The True Cost of Discovery Disputes

"The parties have done their level best to avoid and undermine the purposes of the meet and confer requirements," was Judge Lasnik's opening sentence for a recent ruling granting in-part a motion to compel discovery filed by Defendants Industrial Ventilation, Inc. This is a case for patent infringement brought by Pace International who owns U.S. Patent No. 6,723,364 ("Fog Treatment Method Using a Liquid Composition For Treating Fruits And Vegetebles")

While Defendants were granted some of the relief requested, their approach was harshly criticized in the order.

"In the circumstances presented here, compliance with the Rules would have involved face-to-face or telephonic communications regarding the particular deficiencies defendants perceived in plaintiffs’ discovery responses. Instead, defendants wrote two letters identifying deficiencies, demanding supplementation, and stating that if plaintiffs “would like to discuss this matter further,” they should contact defense counsel. In the midst of a separate dispute regarding defendants’ expert report, defendants demanded that plaintiffs “provide supplementation of discovery or renewed objections by the end of the day [October 9, 2009]” or defendants would proceed with a motion to compel. Decl. of Brandon H. Pace (Dkt. # 41), Ex. 13. Plaintiffs correctly pointed out that they had already agreed to supplement their responses, that the parties were not at an impasse, and that a motion to compel in that situation was not likely to succeed. Decl. of Brandon H. Pace (Dkt. # 41), Ex. 14. Plaintiffs ultimately failed to produce any additional documents or make any further response to defendants’ discovery requests by the end of the day on October 14, 2009. Defendants filed this motion on October 15th.

There is no evidence that the parties had substantive face-to-face discussions regarding any of the issues raised in defendants’ motion. As is clear from the memoranda, the positions of the parties were unknown when defendants filed their motion, a sure sign that the requirements of Rule 37(a) have not been satisfied. 

Defendants' were not alone in their receipt of criticism


The fault is not solely on defendants’ side, however. After indicating a willingness to reevaluate their objections and supplement their responses, plaintiffs failed to act, leaving defendants in the untenable position of having to restart the meet and confer process or file a premature motion. Because both parties are responsible for the failure to comply with the meet and confer requirements of Rule 37(a), the Court will address the parties arguments with the warning that future failures may result in sanctions under General Rule 3."


This is an unfortunate reminder how discovery disputes can undermine both litigants' credibility with the presiding judge.  Many other districts have magistrate judges handle discovery disputes.  In this district, by design, the presiding judge will hear discovery disputes.  Built into this system is a strong incentive to avoid discovery disputes at all cost, for it is rare indeed that one party will emerge from the dispute untarnished by the process.

Defendant Not "Entitled" to Discovery on Claim For Section 285 Fees

In a case where the underlying claims of infringement were dismissed voluntarily under Rule 41, Judge Jones recently ordered that a defendant was not entitled to take discovery in order to support a theory that the case was "exceptional" under 35 USC Section 285.

From Judge Jones' order:

G-J appears to concede that it cannot substantiate its § 285 attorney fee request
without additional discovery. G-J will apparently base its § 285 request solely on its
allegations of inequitable conduct. See Dkt. # 46 at 7 (stating that G-J “is willing to
forego, without prejudice, its declaratory judgment claims of noninfringement and
invalidity, and to focus discovery and proceedings on the inequitable conduct claim”);
Dkt. # 55 at 7 (“G-J has already agreed to shorten and simplify this case by focusing
discovery on its inequitable conduct claim.”). G-J complains, however, that it “has not
been given the chance to substantiate its claims,” and that the court should permit it to
take discovery for that purpose. Dkt. # 46 at 9.


The court finds no merit in G-J’s contention that the mere fact that it has
counterclaims pending entitles it to discovery. The court has broad discretion to control
the scope of discovery. See Childress v. Darby Lumber, Inc., 357 F.3d 1000, 1009 (9th
Cir. 2004); see also Fed. R. Civ. P. 26(b)(1). The court’s April 23 order established that
the scope of the declaratory judgment counterclaims was no more extensive than the
scope of G-J’s request for § 285 attorney fees. The court will limit discovery in
accordance with the scope of the counterclaims.

***


[T]he court noted that it could have dismissed G-J’s counterclaims, retaining jurisdiction solely “to enter declaratory relief as appropriate in resolving G-J’s request under § 285.” Id. at 12 n.5.


judgejonesorderon285.pdf

Dispute Over Privilege Log Resolved By Joint CR 37(a)(2)(B) Submission

Recently, I posted about this case brought by Wacom Technology Corporation against Hanvon Corporation in a dispute involving electronic pen and tablet technology. Judge Bryan recently resolved a discovery dispute between the parties over the sufficiency of Wacom's privilege log. The decision is interesting for at least two reasons. First, it is an excellent example of how parties can resolve their discovery disputes amicably and without resort to expensive motions practice. In 2002, this district enacted revisions to Local Rule 37, including the addition of language to Rule 37(a)(2)(B) permitting a joint submission from the parties and expedited handling of the dispute. The text of that rule can be found by following this link. In this case, Wacom and Hanvon made their joint submission, and the next day, they had a decision from Judge Bryan. The whole process takes about week. The second reason this order is interesting is because it provides some background for those practicing in Judge Bryan's court as to how he may resolve a similar dispute in the future. I'm often frustrated at the lack of available case law covering discovery matters, especially cases from particular courts and particular Judges.
WacomOrderonRule37Submission.pdf