UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
January 5, 2005
ULTRATECH, INC, ET AL., PLAINTIFFS,
TAMARACK SCIENTIFIC CO., ET AL., DEFENDANTS.
The opinion of the court was delivered by: James Larson United States Magistrate Judge
ORDER GRANTING IN PART TAMARACK'S MOTION TO COMPEL (Docket # 377)
Discovery Cut-Off 1-14-2005
The Court received the Joint Statement of Parties Regarding Tamarack's Request for Supplemental Responses and Responsive Documents. There is no indication in the statement of any efforts to meet and confer, although the parties represented at the hearing on this motion that they did informally attempt to resolve their dispute.
Tamarack's Interrogatory No. 25
Tamarack asks the Court to overrule Ultratech's objections and order Ultratech to provide a full and complete response to Tamaracks' Interrogatory No. 25 of its Third Set of Interrogatories, which asks Ultratech to:
"State all facts supporting any contention you may have that you did not engage in inequitable conduct during the prosecution of the '813 patent-in-suit by way of example only, all the facts regarding:
* what Ultratech's relationship with IBM was like;
* how non-disclosure agreement were viewed by Mr. Markle [the patentee] and others, particularly non-disclosure agreements from IBM;
* Mr. Markle's experience in applying for other patents;
* Mr. Markle's views on being truthful before the Patent and Trademark Office;
* what IBM's 1990 RFQ called for;
* what Mr. Markle understood the 1990 RFQ to be contemplating;
* why the 1990 RFQ was not on Mr. Markle's mind when Ultratech was applying for the '813 Patent;
* what Ultratech's response to IBM's 1990 RFQ offered;
* differences between Ultratech's response to IBM's RFQ and the '813 Patent;
* other evidence regarding the materiality of Ultratech's response to IBM's 1990 RFQ;
* what was occurring at Ultratech at the time of filing for the '813 Patent; and
* other evidence of good faith and so forth."
Tamarack contends the language of its interrogatory was drawn directly from Ultratech's opposition to Tamarack's Motion for Bench Trial on Inequitable Conduct and for Scheduling Order, at page 7, line 22 through page 8 line 17, and the identity of and the reference by Ultratech to "at least four and possibly more witnesses" on page 8, lines 16-17.
Ultratech objects to this interrogatory as overly broad, unduly burdensome, unintelligible, supernumerary (containing impermissible subparts) and vague and ambiguous. It contends that the interrogatory has no fewer than 14 subparts and is more akin to a deposition by written questions than an interrogatory. Ultratech contends the different subparts ask for different categories of information and are thus supernumerary and should not be permitted. For example, questions about "differences between Ultratech's response to IBM's 1990 RFQ and the '813 patent" clearly call for different information from the subpart that asks about "how non-disclosure agreements were viewed by Mr. Markle and others, particularly non-disclosure agreements from IBM." The fact that the different categories may relate to one legal theory, inequitable conduct, does not legitimately subsume all related questions into one interrogatory. New Colt Holding Corp. V. RIG Holdings of Florida, Inc., 2003 U.S. Dist. LEXIS 17930, *4-*5 (Feb. 6, 2003, Dist. Conn.) Ultratech contends that Tamarack already exceeded the 25-interrogatory limit and this one is number 25, even by Tamarack's count, and it has not moved for leave to propound more. Ultratech contends that Tamarack has propounded between 45 and 50 interrogatories.
Ultratech does not object on grounds of relevance, but disputes Tamarack's proposition that the interrogatory is not vague because it uses Ultratech's language. Ultratech contends Tamarack uses the terms differently from Ultratech. Ultratech finds the interrogatory unduly burdensome because it asks it to prove that its conduct before the Patent Office was equitable when this is not its burden, but rather Tamarack's to show the reverse. Furthermore the questions invade Ultratech's counsel's work product.
Finally, Tamarack's motion for sanctions should be denied, not only because it lacks merit, but because it was not separately noticed as required by Civil Local Rule 7-2 The Court finds that Tamarack's suggestions are just that, that they are drawn from Ultratech's pleadings and that they are an attempt to suggest to Ultratech (and possibly the Court) what a complete response to the interrogatory might look like. Consequently, Ultratech is under no obligation to provide all the information suggested by Tamarack, nor is the interrogatory supernumerary, if the subparts are merely "suggestions." The Court finds that there is no convincing evidence that this interrogatory exceeded the limit at the time it was propounded.
It is indeed Tamarack's burden to prove inequitable conduct by Ultratech, as its affirmative defense to Ultratech's claim of patent infringement. At the same time, Tamarack is entitled to know Ultratech's contentions regarding its assertion that it acted equitably. Ultratech shall answer the interrogatory. The motion for sanctions is denied without prejudice, because it was not brought as a separately noticed motion.
Tamarack's Fourth Set of Requests for Production of Documents Request No. 66
Tamarack asks Ultratech to produce: "To the extent not already produced, all documents and things requested to be identified in your response to Defendant Tamarack Scientific, Inc.'s Third Set Of Interrogatories to Plaintiff Ultratech Inc."
Ultratech objected and refused to produce any documents on the grounds that Interrogatory No. 25 was objectionable, so "no responsive documents exist." Tamarack asks the Court to overrule Ultratech's objections and issue an evidentiary sanction that Ultratech may not rely on any document at trial that it did not produce or identify.
Ultratech responds that this document request compounds the improper scope of the interrogatory by extending the meaning of "identify" to include who wrote, received, read or was otherwise associated with a document, where and when it was sent out, and so on.
The Court finds that Tamarack's interrogatory 25 is not supernumerary and its categories are merely suggestions. Similarly, it does not impermissibly compound an interrogatory to ask the responding party to identify a document by its author, recipient or other pertinent information. The Comments to the 1993 Amendments to Rule 33 provide: "a question inquiring about communications of a particular type should be treated as a single interrogatory even though it requests that the time, place, persons present, and contents to be stated separately for each communication." Fed. Civ. Jud. Proc. & Rules, West 2004). This Court consequently orders Ultratech to respond to Document Request No. 66 by producing documents referred to in its further response to Interrogatory 25. Ultratech at the discretion of the trial court may be precluded from relying at trial on any other documents or information related to inequitable conduct.
Request No. 69
This asks for "All documents and things which you contend evidence that you did not engage in inequitable conduct during the prosecution of the '813 Patent." Tamarack characterizes Ultratech's response as a non-response -- that it cannot respond "without knowing what Tamarack intends to produce in evidence as its proof for such alleged inequitable conduct." Ultratech denies that it objected on this basis, but rather that it already produced responsive documents. It challenges Tamarack to provide authority for the proposition that Ultratech is obligated to provide Bates stamp numbers for the alreadyproduced documents.
Ultratech should identify which of its documents are responsive to this request. The representations that the documents were produced "already," is not sufficiently specific. This Court previously ruled that producing documents as they are maintained in storage is not as the documents are kept in the "usual course of business" and therefore does not satisfy the requirements of Federal Rule of Civil Procedure 33(d).
At least one district court has found that Rule 34 does not permit producing boxes of documents organized for storage in response to a request for production of documents. City of Wichita, Ks. v. Aero Holdings, Inc. 2000 WL 1480499 (D.Kan.,2000) (Noting that "Rule 34 permits a party to produce the documents as they are kept in the 'usual course of business.' This alternative is not an option because these records 'are from companies that have been out of business for many years' and the boxes of documents were in storage.") Id. at fn. 1. (June 16, 2004 Order at page 2)
The Court reasoned that if producing documents from storage in response to a document request was not responsive then producing documents from storage in response to an interrogatory was also not responsive. The Court then ordered Ultratech to mark the storage boxes with the requests to which the documents inside responded.
In this dispute, Ultratech may similarly either produce the documents as they are kept in the usual course of business, that is, not in storage boxes, or else specify the Bates stamp range or at least the box number of the documents which respond to each interrogatory.
Request No. 68
This asks for "all documents relating to the offer for sale, design, development, production, manufacture, sale and/or delivery of the exposure and alignment system that was the subject of Ultratech's technical proposal entitled 'IBM LASER ABLATION TOOL RFQ 6t 761761 dated August 27, 1992 marked as Exhibit G to the April 16, 2004 Declaration of David A. Markle In Support of Ultratech's Opposition to Defendant Tamarack's Motion for Leave to Amend Answer and Counterclaim.'"
Ultratech responded that it produced responsive documents as kept in the normal course of business. How? When? In response to another request? Tamarack asks either for Ultratech to identify the documents by Bates stamp range or for the Court to issue an evidentiary sanction that Ultratech may not rely on any document not so identified. Ultratech protests, and the Court agrees, that Tamarack has itself produced documents as kept in the normal course of business, without the Bates stamp identification, so Ultratech should be permitted to do the same, provided it otherwise identifies the responsive documents.
However, it isn't sufficient to point to a pile of boxes and say, "The answer is out there." Ultratech may either produce the documents as maintained in its usual course of business, which is not in storage boxes, or may specify either the Bates stamp range or box number for documents responsive to this interrogatory.
Request No. 70
Asks for "All documents, including pleadings, declarations, and deposition testimony, which relate to any claim or defense by anyone that you, including any of your employees, consultants or attorneys, engaged in inequitable conduct in the procurement of any United States Patent. Ultratech objects that this request is overbroad because it asks for documents related to any other patent lawsuit in which Ultratech has been a plaintiff where the defendant raised the claim of inequitable conduct. Ultratech also objects that Mr. Markle's prior experience is irrelevant; the only arguably relevant evidence would be the past experience of Ultratech. Tamarack rejoins that Ultratech itself opened the door to this inquiry by representing to the trial court that it would be presenting the following categories of evidence against Tamarack's affirmative defense of inequitable conduct: (1) how non-disclosure agreements were viewed by Mr. Markle and others, particularly non-disclosure agreements from IBM; (2) Mr. Markle's experience in applying for other patents; (3) Mr. Markle's views on being truthful before the Patent and Trademark Office; and (4) other evidence of good faith. Tamarack seeks the thorns on Ultratech's rosy picture of its innocence. If Ultratech refuses its request, Tamarack asks the Court to issue an evidentiary sanction that Ultratech may not rely on any documents or information not produced or identified in response to this request.
This Court finds that Ultratech has opened the door to inquiry into these narrow categories of information. It shall respond to Request No. 70 in the four categories listed above or be precluded from relying on any responsive evidence not produced.
Request No. 71
Asks for "All documents, including pleadings, declarations, and deposition testimony, which relate to any claim or defense by anyone that you offered for sale an invention claimed in any of your patents more than one year prior to filing the application for such patent." Ultratech raises the same objection as to Request No. 70, that what happened in other cases, about other patents, is not relevant to this case. Tamarack believes these documents may show a pattern of activities similar to those in this case, in particular whether the offer for sale in this case "just slipped Mr. Markle's mind." Tamarack asks that Ultratech designate its responses by Bates stamp.
This Court finds that this information is relevant, although probably not very helpful Ultratech shall produce documents either as kept in the usual course of business or by specifying the box number where responsive documents may be found.
IT IS SO ORDERED.
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