RAH Color Technologies LLC v. Quad Graphics Inc

Filing 103

ORDER signed by Judge J.P. Stadtmueller on 7/9/2018: GRANTING in part and DENYING in part 95 Plaintiff's Motion to Compel and GRANTING 94 , 96 and 99 Parties' Motions to Restrict Documents. See Order for further details. (cc: all counsel) (jm)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
RAH COLOR TECHNOLOGIES LLC,
Plaintiff,
v.
QUAD GRAPHICS,

Case No. 18-CV-87-JPS-JPS

ORDER
Defendant.

1.

INTRODUCTION
This is an action for patent infringement. Plaintiff holds patents on

various color printing technologies and claims that Defendant is using
those technologies in its printing business without a license. (Docket #89).
Plaintiff filed a motion to compel certain discovery responses on April 16,
2018. (Docket #95). The motion is now fully briefed. (Response, Docket #97;
Reply, Docket #100). For the reasons explained below, the motion will be
granted in part and denied in part.1
2.

ANALYSIS
Plaintiff’s motion seeks four things:
1. As required by Rule 33(b)(5), verifications of
[Defendant]’s interrogatory responses 7-16;
2. As required by Rule 33, responses to interrogatories
10-13 that provide the requested facts;
3. As required by Rule 34(b)(2)(C) and 34([b])(2)([B]),
unequivocal, specific responses to [Plaintiff’s] document

On June 21, 2018, Plaintiff filed a request for oral argument on its motion.
(Docket #102). The Court rarely entertains oral argument on civil motions, and
then only at its own prerogative, not that of the parties. The request is denied.
1

requests, or an Order that [Defendant] has waived its
objections to the document requests 4-17; and
4. Fact discovery about the full scope of [Defendant]’s
accused products.
(Docket #95-1 at 3). The Court will address each issue separately below.
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).
2.1

Verification

Federal Rule of Civil Procedure (“FRCP”) 33(b)(5) states that a
person answering interrogatories must sign them. Fed. R. Civ. P. 33(b)(5).
Plaintiff says that Defendant has repeatedly failed to provide verification
for its interrogatory responses, claiming that the verification would be
provided “in due course,” but never actually doing so. Defendant counters
that it has now provided the desired verification, rendering the issue moot.
Defendant further contends that the lack of verification should not have
impeded Plaintiff’s discovery efforts. Plaintiff rejoins that the new
verifications are equivocal and do not actually comply with FRCP 33.
Defendant believes, without justification, that it can delay in
providing verification of discovery responses based on the time and effort
it would take to obtain such verification. This position is unsupported by
FRCP 33. Plaintiff’s motion must, therefore, be granted on this point.
Defendant must immediately provide rule-compliant verifications for the
subject interrogatories. Plaintiff further requests that future discovery
responses be accompanied by verifications. In light of Defendant’s past
noncompliance with the verification rule, the Court will order this as well.

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Plaintiff also seeks its fees and costs on this portion of its motion.
There are two problems with this request. First, Plaintiff raised the fee issue
for the first time in its reply brief. Thorncreek Apartments III, LLC v. Mick, 886
F.3d 626, 636 (7th Cir. 2018) (“[A]rguments raised for the first time in a reply
brief are waived.”) (quotation omitted). Second, Plaintiff cites the wrong
rule. Plaintiff notes that if a motion to compel is granted, an award of fees
and costs is mandatory (with some exceptions). Fed. R. Civ. P. 37(a)(5)(A).
However, if a motion is not granted in its entirety, as is the case here, the
Court is afforded discretion to award the movant its expenses. Id.
37(a)(5)(C). The Court will not order the payment of fees and costs here for
both of the above-stated reasons. Further, Plaintiff did not ask for a specific
amount or provide any evidence of its fees or costs associated with the
verification issue.
2.2

Interrogatory Responses
2.2.1 Interrogatory 10

Interrogatory 10 asks for information about which of Defendant’s
printing devices use one or more of the “Accused Products”— a defined list
of twelve color management products made by EFI, Kodak, Heidelberg,
and Adobe. Defendant says that Plaintiff’s complaints about this
interrogatory response were not aired out in any meet-and-confer calls,
letters, or e-mails as required by Civil Local Rule 37. Plaintiff’s response is
that Defendant “is incorrect,” without explaining why that is so or citing
any evidence. (Docket #100 at 5 n.1). The Court will not hunt through the
record to find support for Plaintiff’s assertion. The motion to compel is
denied on this point.

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2.2.2 Interrogatory 11
This interrogatory seeks a list of information about the color
management software and hardware used in Defendant’s printing devices.
The particular information sought is described in six detailed subparts. As
with Interrogatory 10, Plaintiff connected this inquiry to the “Accused
Products.” Defendant offered a number of general objections as to
vagueness and overbreadth. Defendant then responded to the question and
its many subparts, categorizing its answers by manufacturer rather than
each specific product.
Plaintiff’s first concern is that Defendant did not answer the
interrogatory in the manner it was asked. Defendant responds that it
categorized by manufacturer because it “does not prefer to think of the
accused products in the same categories” as Plaintiff. (Docket #97 at 20).
Defendant did not, however, object to Plaintiff’s definition of Accused
Products. Defendant must answer the question as it was presented—a
separate response as to each product.
More important, though, is Plaintiff’s primary complaint: that
Defendant’s answer does not provide a meticulous factual response for
each subpart of the interrogatory. Defendant suggests that its answer is
adequate for two reasons. First, the answer is subject to the general
objections noted above. It is not clear the precise effect of Defendant’s
general objections on the scope of its answer as a whole. Plaintiff seems to
question the viability of the general objections, but does so in a conclusory
fashion and only in its reply. (Docket #100 at 7). Plaintiff’s failure to
properly challenge those objections means that they remain valid.
Second, Defendant says that it provided as much information as its
investigation has currently uncovered, and that it will supplement the
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answer as the investigation continues. Plaintiff does not argue that
Defendant’s investigation has been inadequate, much less provide evidence
to support that position. Thus, on the current state of the record, the Court
is unable to grant Plaintiff any relief on this point. It is possible that since
the filing of Plaintiff’s motion, Defendant’s investigation has progressed to
the point where much more complete answers could be provided. The
Court trusts that the parties will continue conferring on this matter and
return for its assistance only if those efforts are again stalemated.
2.2.3 Interrogatories 12 and 13
Both of these interrogatories request specific narrative responses.
The first asks how Defendant “ensures that colors printed . . . are consistent,
and match client color requirements” and the second inquires how different
printing presses are “centrally managed.” (Docket #95-5 at 13–14). As with
Interrogatory 11, Defendant interposed general objections. Again, Plaintiff
faults Defendant for failing to defend those objections but without
meaningfully attacking them in the first place. Thus, as before, the Court is
unable to enter an order compelling any action at this time. The Court notes,
however, that Defendant’s responses are as bare-bones as possible even
accounting for the objections. With the progression of discovery in this
matter thus far, Defendant should certainly be equipped to provide much
more thorough responses.
2.3

Request for Production Responses

Plaintiff initially complained that Defendant was withholding
documents on the basis of improper boilerplate objections. Defendant’s
response brief, and Plaintiff’s reply, seem to suggest that this is no longer
an issue. Defendant claims that it supplemented its responses and stated
that it would produce additional documents by May 15, 2018. Plaintiff’s
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reply contends that the volume of this supplemental production is rather
limited and that no privilege log (which was promised) has yet been
provided. The Court cannot grant a motion based on a new position taken
in a reply. Nevertheless, the Court is unable to find substantial justification
for Defendant’s delayed document production. Thus, the Court encourages
Defendant to immediately complete whatever document production is
necessary and to produce a privilege log. If Plaintiff must file a new motion
to compel on this issue, and Defendant still fails to rationalize its lagging
compliance with the document requests, the Court may consider an
appropriate sanction.
2.4

Discovery on Full Scope of Accused Products

Plaintiff wants Defendant to answer all of its discovery requests
based on the definition of “Accused Products” found in its amended
complaint. That definition identifies certain accused products by name and
includes other products used by Defendant which have “the same or
equivalent functionality” as those products specifically accused. See, e.g.,
(Docket #89 at 11, 21, 32, 37). Plaintiff contends that it identified the
expressly accused products through an investigation of publicly available
information. The remainder of the potentially infringing products are
known only to Defendant, and so Plaintiff asks that Defendant identify
them.
Defendant has two primary concerns with this approach. First, some
of Plaintiff’s discovery requests include a definition of “Accused Products”
without using the “same or equivalent functionality” phrase. See (Docket
#98-1 at 3; Docket #98-2 at 4). Defendant says that it answered those
inquiries in accordance with the definition appended to them. Second, even
absent the narrowed definition, Defendant claims that the “same or
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equivalent functionality” phrase is too vague to be answered. Defendant
does not know precisely what Plaintiff would consider the “same or
equivalent functionality” for any particular accused product. Further, it is
Plaintiff’s burden to appropriately define the accused products in its
pleading. Defendant argues that Plaintiff’s approach violates federal
pleading rules, particularly as applied to patent infringement defendants.
The Court concludes that a middle path between the parties’
positions is appropriate. As it stands, at least some of Plaintiff’s discovery
requests are limited to the narrower “Accused Product” definition.
Defendant is correct that this definition controls for purposes of answering
those requests. As to any requests that rely on the amended complaint’s
definition, Plaintiff’s position is more persuasive. The scope of discovery is
bounded by the pleadings. If Defendant had concerns with Plaintiff’s
amended complaint, it should have filed a motion to dismiss. It did not. See
Terry v. Cnty. of Milwaukee, Case No. 17-CV-1112-JPS, 2018 WL 1411234, at
*2 (E.D. Wis. Mar. 21, 2018).
Defendant’s responses to requests using the pleadings definition
must, therefore, include information about products with the “same or
equivalent functionality.” Of course, this may not be as helpful as Plaintiff
believes. Defendant is free to answer the requests in accordance with its
obligations under the rules of ethics and procedure, as well as the
descriptions of the products in the amended complaint. Its interpretation of
those guidelines may be different than Plaintiff’s, but affords Plaintiff no
basis for complaint. The “same or equivalent functionality” is indeed an
amorphous concept, and Defendant need not attempt to enter Plaintiff’s
mind to find a better expression of it.

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3.

CONCLUSION
Unfortunately, the Court is dismayed to find that the majority of the

parties’ arguments are mere sandbox spats, which have nonetheless
generated substantial briefing, occupied the Court’s time, and expended
client resources. Thus, the Court is obliged to remind counsel for the parties
that, as officers of the Court, they must conduct themselves in a professional
manner at all times as the case continues to ensure that this matter is
appropriately prepared for trial. Additionally, prior to the filing of any
further discovery motions, counsel for the parties must confer in much
greater detail and redouble their efforts to ensure that they have truly
reached an impasse on a particular issue and that prompt supplementation
will not suffice to assuage any concerns. For now, Plaintiff’s motion will be
granted in part and denied in part as described above. The Court will also
grant the parties’ motions to seal their filings in connection with the motion
to compel. (Docket #94, #96, and #99).
Accordingly,
IT IS ORDERED that Plaintiff’s motion to compel (Docket #95) be
and the same is hereby GRANTED in part and DENIED in part in
accordance with the terms of this Order; and
IT IS FURTHER ORDERED that the parties’ motions to seal (Docket
#94, #96, and #99) be and the same are hereby GRANTED.
Dated at Milwaukee, Wisconsin, this 9th day of July, 2018.
BY THE COURT:

____________________________________
J. P. Stadtmueller
U.S. District Judge

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