Nordock Inc v. Systems Inc

Filing 281

ORDER signed by Magistrate Judge William E Duffin on 2/28/2018 DENYING 279 Nordock Inc's 7(h) Expedited MOTION for Leave to Expand the Number of Interrogatories and Depositions. (cc: all counsel) (lz)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
NORDOCK, INC.,
Plaintiff,
v.

Case No. 11-CV-118

SYSTEMS, INC.,
Defendant.
ORDER
The Court of Appeals for the Federal Circuit remanded this action for a new trial
regarding damages. Nordock, Inc. v. Sys., Inc., 681 F. App'x 965 (Fed. Cir. 2017). The
retrial will require the finder of fact to determine what the “article of manufacture” is in
light of the Supreme Court’s decision in Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429,
196 L.Ed.2d 363 (2016). The court articulated the factors relevant to that determination.
Nordock, Inc. v. Sys., Inc., No. 11-CV-118, 2017 U.S. Dist. LEXIS 192413 (E.D. Wis. Nov.
21, 2017). Nordock Inc. now requests leave to serve 20 additional interrogatories and
conduct ten additional depositions “to develop the record regarding the relevant article
of manufacture, quantity of infringing levelers sold, and Defendant’s profits on its
infringing levelers or a component of the infringing levelers.” (ECF No. 279 at 2-3.)

Systems opposes the motion, calling it “premature” and noting that it “has already
provided its relevant sales and financial records pertaining to the number of the subject
‘hydraulic’ dock levelers Systems sold in the relevant period between issuance of the
subject patent on November 4, 2008 and trial in March, 2013.” (ECF No. 280 at 1
(emphasis in original).) It says that it ceased selling the infringing product immediately
after receiving the jury’s verdict. (ECF No. 280 at 2.)
Ordinarily, a party is limited to 25 interrogatories and 10 depositions. Fed. R.
Civ. P. 30, 33. The court may authorize additional interrogatories and depositions “to
the extent consistent with Rule 26(b)(1) and (2).” Fed. R. Civ. P. 30(a)(2) and 33(a)(1). A
party is not permitted additional interrogatories or depositions if they would be
“unreasonably cumulative or duplicative or [the information] can be obtained from
some other source that is more convenient, less burdensome, or less expensive.” Fed. R.
Civ. P. 26(b)(2)(C)(i). The court likewise will deny leave for additional discovery if “the
party seeking discovery has had ample opportunity to obtain the information by
discovery in the action” or the information sought is not relevant to a party’s claim or is
disproportionate to the case. Fed. R. Civ. P. 26(b)(1), (2)(C)(ii)-(iii).
Nordock says that before the first trial it served 20 interrogatories (five fewer
than permitted by Rule 30) and conducted eight depositions (two fewer than permitted
by Rule 33). (ECF No. 279 at 1.) Some courts have required parties seeking additional
depositions or interrogatories to first exhaust available discovery and then support the

2

motion with a “‘particularized showing’ of necessity” of each additional interrogatory
or deposition. Illiana Surgery & Med. Ctr. LLC v. Hartford Fire Ins. Co., 2008 U.S. Dist.
LEXIS 97770, *6 (citing Duncan v. Paragon Publ'g, Inc., 204 F.R.D. 127, 128 (S.D. Ind.
2001)); see also Scott v. City of Sioux City, Iowa, 298 F.R.D. 400, 402 (N.D. Iowa 2014).
Moreover, it is helpful if the moving party identifies the proposed additional
deponent(s) and presents the proposed additional interrogatories, explaining why each
is necessary. See § 2168.1 Number of Interrogatories, 8B Fed. Prac. & Proc. Civ. § 2168.1
(3d ed.).
Nordock contends that the retrial of damages requires discovery on the “article
of manufacture” issue. The court agrees. The Supreme Court’s decision in Samsung
represented a significant shift in the law regarding damages under 35 U.S.C. § 289.
Therefore, it is plausible, if not likely, that Nordock’s initial discovery would not have
encompassed the matters that will be most relevant at the retrial. The parties even
seemed to acknowledge as much when they agreed during the November 29, 2017
telephonic scheduling conference that additional discovery was necessary. (ECF No.
271.)
But it does not follow from the fact that additional discovery is needed on the
“article of manufacture” issue and sales related to that article that Nordock needs
essentially the full allotment of depositions and interrogatories authorized under the
Rules. “Responding to interrogatories is ‘inherently expensive and burdensome.’”

3

Duncan v. Paragon Publ'g, Inc., 204 F.R.D. 127, 128 (S.D. Ind. 2001) (quoting Herdlein
Technologies, Inc. v. Century Contractors, Inc., 147 F.R.D. 103, 105 (W.D.N.C. 1993)). The
same can be said about depositions.
The court acknowledges that further discovery is necessary but finds that
Nordock has failed to show that a basis exists for permitting it to exceed the number of
interrogatories and depositions authorized under the Federal Rules. According to its
motion, Nordock still has two depositions and five interrogatories unused. It does not
even attempt to explain why the remaining discovery is not enough to get the
information it needs on the damages issue to be tried in the new trial. Having failed to
demonstrate that two depositions and five interrogatories are insufficient, Nordock’s
motion is denied.
If the allotted discovery proves insufficient, Nordock may again seek relief from
the court, but it must support its motion with a particularized showing. See Archer
Daniels Midland Co. v. Aon Risk Servs., Inc. of Minnesota, 187 F.R.D. 578, 586 (D. Minn.
1999). With respect to depositions, this generally will require that Nordock identify the
proposed deponent, articulating the relevant information it seeks from that person, and
explaining why it was unable to obtain it through other means. See, e.g., San Francisco
Health Plan v. McKesson Corp., 264 F.R.D. 20, 21 (D. Mass. 2010). With respect to
interrogatories, generally a motion should be supported by the proposed interrogatories
and an explanation as to why the interrogatories are necessary.

4

IT IS THEREFORE ORDERED that Nordock Inc.’s Motion for Leave to Expand
the Number of Interrogatories and Depositions (ECF No. 279) is denied.
Dated at Milwaukee, Wisconsin this 28th day of February, 2018.

_________________________
WILLIAM E. DUFFIN
U.S. Magistrate Judge

5