Milwaukee Electric Tool Corporation et al v. Chervon North America Inc

Filing 51

ORDER signed by Judge J P Stadtmueller on 7/16/15: denying 42 Defendant's Motion to Compel; granting 41 Defendant's Motion to Restrict the following documents: 42 Defendant's Rule 7(h) Expedited Non-Dispositive Motion to Comp el Discovery, and 43 Declaration of Christopher R. Liro in Support of Defendant's Civil L.R. 7(h) Expedited Non-Dispositive Motion To Compel Discovery and associated exhibits A0118, A0141, A0168 and A0190; and, denying 46 Plaintiffs' Motion for Protective Order. See Order. (cc: all counsel) (nm)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
MILWAUKEE ELECTRIC TOOL
CORPORATION,
METCO BATTERY TECHNOLOGIES LLC,
AC (MACAO COMMERCIAL OFFSHORE)
LIMITED, and
TECHTRONIC INDUSTRIES CO. LTD.,

Case No. 14-CV-1289-JPS

Plaintiffs,
v.
CHERVON NORTH AMERICA, INC.,

ORDER

Defendant.

The plaintiffs initiated this patent litigation on October 16, 2014.
(Docket #1). Presently before the Court are two motions related to discovery.
On June 19, 2015, the defendant filed a motion to compel, pursuant to Federal
Rule of Civil Procedure 37 and Civil Local Rule 7(h). (Docket #42). On
June 29, 2015, the plaintiffs filed a response along with a separate motion for
a protective order, pursuant to Federal Rule of Civil Procedure 26(c)(1) and
Civil Local Rule 7(h). (Docket #44, #46). On July 9, 2015, the defendant filed
a response to the protective order. (Docket #48). The motions are now fully
briefed and ready for disposition.
Prior to addressing the merits of the pending motions, the Court notes
that, along with the motion to compel, the defendant filed a motion to restrict
certain documents. (Docket #41). The documents include material and/or
testimony that the plaintiffs, defendant and/or third party have designated
as Confidential under the Protective Order in this case. (Docket #41 at 1). The
plaintiffs did not file any opposition. As such, the Court will grant the motion
to restrict.

1.

Motion to Compel
The defendant’s motion to compel addresses three distinct areas in

which it seeks discovery: (1) agreements and related documents, seeking “the
second half of agreements (and related documents) that collectively settled
two earlier litigations between Plaintiffs and Hitachi Koki…involving the
very patents at issue in this case”; (2) infringement contentions, seeking a
“full response to Chervon’s Interrogatory No. 1"; and (3) Rule 30(b)(6) topics,
seeking that the plaintiffs designate Rule 30(b)(6) witnesses on Topic Nos. 23,
25, 28, and 35-38. (Docket #42 at 1-3).
Under Federal Rule of Civil Procedure 26(b)(1), parties may obtain
discovery “regarding any nonprivileged matter that is relevant to any party's
claim or defense.” The information sought need not itself be admissible as
long as “the discovery appears reasonably calculated to lead to the discovery
of admissible evidence.” Fed. R. Civ. P. 26(b)(1). A court shall limit
discovery if it determines the discovery sought to be unreasonably
cumulative or duplicative, the party seeking discovery has had ample
opportunity to obtain the information by discovery in the action, or the
burden or expense of the proposed discovery outweighs its likely benefit.
Fed.R.Civ.P. 26(b)(2)(C)(i)-(iii). Moreover, Rule 26(c) allows courts, for good
cause shown, to issue orders to “protect a party or person from annoyance,
embarrassment, oppression, or undue burden or expense, including…
forbidding the disclosure or discovery.” Fed.R.Civ.P. 26(c)(1).
Although Rule 37 permits the court to compel discovery, the party
seeking such discovery must complete several steps before court intervention
becomes appropriate. The party seeking discovery must first direct his
request to the opposing party. If the opposing party fails to provide the

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materials, the party must then personally consult with the opposing party
and attempt to resolve their differences. Civil L.R. 37 (E.D. Wis.). If the party
is still unable to obtain discovery, he may file a motion to compel discovery
with the court pursuant to Fed.R.Civ.P. 37(a). Such motion must be
accompanied by a written certification by the movant that, “after the movant
in good faith has conferred or attempted to confer with the person or party
failing to make disclosure or discovery in an effort to obtain it without court
action, the parties are unable to reach an accord.” Civil L.R. 37 (E.D. Wis.). A
motion to compel discovery pursuant to Rule 37(a) is addressed to the sound
discretion of the trial court. EEOC v. Klockner H & K Machs., Inc., 168 F.R.D.
233, 235 (E.D. Wis. 1996) (citation omitted).
Here, the Court need not address the substance of the defendant’s
motion because it failed to comply with a critical local rule in filing the
motion. Defendant generally asserts that it met and conferred with counsel
for the plaintiffs (Jessica Polakowski and Paul Stockhausen) on at least May
1, May 11, May 22, and June 8, 2015. (Docket #42 at 1). In direct contrast,
however, the plaintiffs assert that the defendant did not in fact meet and
confer on any of the specific topics addressed in the motion to compel.1
As such, the Court finds that the defendant has not complied with its
obligation to certify that it attempted to resolve the issue with the plaintiffs.

1

(See Docket #44 at 2 (noting that [c]ontrary to its blanket assertion, Chervon
did not communicate with Plaintiffs following Plaintiffs’ indication that Hitachi had
refused consent)); (Docket #44 at 4 (“While Plaintiffs believe their supplemental
contentions are sufficient, they of course would have been willing to discuss the
issue and consider adding further specificity…. This is precisely the type of issue
that can, and should, be resolved through the meet and confer process)); (Docket
#44 at 4 (noting that Chervon never responded, and filed the instant motion to
compel after weeks of silence”)).

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See Civil L.R. 37 (E.D. Wis.). Civil Local Rule 37 serves to facilitate
communication between the parties while also reducing the potential costs
of prematurely bringing a dispute before the Court. Consultation with one's
adversary is the first avenue of resolution that must be explored. The meet
and confer requirement set forth in Rule 37 does not simply mean that the
parties have met and conferred generally on discovery issues, but rather that
the parties have met specifically on those matters that are the subject of a
motion to compel after they were unable to reach an accord. The defendant
has failed to comply with this seemingly simple, yet vital task in the
discovery process.
For all of these reasons, the Court will deny the defendant’s motion
to compel (Docket #42) without prejudice. The Court, of course, recognizes
that the defendant was not permitted a reply in this instance, due to the
briefing restraints imposed by Local Rule 7(h), to respond to the plaintiffs’
assertion that they failed to meet and confer on these specific topics. If the
defendant disagrees with that assertion, it is certainly free to revive the
motion to compel with additional details regarding the meet and confer
requirement. Either the parties met and conferred on these topics, or they did
not; both cannot be true. The Court reminds all counsel of their ongoing
obligation as officers of this Court to act with candor in all matters before it.
See General L.R. 83(d) (noting that all attorneys before this Court are subject
to the Wisconsin Rules of Professional Conduct for Attorneys). The Court has
limited resources and will not waste precious time over discovery matters
that the parties have not genuinely attempted to resolve. The motion to
compel will be denied.

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2.

Motion for Protective Order—Rule 30(b)(6) Topics
On May 12, 2015, the defendant issued a Common Notice of

Deposition to Plaintiff Pursuant to Federal Rule of Civil Procedure 30(b)(6)
that included 43 topics. (Docket #43-3). On June 29, 2015, the plaintiffs filed
a motion for a protective order precluding the defendant from obtaining
testimony on Topic Nos. 23, 25, 28, and 35-38. (Docket #46 at 1). Specifically
these topics include the following:
Topic No. 23: Plaintiffs’ contentions concerning which of
Plaintiffs’ products are or may be covered by the Patents-inSuit and which of Plaintiffs’ products are not or may not be
covered by the Patents-in-Suit, and all facts and documents
which support such contentions.
Topic No. 25: Plaintiffs' contentions concerning whether
there are secondary considerations that tend to show the
Patents-in-Suit to be non-obvious (for example, long-felt need,
commercial success, copying, etc.), including the entire factual
basis for such contentions and all documents supporting such
contentions.
Topic No. 28: For each of the inventions claimed in the
Patent-in-Suit, the level of one of ordinary skill in the art at the
time of the invention.
Topic No. 35: All facts concerning any contentions that each
Defendant has willfully infringed any of the Patents-in-Suit.
Topic No. 36: All facts concerning Plaintiffs’ contention that
this is an exceptional case pursuant to 35 U.S.C. § 285.
Topic No. 37: All facts concerning Plaintiffs’ contention that
it is entitled to injunctive relief.

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Topic No. 38: All facts concerning any damages sought by
Plaintiffs, including, any basis for obtaining compensatory
damages from each Defendant for the period prior to the filing
of the Complaint.
(Docket #43-3 at 10-11). The plaintiffs object to these topics because the
defendant “is not entitled to discovery of the legal theories and work-product
underlying Plaintiffs contentions.” (Docket 46 at 2). The plaintiffs argue that
the “topics call not for testimony of facts, but as to the positions of the parties
and the legal analysis of which facts are of legal significance.” (Docket #46 at
2). The plaintiffs instead contend that the defendant may obtain the
information requested through carefully crafted contention interrogatories.
(Docket #46 at 4).
2.1

Legal Standards

Under Federal Rule of Civil Procedure 26(c)(1), a party from whom
discovery is sought may move for a protective order; the court may, for good
cause, issue an order to protect party or person from annoyance,
embarrassment, oppression, or undue burden or expense.2 “Good cause
requires a showing that the discovery request is considered likely to oppress
an adversary or might otherwise impose an undue burden.” Forest Prods.
Nw., Inc. v. United States, 453 F.3d 1355, 1361 (Fed. Cir. 2006) (citing Capital
Props., Inc. v. United States, 49 Fed. Cl. 607, 611 (2001)).
Federal Rule of Civil Procedure 30(b)(6) controls a notice or subpoena
directed to an organization. It states:

2

The Court notes that the plaintiffs did not specifically address how the
Rule 30(b)(6) topics fit within the annoyance, embarrassment, oppression, or undue
burden or expense standard for a protective order.

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In its notice or subpoena, a party may name as the deponent a
public or private corporation, a partnership, an association, a
governmental agency, or other entity and must describe with
reasonable particularity the matters for examination. The
named organization must then designate one or more officers,
directors, or managing agents, or designate other persons who
consent to testify on its behalf; and it may set out the matters
on which each person designated will testify. A subpoena must
advise a nonparty organization of its duty to make this
designation. The persons designated must testify about
information known or reasonably available to the organization.
This paragraph (6) does not preclude a deposition by any other
procedure allowed by these rules.
Fed.R.Civ.P. 30(b)(6). Rule 30(b)(6) is a vehicle for streamlining the discovery
process. See Resolution Trust Corp. v. Southern Union Co., Inc., 985 F.2d 196, 197
(5th Cir. 1993).
Courts have split whether to allow parties to use 30(b)(6) depositions
to explore facts underlying legal claims and theories. Compare JPMorgan Chase
Bank v. Liberty Mut. Ins. Co., 209 F.R.D. 361, 362 (S.D.N.Y. 2002) (denying
discovery request seeking “defendants' mental impressions, conclusions,
opinions, and legal theory”), and SEC v. Morelli, 143 F.R.D. 42, 47 (S.D.N.Y.
1992) (asserting that “the proposed Rule 30(b)(6) deposition constitutes an
impermissible attempt by defendant to inquire into the mental processes and
strategies of the SEC”), with EEOC v. Caesars Entm't, Inc., 237 F.R.D. 428,
432–34 (D. Nev. 2006) (denying “defendant's request for a protective order
to limit the scope of Rule 30(b)(6) deposition questioning to preclude inquiry
into the factual bases for defendant's asserted position statements and
affirmative defenses”), and In Re Vitamins Antitrust Lit., 216 F.R.D. 168, 171–74
(D.D.C. 2003) (allowing 30(b)(6) facts and admissions in corporation's
antitrust submission to European Commission, stating: “Bioproducts
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argument that the Rule 30(b)(6) discovery is unnecessary and duplicative is
without merit.”).
2.2

Discussion

The plaintiffs rely on several cases for the proposition that contention
interrogatories are a better vehicle for certain claims and defenses in patent
cases specifically. See McCormick-Morgan, Inc. v. Teledyne Indus., Inc. 134
F.R.D. 275, 287, overruled on other grounds, 765 F. Supp. 611 (N.D. Cal. 1991)
(finding that the bases for contentions do not exist exclusively of relatively
straightforward or evidence…[r]ather, determining what the bases for
contentions are in this environment involves complex judgments about
[principles of intellectual property law]); see also Trs. of Bos. Univ. v. Everlight
Elecs. Co., Nos. 12-CV-11935-PBS, 12-CV-12326-PBS, 12-CV-12330-PBS, 2014
WL 5786492, at *4-5 (D. Mass. Sept. 24, 2014); ViaSat, Inc. v. Space Sys./Loral,
Inc., No. 12-CV-0260-H WVG, 2013 WL 3467413, at *5–7 (S.D. Cal. July 10,
2013); TV Interactive Data Corp. v. Sony Corp., No. 10-475 PJH, 2012 WL
1413368, at *1–3 (N.D. Cal. Apr. 23, 2012). The plaintiffs argue that “‘[p]atent
cases turn peculiarly on a conceptually dense dynamic between physical
objects, words in claims, and principles of law. Understanding that dynamic,
and describing the relationships that serve as the bases for a given parties'
contentions, is something best done by patent lawyers.’” (Docket #46 at 4)
(quoting McCormick, 134 F.R.D. at 287).
In contrast, the defendant argues that, although the topics seek factual
information that could be significant to a legal theory, that does not warrant
a blanket prohibition on these topics. Defendant relies on several cases,
including Avocent Redmond Corp. v. Rose Elecs., No. C06-1711RSL, 2012 WL
4903272, at *3 (W.D. Wash. May 29, 2012)(denying protective order to bar
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30(b)(6) deposition on all facts and circumstances regarding patentee’s willful
infringement claim); Iris Corp. Berhad v. United States, 84 Fed. Cl. 489, 493
(Fed. Cl. 2008) (denying protective order to bar 30(b)(6) deposition regarding
claim construction, reasoning it is appropriate for corporate representatives
of a patent owner to be asked about knowledge of potential prior art and
prosecution of a patent-in-suit); Ecrix Corp. v. Exabyte Corp., 95 F. Supp. 2d
1155, 1158–59 (D. Colo. 2000) (rejecting argument to bar 30(b)(6) testimony
regarding infringement claims because such testimony called for a legal
conclusion or required expert testimony in advance of discovery). Defendant
argues that none of the topics at issue here request attorney work product;
nor is any topic so broadly written that the plaintiffs cannot prepare a
witness to discuss the facts related to it. (Docket #48 at 3).
Here, the Court finds the defendant’s argument to be more persuasive.
The facts within documents protected as work product are not subject to
protection; “[i]t matters not that the [Rule 30(b)(6)] witnesses understanding
was gleaned from [those] documents.” See Sec. Ins. Co. of Hartford v. Trustmark
Ins. Co., 218 F.R.D. 29, 34 (D. Conn. 2003). As the advisory notes to Rule 26
remind us, “‘[m]utual knowledge of all the relevant facts gathered by both
parties is essential to proper litigation.’” Fed.R.Civ.P. 26 advisory committee
notes (1983 Amendments) (citing Hickman v. Taylor, 329 U.S. 495, 507 (1947)).
The defendant does not seek the mental impression of the plaintiffs’ counsel
or experts, but rather it is merely seeking information in the plaintiffs’
possession on which they base their assertions that the defendant has
infringed its patents. See Ecrix Corp., 95 F. Supp. 2d at 1158. While the Court
is mindful that the information sought could potentially be significant to a
protected legal theory, the Court agrees with the defendant that this factor
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does not warrant a blanket prohibition of these topics. See Sec. Ins. Co. of
Hartford, 218 F.R.D. at 34.
Moreover, the plaintiffs’ argument that it is entitled to a protective
order because it can provide all available evidence through contention
interrogatories is unpersuasive. Parties to litigation do not have to accept
their opponent's statement that all relevant evidence has been produced via
a given discovery vehicle—they are entitled to test this assertion in
questioning witnesses during depositions. Iris Corp., 84 Fed. Cl. at 494. This
concept is particularly applicable here, where the defendant asserts that the
reason for the proposed depositions is because the plaintiffs’ have “refused
to provide this information in response to interrogatories.” (See Docket #48
at 2). The Court finds that, rather than issue a blanket protective order,
objections raised and/or instructions not to answer given in response to
specific questions during the depositions will adequately protect plaintiffs’
interests. See Avocent Redmond Corp., 2012 WL 4903272, at *1.
Finally, the Court reiterates that it was the plaintiffs’ burden to
demonstrate good cause for a protective order as prescribed by Federal Rule
of Civil Procedure 26(1). Protective orders are, in fact, an exception to the
general rule that pretrial discovery must occur in the public eye. American
Tel. & Tel. Co. v. Grady, 594 F.2d 594, 596 (7th Cir. 1979); see also Citizens First
Nat’l Bank of Princeton v. Cincinnati Ins. Co., 178 F.3d 943, 945–46 (7th Cir.
1999). The Court finds that the plaintiffs have failed to meet their burden and,
thus, the motion for a protective order will be denied.
Accordingly,
IT IS ORDERED that the defendant’s motion to compel (Docket #42)
be and the same is hereby DENIED;
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IT IS FURTHER ORDERED that the defendant’s motion to restrict
(Docket #41) be and the same is hereby GRANTED. The following
documents shall be restricted to case participants only: (1) Chervon’s Civil
L.R. 7(h) Expedited Non-Dispositive Motion To Compel Discovery (Docket
#46); and (2) Declaration of Christopher R. Liro in Support of Chervon’s Civil
L.R. 7(h) Expedited Non-Dispositive Motion To Compel Discovery, and
associated exhibits A0118, A0141, A0168 and A0190 (Docket #43); and
IT IS FURTHER ORDERED that the plaintiffs’ motion for a
protective order (Docket #46) be and the same is hereby DENIED.
Dated at Milwaukee, Wisconsin, this 16th day of July, 2015.
BY THE COURT:

J.P. Stadtmueller
U.S. District Judge

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