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Johnson & Johnston v. R.E. Service Co. Inc.


November 2, 2004


The opinion of the court was delivered by: James Larson United States Magistrate Judge

Discovery Order Denying Docket # 138 and Granting Docket # 139


Before the Court are the parties' letter briefs regarding their discovery dispute which they submit as provided by this Court's Standing Order at Paragraph 7(b). All discovery in this case has been referred by the district court (Hon. Saundra Brown Armstrong) as provided by Civil Local Rule 72 and 28 U.S.C. §636(b). This Court finds this discovery dispute appropriate for resolution without a hearing as provide by Civil Local Rule 7-6. The parties represent that they have held ongoing meet and confer conferences to attempt to resolve this dispute, as required by Civil Local Rule 37.

Factual and Procedural Background

This is a patent dispute between Plaintiff ("JJA") and Defendant ("RES"). JJA sued RES in May 2003. This is the third litigation between the parties, the first two having commenced in 1992 and 1997. At issue are two patents that JJA alleges RES has infringed and four patents that RES alleges JJA has infringed. The discovery requests at issue are JJA's First, Second and Third Sets of Document Requests, served March 17, 2004, March 17, 2004 and August 27, 2004, respectively. RES has been on notice that JJA wants these documents for at least two months and in some instances more than six months.

The trial court issued its claim construction order on August 16, 2004 and has set pretrial deadlines as follows:

1) Expert Disclosure and exchange of expert reports by November 12, 2004;

2) Rebuttal expert disclosure by November 19;

3) Fact witness depositions by November 19; and

4) Initial expert witness depositions by November 24.

Dispositive Motions are set for hearing January 25, 2005. A settlement conference is scheduled for February 4. Pretrial conference is March 22 and the case is set for jury trial commencing March 28, 2005.

Analysis and Conclusion

JJA's' letter brief is essentially a motion to compel and RES's letter brief is an opposition. The issue appears to be not so much whether the documents will be produced as when, but with one exception, the documents produced by RES in the previous litigation. JJA wants the RES documents in time to use them to prepare for fact witness depositions, which must be concluded by November 19, and expert witness depositions, which must be concluded by November 24.

Federal Rule of Civil Procedure 26 (b)(1)(a) provides that discovery, including requests for production of documents, shall be limited by the court if it determines that the discovery sought is unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less expensive; or that the party seeking discovery has had ample opportunity by discovery in the action to obtain the information sought; or the discovery is unduly burdensome or expensive, taking into account the needs of the case, the amount in controversy, limitations on the parties resources, and the importance of issues at stake in the litigation. The court may make such a ruling on its own or on a motion by a party. Federal Rule of Civil Procedure 26(c) provides that a court may issue a protective order to protect a party or person from whom discovery is sought from annoyance, embarrassment, oppression or undue burden or expense.

Case law supports a requirement that a party objecting to a discovery request state specific facts in support of its objection. In a personal injury action by workers against their employer claiming asbestos-related injuries, one of the defendants, GAF, objected to an interrogatory as "overly broad, burdensome, oppressive and irrelevant." The court held:

"To voice a successful objection to an interrogatory, GAF cannot simply intone this familiar litany. Rather, GAF must show specifically how, despite the broad and liberal construction afforded the federal discovery rules, each interrogatory is not relevant or how each question is overly broad, burdensome or oppressive, by submitting affidavits or offering evidence revealing the nature of the burden. The court is not required to 'sift each interrogatory to determine the usefulness of the answer sought.' The detail in the complaint specifies the necessary relevance of the interrogatories. The burden now falls upon GAF, the party resisting discovery, to clarify and explain its objections and to provide support therefor." Roesberg v. Johns-Manville Corp., 85 F.R.D. 292, 298 (E.D.Pa. 1980)(internal citations omitted) Given the broad scope of discovery in federal cases, a party objecting to discovery on the basis of vagueness, overbreadth, oppression or burden must state specific facts in support of its objection.

RES makes virtually no substantive objections to most of JJA's requests.

1) RES Copper DocumentsJJA requested that RES produce all documents which would prove the weight (and thereby thickness) of copper used in the creation of the allegedly infringing products, SC2 and SC3. RES agreed on October 8, 2004 to produce such documents, but has not yet produced them. It promises to produce them by November 12. RES provides no justification for a delay of over one month between its promise and its production. It shall produce the documents forthwith.

2) Documents held by RES's Patent Prosecution CounselRES in this litigation is asserting opinion of counsel as a defense, invoking the advice of John O'Banion of O'Banion and Ritchey in Sacramento. Mr. O'Banion served as its patent prosecution counsel and also drafted opinion letters regarding JJA patents.

In this litigation JJA requested from Mr. O'Banion any non-privileged documents relevant to the following topics:

a) Any notes re the '596 opinion; b) any '315 opinion letters or drafts; c) any prosecution files for the RES patents-in-suit; d) any document which contains notes regarding the date of conception for the four patents; e) any manuals regarding metals or metallurgical characteristics on steel from M. Frater; f) any meeting notes regarding th discussions on the inventions covered by the RES patents-in-suit; g) any notes regarding any Information Disclosure Statement made to the U.S. Patent and Trademark Office in conjunction with the prosecution of the RES patent-in-suit; and finally, h) any notes regarding Zycon.

Mr. O'Banion has indicated that the files are in storage and will need to be recalled and reviewed. RES has no objection to producing responsive, non-privileged documents and contends there is "no active dispute," but that JJA raised the issue only because the date the parties' letters were submitted to this Court was the deadline imposed by the trial court for discovery motions. It also offers no date certain for production. RES provides neither a substantive objection nor a justification for not expediting its production. These documents should be helpful in understanding the relationships between the patents and the products not only to opposing counsel but also to the trial judge and the jury. RES shall produce these documents no later than November 9, 2004.

3) RES Documents from previous LitigationRES retains over one hundred boxes of documents from the previous litigations between the parties. JJA requests these documents because its present counsel did not represent it during the previous litigations. Although its present counsel received some documents from the previous actions, these did not include those which had been produced by RES, other than trial and deposition transcripts and a few trial and deposition exhibits. RES objects that JJA should have these documents and that RES already produced them in the previous litigation. The fact that RES produced documents in the previous litigation does not absolve it of the duty to produce them now. If JJA's previous counsel did not retain the documents in the previous litigation which JJA requests in the present litigation, then JJA is entitled to request them from RES. The first action, when RES sued JJA, commenced in October 1992, twelve years ago. RES sued JJA in January 1997, almost five years ago. JJA brought this action in May 2003. It is not surprising that some of the documents from the two earlier lawsuits are no longer available.

RES contends that production would be burdensome and that it has reviewed an index of the contents of the boxes and from that determined that the contents are not relevant. It refuses to produce the index on the basis that it is protected under the work product doctrine.

JJA responds that the first trial concerned RES' AC3 product. RES relies on the development of its AC3 product as a ground for invalidity of the JJA patents-in-suit. The second trial concerned whether RES SC3 product infringed the '050 patent. This case involves whether that same product, SC3, infringes JJA's '596 and '315 patents. The facts underlying the previous litigation are also at issue and relevant to the claims and defenses raised in this case and discoverable under Fed.R.Civ.P. 26(b)(1). JJA observes that RES counsel is retrieving copies of documents from the previous litigation, specifically transcripts of testimony of JJA's inventor, Mr. Johnston, to bolster its own case. JJA objects that this selective retrieval by RES is prejudicial.

This Court finds that RES does not support its objection of burdensomeness but that its objection to producing the index as attorney work product is well taken. However, if RES proffers the index as evidence that the documents are not relevant than it has in effect waived any claim of privilege for the index. Moreover, the mere fact that these documents should be equally available to JJA is unavailing when in fact they are not available.

RES shall review the documents and produce all responsive non-privileged documents. If RES withholds any documents on the grounds of privilege, it shall provide with its objections a privilege log which satisfies the requirements of In re Grand Jury Investigation, 974 F.2d 1068, 1070 (9th Cir. 1992), citing Dole v. Milonas, 889 F.2d 885, 888 n. 3, 890 ( 9th Cir.1989).


Compliance with all components of this Court's order is due on or before November 9, 2004, with the exception of the Copper Documents, which shall be produced immediately.



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