 8-9. Plaintiff also
argues for Defendant’s sales records because the “information is central to [Plaintiff’s] damages
computation and thus to the opening expert report of [Plaintiff’s] damages expert.” Id. at 9.
Lastly, Plaintiff argues that Defendant “should be ordered to produce the requested documents”
instead of mere “promises to make that production.” Id. at 9-10.
In opposition, Defendant argues procedurally that Plaintiff’s Motion does not comply
with LR Civ. P. 37.02(a)(1) because “[Plaintiff] did not quote verbatim any of the interrogatories
or responses at issue in its Motion to Compel....” See Def.’s Resp., Pg. 4 (Dkt. 263).
Substantively, Defendant also contends it has adequately responded to Interrogatory No. 13 by
producing “responsive documents that describe in detail all operations of the SureVend sensor
system and the Posi-Vend sensor system....” Id. at 7. Defendant also states it provided “all of the
operating manuals for the accused vending machines...including the engineering drawings,
schematics and documents describing the operation of the accused optical vend sensing
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systems.” Id. at 8.
Defendant argues Plaintiff’s Interrogatory No. 24 is improper “because non-infringement
contentions occurring prior to claim construction or Markman briefings is contrary to Federal
Circuit authority, which holds that claim construction must be performed before infringement
analysis.” Id. at 10. As a second objection to Interrogtory No. 24, Defendant contends Plaintiff’s
interrogatory is “nothing more than a back-door attempt to subvert the Court’s order that requires
the party with the burden of proof on patent infringement to provide its expert opinion(s) first.”
Specifically, Defendant asserts that the “Court’s scheduling order explicitly provides that the
party with the burden of proof must provide its expert report(s) first” and that “the purpose of
interrogatories is not to require Defendants to divulge their crystallized non-infringement
arguments upon which they will rely at trial.” Id. at 12-14. Defendant also highlights Plaintiff’s
argument “that [Plaintiff] cannot provide infringement contentions without [Defendant’s] noninfringement contentions is a tacit admission that [Plaintiff] failed to satisfy its Rule 11 pre-suit
requirement to apply construed claims of the [patents at issue] to [Defendant’s] machines....” Id.
at 14-15. Specifically, Rule 11, Defendant argues, required Plaintiff to compare the actual
design and functioning of Defendant’s machines with Plaintiff’s patent claims prior to filing suit.
Lastly, Defendant argues it “has provided documents responsive to [Plaintiff’s] fourth set of
requests for production.” Id. at 16.
B.
Discussion
1.
LR Civ. P. 37.02(a)(1)
To properly file a motion to compel in this Court, a party must submit with the motion to
compel a statement setting forth “verbatim each discovery request or disclosure requirement and
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any response thereto to which an exception is taken.” LR Civ. P. 37.02(a)(1).
Defendant argues Plaintiff is in violation of LR Civ. P. 37.02(a)(1) because Plaintiff
merely provided a “summary description of the information sought...[in] Interrogatories 7, 13
and 24.” See Def.’s Resp., Pg. 4 (Dkt. 263). While this Court has previously denied a motion to
compel on grounds that the rule’s requirements were not met, the Court declines to do so here
and finds a the parties’ interests would be best served by a substantive ruling. Plaintiff is on
notice in the future, however, that a summary description of the information it seeks is
insufficient to file a Motion to Compel.
2.
Motion to Compel Analysis
Pursuant to Fed. R. Civ. P. 37(a), a party may move for an order to compel discovery or
disclosure from an opposing party where the opposing party fails to respond or where the party’s
response is evasive or incomplete. Specifically, parties may move for an order compelling an
answer to a deposition question, a designation under Rule 30(b)(6) or Rule 31(a)(4), a response
to an interrogatory, and a response to a request for production. Fed. R. Civ. P. 37(a)(3)(B)(i)(iv). To properly file a motion to compel in this Court, a party must submit with the motion a
statement setting forth “verbatim each discovery request or disclosure requirement and any
response thereto to which an exception is taken.” LR Civ P 37.02(a)(1). When a party refuses to
produce documents or answer interrogatories during discovery, it has a duty to particularize that
objection within the time period provided for discovery responses. Fed. R. Civ. P. 26(b)(5).
a.
Interrogatory No. 13
Plaintiff’s Interrogatory No. 13 is as follows:
Describe in detail all operations of the SureVend sensor system and
the PosiVend sensor system from the time a vending machine user
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initiates a vend operation until the user’s requested item is vended,
including, but not limited to, identifying (a) the order in which the
sensor system’s LED’s are pulsed, (b) the order in which the sensor
system’s light receivers and/or light detectors are pulsed, (c) the
signal frequency at which the sensor system’s LEDs, receivers and/or
detectors [are] pulsed, (d) the duration and/or duty cycle of individual
LED, receiver and/or detector pulses, (e) the generation of signals by
the sensor system’s receivers and/or detectors in response to light
exposure, (f) the processing and analysis of the signals received from
the sensor system’s receivers and/or detectors, (g) the generation of
signals from the sensor system that indicate the detection of a vend
drop, (h) the logic or program employed by the sensor system to
determine when a vend drop is detected, (I) the functions used,
including integration, comparison and/or threshold functions applied,
to determine that a vend drop has occurred, and (j) an identification
of documents, flowcharts, logic diagrams, and programs documenting
or illustrating the subjects of (a) through (j) above.
Plaintiff argues Defendant “refuses to provide a meaningful response to [Plaintiff’s]
Interrogatory No. 13. See Pl.’s Mot., Pg. 9 (Dkt. 253). Defendant contends it “provided a
narrative response” which “describe[d] in detail all operations of the SureVend sensor system
and the Posi-Vend sensor system” and also provided supplementation responsive to this
Interrogatory. Defendant, however, does not object to the relevance of this information as
Plaintiff suggests. The Court finds Plaintiff’s argument as to Interrogatory No. 13 unpersuasive.
Defendant states it produced documents that describe both the SureVend and Posi-Vend sensor
systems and have additionally produced the operating manuals, engineering drawings,
schematics and documents describing the operations of the accused optical vend sensing
systems. Defendant has offered to make its vending machine software available to Plaintiff and
agreed to provide a Rule 30(b)(6) representative on this topic. The Court directs the parties to
Fed. R. Civ. P. 26(g) which has a certification requirement. This requirement “obliges each
attorney to stop and think about the legitimacy of a discovery request, a response thereto, or an
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objection.” Fed. R. Civ. P. 26 advisory committee’s notes, 1983 Amendment, Subdivision (g).
Moreover, Rule 26(g) “requires that the attorney make a reasonable inquiry into the factual basis
of his response, request, or objection.” Id. By signing a Rule 26(g) certification, an attorney
“certifies that [he or she] has made a reasonable effort to assure that the client has provided all
the information and documents available to [the client] that are responsive to the discovery
demand.” Id. By representing Defendant has produced the requested documents, the Court
cannot compel discovery without more.
b.
Interrogatory No. 24
Plaintiff argues Defendant should disclose the factual basis upon which Defendant asserts
its non-infringement contentions. Plaintiff offers no case authority for position this but states
“[Defendant] cannot precondition its discovery responses on seeing [Plaintiff’s] analysis first.
Defendant argues Interrogatory No. 24 is premature because “no Markman briefing or hearing
has occurred as to the ‘915 and ‘220 Patents, which are the subject of Interrogatory 24.” See
Def.’s Resp., Pg. 11 (Dkt. 263). The Court finds useful the case authority cited by Defendant
and is inclined to follow it. Specifically, Plaintiff bears the burden to prove infringement and
cannot use interrogatories to determine Defendant’s “crystallized non-infringement arguments.”
See Cummings-Allison v.SBM Co., Ltd., Civ. Action No. 9:07-cv-196, 2009 WL 806753, at *12 (E.D. Tex. March 19, 2009). Prior to knowing how the Court will construe the claims at issue,
it would be premature because it would be difficult to determine how the machines allegedly
infringed. Accordingly, Plaintiff’s argument in this regard must also fail until after the patent
claims have been construed. The Court does not address Defendant’s additional arguments
regarding Interrogatory No. 24 because they are moot.
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c.
Interrogatory No. 7
Plaintiff additionally argues it requires Defendant’s information as to the sales of the
accused products to determine the damages computation and for the opening expert report of
Plaintiff’s damages expert. At the evidentiary hearing, Plaintiff advised the Court that it was
withdrawing its Motion to Compel as to Interrogatory No. 7. Accordingly, the Court finds this
issue moot.
d.
Other Requested Documents
Plaintiff contends Defendant should be ordered to respond to Plaintiff’s “requests for
production of documents and things.” See Pl.’s Mot., Pg. 9 (Dkt. 263). It argues Defendants
continually promise production but “that production was a long time coming.” Id. at 10. In
Response, Defendant argues it has provided documents responsive to Plaintiff’s Fourth Set of
Requests for Production. At the evidentiary hearing the Court ordered inquired as to how long it
would take Defendant to respond to Plaintiff’s Requests for Production Nos. 76-83, which
Plaintiff contended Defendant had answered insufficiently. Defendant responded on July 1,
2011 and stated in its Response that it either did not have documents responsive to Plaintiff’s
requests or had already produced these documents. Defendant additionally stated that it would
continue to supplement its production as soon as responsive documents are located. Defendant
states numerous times throughout its Response that it has produced all documents responsive to
Plaintiff’s Production requests and that Defendant will supplement with additional responsive
documents in keeping with its discovery duties. By representing Defendant has or will produce
the requested documents, the Court cannot compel discovery without more.
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C.
Decision
Plaintiff’s Motion to Compel is DENIED.
Filing of objections does not stay this Order.
Any party may, within fourteen (14) days after being served with a copy of this Order, file
with the Clerk of the Court written objections identifying the portions of the Order to which
objection is made, and the basis for such objection. A copy of such objections should also be
submitted to District Court Judge of Record. Failure to timely file objections to the Order set forth
above will result in waiver of the right to appeal from a judgment of this Court based upon such
Order.
The Clerk of the Court is directed to transmit a copy of this Order to parties who appear pro
se and any counsel of record, as applicable.
IT IS SO ORDERED.
DATED: July 6, 2011
/s/ James E. Seibert
JAMES E. SEIBERT
UNITED STATES MAGISTRATE JUDGE
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