Milwaukee Electric Tool Corporation et al v. Snap-On Incorporated

Filing 197

ORDER signed by Judge J.P. Stadtmueller on 7/24/2017 GRANTING in part and DENYING in part 156 Defendant's Motion to Compel. Plaintiffs to SUPPLEMENT response to Common Interrogatory No. 2 within 7 days. 155 , 173 and 192 Parties' Motions for Leave to Restrict Documents GRANTED. See Order. (cc: all counsel) (jm)

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-1296-JPS

Plaintiffs,
v.
SNAP-ON INCORPORATED,

ORDER

Defendant.
Defendant Snap-On Incorporated (“Snap-On”) filed a motion to
compel discovery responses on June 2, 2017. (Docket #156). Snap-On
complains that Plaintiffs have not adequately responded to interrogatories
concerning dates of conception and reduction to practice, marking of
products, and identifying commercial embodiments of the patents-in-suit.
For the reasons stated below, the motion will be granted in part and
denied in part.
1.

STANDARD OF REVIEW
District courts have broad discretion in deciding matters relating to

discovery. Packman v. Chicago Tribune Co., 267 F.3d 628, 646–47 (7th Cir.
2001); Rennie v. Dalton, 3 F.3d 1100, 1110 (7th Cir. 1993). 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
and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). The
information sought need not itself be admissible to be discoverable. Id. In

considering matters of proportionality, the Rule directs courts to consider
“the importance of the issues at stake in the action, the amount in
controversy, the parties’ relative access to relevant information, the
parties’ resources, the importance of the discovery in resolving the issues,
and whether the burden or expense of the proposed discovery outweighs
its likely benefit.” Id. While these proportionality concerns have always
been a part of the Rule, they now enjoy pride of place after the 2015 Rule
amendments. See Fed. R. Civ. P. 26 advisory committee notes, 2015
Amendment; Elliot v. Superior Pool Prods., LLC, No. 15-cv-1126, 2016 WL
29243, at *2 (C.D. Ill. Jan. 4, 2016).
2.

DISCUSSION
The Court will address the interrogatories at issue here in turn. The

Court will consider only the parties’ substantive disputes relating to these
discovery requests. Despite Plaintiffs’ contention that the parties did not
meet and confer on these matters as required by the federal and local
rules, see Fed. R. Civ. P. 37(a)(1); Civ. L. R. 37, the evidence presented
satisfies the Court that sufficient conciliation efforts were made, except to
the extent Snap-On concedes that certain topics were not covered, as
explained further below.
2.1

Priority Date

In Common Interrogatory No. 2, Snap-On requested that Plaintiffs
identify, for each claim in each patent-in-suit, “the earliest priority date to
which you contend that such claim is entitled and describe with
particularity all factual and legal bases for each such claimed priority
date,. . .and []if you intend to rely on a conception date[,] an identification

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and description in detail of all facts and circumstances relating to the
asserted claim’s conception, diligence, and reduction to practice.” (Docket
#158-1 at 3). In response, Plaintiffs asserted a priority date (the date of
reduction to practice) of “at least as December 12, 2002,” and a conception
date of “at least as early as November 21, 2002.” Id. at 7.
The parties’ dispute focuses on the qualifying language in
Plaintiffs’ response. Snap-On seeks to hold Plaintiffs to particular dates for
these events, claiming that merely proposing the latest possible date is
insufficient. Thus, Snap-On asks that the Court order Plaintiffs to delete
the qualifying language or identify the earliest dates on which they
contend that these events occurred.
Plaintiffs assert that their qualified responses are adequate at this
time. First, because of the gradual nature of the development process,
Plaintiffs complain that they cannot in good faith designate a single date
for these events. Second, Plaintiffs argue that Snap-On has not identified
any potential prior art references with dates of conception or reduction to
practice earlier than the dates Plaintiffs have presently identified. In
Plaintiffs’ view, this makes the need to identify a precise date
unnecessary, as there is no competing prior art that would make an earlier
date relevant.
The Court finds Snap-On’s request to be reasonable. Snap-On has
in fact offered evidence showing at least colorable claims of prior art that
precede the dates Plaintiffs have identified. See (Docket #193 at 4–6). This
development renders it important for Snap-On to know whether Plaintiffs
will claim dates that are any earlier than the current dates. See Invacare

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Corp. v. Sunrise Med. Holdings, Inc., No. 04-CV-1439, 2005 WL 1750271, at
*3 (N.D. Ohio Jan. 21, 2005) (plaintiff’s large date-range for conception and
reduction to practice “entirely leave[s] open the critical time period” in
light of prior-art assertions). Plaintiffs have conceded as much. (Docket
#174 at 13–14) (“Nothing more is necessary until or unless Snap-on makes
the issue relevant by identifying one or more prior art references with
dates near in time to the asserted latest date [of] conception.”).
An estimate of such dates will do when a party cannot in good faith
pick a precise date. See Layne Christensen Co. v. Purolite Co., Civil Action
No. 09–2381–JWL–GLR, 2011 WL 231400, at *3 (D. Kan. Jan. 24, 2011);
Phillip M. Adams & Assoc., L.L.C. v. Fujitsu Ltd., No. 1:05–CV–64 TS, 2010
WL 1330002, at *2 (D. Utah Mar. 29, 2010). But it is not enough at this late
stage for Plaintiffs to produce a pile of documents and claim that they
“could be interpreted as evidence of conception well prior to the latest
possible date identified.” (Docket #174 at 12). Plaintiffs offer little in the
way of concrete reasons why they cannot form a more precise belief about
the relevant dates, and Snap-On should not be left guessing until the
briefs on such matters are filed. See In re Papst Licensing GMBH & Co. KG
Litig., 252 F.R.D. 7, 17 (D.D.C. 2008) (rejecting plaintiff’s attempt to avoid
taking a stand on date of conception despite evidence in its possession
enabling it to do so).
Nor is the Court convinced that Plaintiffs’ reference to documents
pursuant to Rule 33(d) is sufficient. That Rule provides that
if the answer to an interrogatory may be determined by
examining, auditing, compiling, abstracting, or summarizing
a party’s business records (including electronically stored
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information), and if the burden of deriving or ascertaining the
answer will be substantially the same for either party, the
responding party may answer by:
(1) specifying the records that must be reviewed, in
sufficient detail to enable the interrogating party to locate
and identify them as readily as the responding party could;
and
(2) giving the interrogating party a reasonable opportunity
to examine and audit the records and to make copies,
compilations, abstracts, or summaries.
Fed. R. Civ. P. 33(d) (emphasis added). Plaintiffs posit that the dates of
conception and reduction to practice can be gleaned from the documents
they produced in response to this interrogatory. Snap-On rejoins that
those documents do not clearly give those answers and that Plaintiffs are
in a better position to essentially produce what amount to their
contentions as to when these things occurred.
The

Court

again

agrees

with

Snap-On.

Answering

this

interrogatory with actual or approximate dates is simple. Arriving at what
those dates are is much more complex, inviting Plaintiffs’ assessment of
the legal standards governing conception and reduction to practice. See
Boston Sci. Corp. v. Micrus Corp., No. 04-4072, 2007 WL 174475, *1 (N.D.
Cal. Jan. 22, 2007) (noting that interrogatory seeking conception date is in
substance

a

contention

interrogatory).

The

interrogatory

is

not

objectionable because it asks for these legal conclusions, see Fed. R. Civ. P.
33(a)(2), contrary to the conclusion in Kimberly-Clark Corp. v. Tyco
Healthcare Retail Group, No. 05–C–985, 2007 WL 218721, at *3 (E.D. Wis.

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Jan. 26, 2007), and Snap-On cannot be expected to divine Plaintiffs’
position from the documents produced.
Accordingly, the Court directs Plaintiffs to supplement their
response to this interrogatory within seven (7) days of the date of this
Order. Plaintiffs must either remove the “at least as early as” language
from their existing response or identify the earliest dates they intend to
assert for conception and reduction to practice of the claimed invention. If
Plaintiffs in good faith believe that they cannot designate specific dates for
these events, they shall nevertheless state the approximate date or dates
they intend to claim. See Boston, 2007 WL 174475, *1.
2.2

Marking

In Interrogatory No. 5, Snap-On requested information regarding
how and when Plaintiffs and their licensees marked products embodying
the patents-in-suit with the applicable patent numbers. Marking is a
question related to pre-suit damages under 35 U.S.C. § 287. Pursuant to
that provision, a plaintiff can recover pre-suit damages only when a
licensee selling the product consistently and continuously marks it with
the applicable patent. Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24
F.3d 178, 185 (Fed. Cir. 1994).
In a pending, related patent case, the Court recently adjudicated a
dispute concerning a nearly identical interrogatory. Milwaukee Elec. Tool v.
Chervon N.A. Inc., Case No. 14–CV–1289–JPS, 2017 WL 2445845, at *6 (E.D.
Wis. June 6, 2017). In that case, the defendant complained that Plaintiffs
did not describe with specificity their licensees’ efforts to mark the
relevant products. Id. Plaintiffs conceded that no marking was done for

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products embodying the ‘173 and ‘510 patents, but argued that marking
was done for the ‘290 patent as explained in a September 2015 declaration
by their counsel, Elizabeth Miller (“Miller”). Id. She averred that Plaintiffs’
licensees were required by contract to mark relevant products with the
‘290 patent. Id. The defendant maintained that the Miller declaration was
inadequate, since it only showed that Plaintiffs’ licensees were obligated
under their licensing agreements to mark the products, not whether,
when, and how the products were actually marked. Id.
The Court found that although Miller never actually described how
and when products were marked, only that licensees were supposed to be
marking and that Plaintiffs monitored their compliance, there was no
reason to compel a further response to the interrogatory. Id. The Court
noted that “Plaintiffs are well aware of their burden to prove that marking
occurred as required by Section 287; if they believe the Miller declaration
is sufficient to meet their burden, that is their choice.” Id.
Snap-On’s motion with respect to this interrogatory will be denied
for similar reasons. Whatever gaps may exist in Miller’s declaration,
Plaintiffs may elect to stand on the response they have given.
Furthermore, as in the related case, here Plaintiffs have produced
additional documents beyond the Miller declaration which are relevant to
the question of marking, and Snap-On does not adequately explain why
these documents, considered alongside the declaration, are insufficient. Id.
(denying motion to compel because “[the defendant] did not explain
whether the numerous documents referenced in this response fill in this
possible gap left by Miller’s declaration”) (internal citation omitted).

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Snap-On claims that its interrogatory is “a little different” from the
one the Court recently addressed. (Docket #193 at 10). Snap-On argues
that it needs to know not only on what grounds Plaintiffs claim that
marking was occurring, but also any information Plaintiffs have showing
that they knew that their licensees were not marking products. But this
question, too, can be answered by Plaintiffs’ existing response. If Snap-On
believes that the Miller declaration and other documents Plaintiffs
produced are insufficient to establish that marking occurred, or that they
establish that Plaintiffs knew that marking was not occurring, these are
inferences Snap-On may argue from the facts.
Further, to the extent Snap-On desires Plaintiffs to supplement
their response by stating that “this is all we have on the matter,” see id. at
11, this too is adequately covered elsewhere. Federal Rule of Civil
Procedure 26(e) requires a party who answers an interrogatory to
supplement its response in a timely manner with new or corrective
information. Fed. R. Civ. P. 26(e)(1)(A). This Rule ensures that parties do
not play hide-the-ball with relevant facts. It also conforms with the
paradigm of the Federal Rules generally, which is to avoid trial by
ambush by facilitating early and ongoing factual disclosure to the fullest
extent practicable. Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd.,
No. 95 C 0673, 1996 WL 680243, at *8 (N.D. Ill. Nov. 21, 1996); Macaulay v.
Anas, 321 F.3d 45, 50 (1st Cir. 2003). If Plaintiffs make strategically late
supplementation of previously undisclosed facts or documents related to
marking, Snap-On may have a claim that such facts and documents
should not be considered by the Court or admitted at trial. See Holiday Inn,

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Inc. v. Robertshaw Controls Co., 560 F.2d 856, 858 (7th Cir. 1977). Because the
Rules already require parties to disclose all relevant material and
supplement their disclosures as necessary, it is duplicative and
unnecessary to require Plaintiffs to affirmatively state that they have
nothing more to disclose.
2.3

Commercial Embodiments

Finally, Snap-On raises Common Interrogatory No. 5, which asks
Plaintiffs to identify “any and all Alleged Embodying Products(s) (by
model designation, product name, trademark, logo, part number, and/or
other designations), explaining via claim chart or equivalent precisely
how the Alleged Embodying Product(s) meets each limitation of each
claim of the Patents-in-Suit.” (Docket #159-5 at 16). Plaintiffs’ response
consists of several lists of its products and its sales data. Snap-On argues
that such documents are not responsive as they are not consistent with
each other and therefore do not represent a definitive list of the universe
of claimed embodiments.1
Plaintiffs respond that the product lists and sales data has equipped
Snap-On with all the information it requires. (Docket #174 at 16). Snap-On
maintains, however, that it is unsure as to whether the products listed
In its motion, Snap-On also argued that these documents are not fully
responsive as they do not tie each product to the limitations of the claims of the
patents-in-suit. In this regard, Snap-On believes that there are holes in Plaintiffs’
evidence about whether certain products—especially early products—qualify as
commercial embodiments, and it is therefore entitled to know not only what
products are at issue, but why Plaintiffs believe that they qualify as
embodiments. However, Snap-On admits that its meet-and-confer efforts did not
adequately cover this issue, and its has withdrawn the motion to compel on this
point. (Docket #193 at 13–14).
1

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represent all the products Plaintiffs might claim as embodiments. See
(Docket #193 at 13 (“Snap-on has no indication which of the four lists
produced by Plaintiffs to date actually identifies those products Plaintiffs
intend to call commercial embodiments or whether the listed products are
the only commercial embodiments upon which Plaintiffs intend to rely.”).
It also believes that some of the products listed cannot possibly be claimed
as embodiments, since they post-date the relevant timeframes or are
unrelated to the patents-in-suit. See id.
This is a reprise of the same fears that motivated Snap-On’s request
as to the marking interrogatory. Here again, Snap-on’s demand is
duplicative and unnecessary. The Federal Rules require Plaintiffs offer
fulsome responses to discovery requests and to timely supplement their
responses if needed. See Fed. R. Civ. P. 33(b); id. 26(e). Plaintiffs need not
affirmatively state that they have no more products to identify, since their
response, against the backdrop of Rule 26(e), says this already. And, of
course, both sides and their counsel are well aware of the potential
repercussions for untimely supplementation.
Furthermore, if Snap-On believes that Plaintiffs should not have
included certain items on their lists, this is a substantive dispute not fit for
resolution on a motion to compel. Plaintiffs’ answer is what it is, and the
parties can argue elsewhere the legal merits of the contentions underlying
their answer. Put simply, a belief that a discovery response does not
support a legal contention does not render the response itself incomplete.
See Invacare, 2005 WL 1750271, at *4. As a result, there is nothing for the
Court to compel.

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3.

CONCLUSION
For the reasons stated above, the Court finds that Snap-On’s

motion to compel must largely be denied. However, Plaintiffs shall
supplement their response to Common Interrogatory No. 2 as explained
above within seven (7) days of this Order.
Accordingly,
IT IS ORDERED that Defendant Snap-On Incorporated’s motion
to compel (Docket #156) be and the same is hereby GRANTED in part
and DENIED in part as stated herein;
IT IS FURTHER ORDERED that Plaintiffs shall supplement their
response to Common Interrogatory No. 2, consistent with this Order, no
later than seven (7) days from the date of this Order; and
IT IS FURTHER ORDERED that the parties’ motions for leave to
restrict documents filed in connection with the motion to compel (Docket
#155, #173, and #192) be and the same are hereby GRANTED.
Dated at Milwaukee, Wisconsin, this 24th day of July, 2017.
BY THE COURT:

J.P. Stadtmueller
U.S. District Judge

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