Summary
ordering plaintiffs to provide the "precise date of conception"
Summary of this case from Beckman Coulter, Inc. v. Sysmex Am., Inc.Opinion
Case No. CV 05-1795-FMC (Mcx).
July 8, 2005
ORDER RE DISCOVERY MOTION OF IN-THREE, INC.
On the court's own motion, the court dispenses with oral argument with respect to the motion of defendant In-Three, Inc. ("In-Three") to compel responses to In-Three's interrogatories and to compel production of documents and things, noticed for hearing on July 12, 2005. Local Rule 7-15. The court takes the motion under submission and decides it forthwith.
In-Three's motion to compel is granted in part and denied in part. Individual rulings are as follows:
Issue One — Interrogatory No. 2:
In-Three's motion to compel a further response to this interrogatory is granted. The information sought in this interrogatory includes, inter alia, the precise date of conception of the patent at issue, the date of actual reduction to practice, the date of first public disclosure, and the date of first offer to sell or sale. These facts are "patently relevant."Lamoureux v. Genesis Pharmacy Services, Inc., 226 F.R.D. 154, 160 (D. Conn. 2004). Nor is there any requirement that In-Three identify prior art or make other discovery before the court may order this present discovery. Plaintiffs Imax Corporation ("IMAX") and Three-Dimensional Media Group, Inc. ("3DMG") are ordered to answer the interrogatory without further objections.
Issue Two — Request for Production Nos. 11 and 21:
In-Three's motion to compel is granted. The court recognizes that plaintiff 3DMG now claims that it has produced all responsive documents and that Request Nos. 11 and 21 are moot as to it. However, 3DMG made that assertion in the initial discovery stipulation. (See In-Three's Notice of Motion, etc., filed June 21, 2005, but signed by 3DMG's counsel on June 20, 2005, page 16, lines 9-15, and page 27.) Immediately thereafter, 3DMG produced additional documents on June 20 and June 23, 2005. (Plaintiff's Supplemental Memorandum, etc., filed June 28, 2005, page 2.) Depending on one's point of view, this pattern of conduct may be characterized as a failure timely to conduct a diligent search for documents, an attempt to conduct so-called "rolling discovery," or a diligent attempt to comply with discovery obligations as and when additional responsive documents are discovered. However characterized, 3DMG's multiple and piece-meal discovery responses do not tend to engender trust that 3DMG has produced all responsive documents.
Plaintiffs 3DMG and IMAX are represented by the same counsel. As in most discovery disputes, this court is unable to determine whether the unresponsiveness of 3DMG to normal discovery requests is attributable to 3DMG or to its counsel. This is a long way of saying that IMAX is tarred with the same brush as 3DMG. IMAX claims that it has produced all responsive documents, but IMAX is represented by the same counsel as 3DMG. If the court cannot trust the responses of 3DMG, how can it trust the responses of IMAX?
For the reasons stated above, plaintiffs IMAX and 3DMG are each ordered to make a further response and to produce all unproduced documents responsive to Request Nos. 11 and 21. If either plaintiff asserts that is has already produced all responsive documents, it may so state. As required by law, any such document response by counsel shall be subject to the requirements of Rule 11(a) and (b), Federal Rules of Civil Procedure.
Issue 3 — Interrogatory No. 1:
In-Three's motion to compel a further response to this interrogatory is denied. On or about June 10, 2005, plaintiffs IMAX and 3DMG served first amended responses to this interrogatory, accompanied by a claim chart. The sufficiency of the First Amended Responses and the claim chart is not the subject of the present discovery stipulation and has not been briefed adequately. The court declines to rule upon the sufficiency of the discovery claim chart without full briefing. Issue 4 — Request for Production Nos. 2 and 17:
The court declines to rule at this time on the motion to compel the plaintiffs to produce a complete, operational version of the plaintiff's alleged 2D-to-3D conversion software.
Plaintiffs IMAX and 3DMG apparently each claim that In-Three did not request production of the software and that, in any event, each is precluded from producing the software because of licensing agreements. The plaintiffs' first contention is wrong. The definition of "Document" in the request at issue encompasses "computer data and programs." (Declaration of Craig W. Clark, etc., filed June 28, 2005, Exh. A., page 5, line 5.) The two requests thus are sufficient to encompass a demand to produce a complete operational version of the software.
IMAX and 3DMG claim that unspecified and unproduced license agreements prohibit each from delivering the software to In-Three. That claim is based only upon a naked assertion of counsel unsupported by documents. (Declaration of Noel S. Cohen, filed June 21, 2005, page iii, paragraph 11.)
IMAX and 3DMG are ordered specifically to identify each program and each version of that program at issue and to produce the relevant license attributable to each program and version of the program. At that point, In-Three will be in a position to evaluate the licenses and, perhaps, to negotiate with the licensors for special licenses applicable to this litigation only. In the event that In-Three is unable to resolve this issue after appropriate examination of the licenses and negotiation with the licensors, In-Three may renew this motion to compel. Any such renewed motion to compel in which In-Three asserts that the court has the power to order delivery of a program to In-Three without a license or payment of a license fee by In-Three shall include notice of the motion to the affected licensors.
Plaintiffs IMAX and 3DMG are each ordered on or before July 22, 2005 to serve a verified supplemental interrogatory response and supplemental responses to the requests for production of documents and things discussed in this order and to produce all responsive and previously unproduced documents, including the licenses discussed in Issue 4, above.
IT IS SO ORDERED.