Opinion
Civil Action No. 3:03-CV-2787-D.
October 8, 2004
MEMORANDUM OPINION AND ORDER
Plaintiff InternetAd Systems, LLC's ("InternetAd's") objections to the magistrate judge's order denying its motion to compel defendants to respond to a contention interrogatory inquiring about the grounds for their patent invalidity defense and counterclaim present the question whether the magistrate judge abused his discretion. Concluding that he did not, the order is AFFIRMED.
I
InternetAd alleges that defendants ESPN, Inc. ("ESPN"), Travelocity.com, Inc., and The New York Times Company ("New York Times") have infringed, or have induced or contributed to the infringement of, one or more claims of four patents to which it holds licenses. Defendants assert patent invalidity as a defense and counterclaim ("invalidity defense"). InternetAd served an interrogatory that requested, inter alia, that defendants explain the factual basis for their invalidity defense and identify the prior art on which they rely. Defendants responded by identifying the statutes on which they rely and representing that they would produce prior art references. They also interposed several objections. Dissatisfied with the response, InternetAd moved to compel discovery responses requesting, inter alia, that the court require defendants to supplement their responses. It sought to require defendants to explain the specifics behind their invalidity defense. The court referred the motion to the magistrate judge, who denied the motion. InternetAd objects to the magistrate judge's order.
InternetAd filed its objections on July 6, 2004, addressing two issues. Because InternetAd sought clarification of the magistrate judge's order, the court on July 7, 2004 gave it additional time to renew its objections after the magistrate judge ruled on the clarification request. The magistrate judge issued a clarification order on July 20, 2004, and on August 2, 2004 InternetAd renewed its objections in part.
II
The court must first decide the applicable standard of review. InternetAd contends that it is clearly erroneous not to require defendants to answer a contention interrogatory regarding the invalidity defense. The court concludes, however, that the correct standard of review is abuse of discretion.A
The standard of review for a decision of a magistrate judge in a nondispositive matter is governed by Fed.R.Civ.P. 72(a), which provides that the court "shall modify or set aside any portion of the magistrate judge's order found to be clearly erroneous or contrary to law." Id. "`The `clearly erroneous' standard applies to the factual components of the magistrate judge's decision.'" Lahr v. Fulbright Jaworski, L.L.P., 164 F.R.D. 204, 208 (N.D. Tex. 1996) (Fitzwater, J.) (quoting Smith v. Smith, 154 F.R.D. 661, 665 (N.D. Tex. 1994) (Fitzwater, J.)). "`The district court may not disturb a factual finding of the magistrate judge unless, although there is evidence to support it, the reviewing court is left with the definite and firm conviction that a mistake has been committed.'" Id. (quoting Smith, 154 F.R.D. at 665) (internal quotation marks omitted). "`If a magistrate judge's account of the evidence is plausible in light of the record viewed in its entirety, a district judge may not reverse it.'" Id. (quoting Smith, 154 F.R.D. at 665) (internal quotation marks omitted). The legal conclusions of the magistrate judge are reviewable de novo, and the district judge "reverses if the magistrate judge erred in some respect in [his] legal conclusions." Id. "[T]he abuse of discretion standard governs review of `that vast area of . . . choice that remains to the [magistrate judge] who has properly applied the law to fact findings that are not clearly erroneous.'" Id. (quoting Smith, 154 F.R.D. at 665) (alteration in original).
B
InternetAd is complaining that the magistrate judge should have required defendants to answer a contention interrogatory, that is, an interrogatory that asks a party to state what it contends, state whether it makes a specified contention, state all the facts upon which it bases a contention, take a position and explain or defend the position concerning how the law applies to facts, or state the legal or theoretical basis for a contention. See B. Braun Med. Inc. v. Abbott Labs., 155 F.R.D. 525, 527 (E.D. Pa. 1994) (citing Fischer Porter Co. v. Tolson, 143 F.R.D. 93, 95 (E.D. Pa. 1992); In re Convergent Techs. Sec. Litig., 108 F.R.D. 328, 332 (N.D. Cal. 1985)). The interrogatory at issue asks, inter alia, that defendants state the factual reasons why the patents-in-suit are invalid. Rule 33(c) makes clear that such an interrogatory is not "necessarily objectionable." Id. ("An interrogatory otherwise proper is not necessarily objectionable merely because an answer to the interrogatory involves an opinion or contention that relates to fact or the application of law to fact. . . ."). Although it is not necessarily objectionable and may even be advisable, the language of Rule 33(c) and the Advisory Committee note support the conclusion that it is within a court's discretion to decide when an otherwise-proper interrogatory must be answered. See Nestle Foods Corp. v. Aetna Cas. Sur. Co., 135 F.R.D. 101, 110 (D.N.J. 1990) ("Rule 33(b) and the accompanying advisory committee notes . . . clearly confer the court with considerable discretion in deciding when, if ever, a party must answer contention interrogatories."); In re Convergent Techs. Sec. Litig., 108 F.R.D. at 333 (reaching similar conclusion). Rule 33(c) states that "the court may order that such an interrogatory need not be answered until after designated discovery has been completed or until a pre-trial conference or other later time." Id. The Advisory Committee note explains why the Rule grants courts such discretion. See Rule 33 advisory committee's note (1970 amendment, subdivision (b)) ("Since interrogatories involving mixed questions of law and fact may create disputes between the parties which are best resolved after much or all of the other discovery has been completed, the court is expressly authorized to defer an answer.").
For example, subsection (a) of Interrogatory No. 3 requires defendants to
[s]tate the factual basis for each contention that any claim of The Patents is invalid under 35 U.S.C. § 102, identify each item of prior art known and/or relied upon in asserting such invalidity, and make an element-by-element analysis of the relationship between the affected claims and each prior art reference that forms the basis for such invalidity contention(s)[.]
"As to requests for opinions or contentions that call for the application of law to fact, they can be most useful in narrowing and sharpening the issues, which is a major purpose of discovery." Rule 33 advisory committee's note (1970 amendment, subdivision (b)).
Many courts exercise the discretion that Rule 33(c) grants and conclude that contention interrogatories need not be answered until later in the discovery process. See, e.g., B. Braun Med., 155 F.R.D. at 527 (denying plaintiff's motion to compel answers to contention interrogatories without prejudice and observing that "courts may defer [contention interrogatories] until a later stage of discovery. Indeed, there is considerable support for deferring contention interrogatories until the end of the discovery period."); Nestle Foods, 135 F.R.D. at 111 (declining to require defendants to answer contention interrogatories when "discovery [was] still in its infancy" and reasoning "that judicial economy as well as efficiency for the litigants dictate that contention interrogatories are more appropriate after a substantial amount of discovery has been conducted."). It is therefore clear from Rule 33(c), the Advisory Committee note, and the case law that judges have discretion to determine when a party must respond to a contention interrogatory. The magistrate judge exercised the discretion granted by Rule 33(c) in denying InternetAd's motion to compel. Thus the applicable standard of review for this appeal is abuse of discretion.
III
The court must now decide whether InternetAd has demonstrated that the magistrate judge abused his discretion. See Librado v. M.S. Carriers, Inc., 2004 WL 583602, at *4 (N.D. Tex. Mar. 23, 2004) (Fitzwater, J.) (holding that in appealing magistrate judge's order "at a minimum, the party must identify the ruling being challenged, specify the standard of review, and explain why the decision in question is reversible under that standard.").
InternetAd cites, inter alia, Scovill Manufacturing Co. v. Sunbeam Corp., 61 F.R.D. 598 (D. Del. 1973), to contend that it is entitled to know the basis for defendants' assertions in a patent infringement case. In Scoville the court required a plaintiff to respond to an interrogatory by briefly stating the bases for its contentions that each patent in suit was invalid. Id. at 601. For their part, defendants rely, inter alia, on IP Innovation L.L.C. v. Sharp Corp., 219 F.R.D. 427 (N.D. Ill. 2003), in which the plaintiff sought discovery that is similar to what InternetAd requests here. Id. at 429 ("Plaintiffs' motion . . . seeks production of an analysis of any prior art or other invalidity defenses [defendant] intends to rely upon to support its invalidity claims. Plaintiffs seek a claim by claim and element by element comparison of any prior art or other invalidity defenses."). The IP Innovation court agreed with the defendant's assertion that production of such an analysis was premature, but it directed that it must be provided in its expert report due later. Id. at 429-30.
Scoville does not clarify the point in the discovery process where the parties stood at the time of the ruling. Although the opinion was issued over nine months after the interrogatories were served, it does not indicate the deadline to complete discovery or to serve expert reports.
InternetAd challenges defendants' reliance on IP Innovation and advances several arguments to substantiate its view that the decision provides no basis to support the magistrate judge's order. It challenges the decision for failing to cite any authority for its ruling and posits that the opinion has not been cited by other courts. InternetAd also distinguishes the facts of IP Innovation and cites reasons for contending that defendants should respond to the contention interrogatory before they file their expert report.
Although InternetAd and defendants rely on these cases to support their opposing positions, the decisions merely illustrate the exercise of judicial discretion in deciding when a contention interrogatory should be answered. As this court wrote in RTC v. Sands:
It should not be considered a novel proposition that judicial officers (even, as here, magistrate judges of the same court) would approach a similar issue differently. This is the essence of the exercise of discretion. So long as that discretion is not abused, a district judge will not disturb the magistrate judge's decision, even if another magistrate judge — or even the reviewing district judge — might have decided the matter differently. It is simply not enough for [plaintiff] to point to other decisions that it deems preferable or better reasoned, without demonstrating that the order under review constitutes an abuse of discretion. See Sanders v. Shell Oil Co., 678 F.2d 614, 618 (5th Cir. 1982) (noting it is "unusual to find an abuse of discretion in discovery matters").RTC v. Sands, 151 F.R.D. 616, 619 (N.D. Tex. 1993) (Fitzwater, J.). In other words, it would avail InternetAd little to point to examples of courts that have ordered contention interrogatories answered early in a case or in a particular sequence and to challenge the reasoning of those that have not. In each instance, a court was exercising its discretion. InternetAd must instead establish that the magistrate judge abused his discretion in declining to compel defendants to respond to the contention interrogatory at this particular stage of the case. Because it has failed to do so, there is no basis to disturb the magistrate judge's ruling.
* * *
Accordingly, InternetAd's July 6, 2004 objections to the magistrate judge's June 21, 2004 order are overruled, and the order is
Nothing in this decision precludes InternetAd from serving a similar interrogatory sufficiently in advance of the discovery deadline that defendants would be required to respond to it on or before the date discovery must be completed.
AFFIRMED.