The opinion of the court was delivered by: Louisa S Porter United States Magistrate Judge
ORDER ON JOINT MOTION FOR ORDER ON DISCOVERY
On October 18, 2007, counsel for the parties in this matter contacted the Court seeking resolution of their disputes regarding Plaintiffs' Preliminary Infringement Contentions pursuant to the Patent Local Rules as well as this Court's September 5, 2007 Order Regulating Discovery. Karineh Khachatourian and Eric Weisblatt appeared on behalf of Plaintiffs; John Wynne and Rich Schnurr appeared on behalf of Defendant. Counsel presented four issues of dispute and the Court ordered counsel to brief three of those issues for resolution at a Discovery Conference scheduled for October 25, 2007. On October 24, 2007, the parties submitted their Joint Motion for Discovery as well as separate Memoranda of Points and Authorities. Due to the effects of fires which afflicted San Diego County, the courthouse was closed on October 25, 2007 and the scheduled Discovery Conference did not occur. The parties' dispute was deemed appropriate for decision on the submitted papers without oral argument.
The four issues of dispute between the parties are: (1) whether documents in support of Plaintiffs' claim of a priority date based on an application submitted in Germany must be produced to Defendant in a translated form; (2) whether Plaintiffs sufficiently complied with Patent Local Rule 3.2.b; (3) whether Plaintiffs were entitled under the Patent Local Rules to assert claims of infringement while reserving their right to amend their infringement contentions at a later date; and (4) whether Plaintiffs were entitled under the Patent Local Rules to assert claims of infringement while reserving their right to later assert the Doctrine of Equivalents with respect to those claims.
1. Translation of German Patent Application Documents
The Court addressed the parties' first issue of disagreement during the October 18, 2007 conference call. Pursuant to the obligations imposed by Patent Local Rule 3.2 and the Court's September 5, 2007 Order Regulating Discovery, Plaintiffs were required to disclose specified categories of documents with their initial claim disclosures. Plaintiffs produced a copy of the file history for a European patent application. The documents were produced in their German-language form and Defendant requested that Plaintiffs produce an English-language translation.
After hearing arguments of counsel, the Court ordered that Plaintiffs shall produce the documents in English if Plaintiffs or Plaintiffs' attorneys are in possession of an English translation of the German documents.
2. Plaintiffs' document production pursuant to Patent Local Rule 3.2.b
Defendant's second objection to Plaintiffs' disclosures under Patent Local Rule 3.2, is that Plaintiffs have produced only copies of the file history for the U.S. patent application at issue in this case, and for the German application which Plaintiffs' claim as a priority date. (Document 34-2 at 3.) Patent Local Rule 3.2 requires that:
With the "Disclosure of Asserted Claims and Preliminary Infringement Contentions" [required by Patent Local Rule 3.1], the party claiming patent infringement must produce . . . All documents evidencing the conception, reduction to practice, design or development of each claimed invention, which were created on or before the date of application for the patent in suit or the priority date identified pursuant to Patent L.R. 3.1e, whichever is earlier.
Plaintiffs have represented to Defendant that other than the file histories that were produced, "[t]here are no known non-privileged documents evidencing the conception, reduction to practice, design and development of each claimed invention created on or before [the date of the German application]." (Document 34-2 at 3.) Plaintiffs further assert that they are "unaware of any information that makes conception, reduction to practice, design or development of the inventions claimed in the patent-in-suit relevant to any claim or defense in this litigation." (Document 34-4 at 4.) Thus Plaintiffs claim that their production of documents pursuant to Patent Local Rule 3.2 is complete because the file histories that have been produced are the only relevant, non-privileged documents in their possession. Plaintiffs anticipate that "the parties will exchange lists of privileged communications withheld from production. The documents withheld from production here will be described in accordance with Federal Rule of Civil Procedure 26(b)(5) in Carl Zeiss Vision's privileged document list." (Id. at 3.)
Defendant objects to Plaintiffs' determination of which documents are relevant to this litigation, as well as Plaintiffs' blanket claim of privilege for any relevant documents. (Document 34-3 at 6-10.) Defendant requests that this Court sanction Plaintiffs by making an adverse inference that would preclude Plaintiffs from relying on the date of their German patent application as a priority date for their infringement claims. (Document 34 at 7.)
A party opposing document production by a claim of privilege may not rely upon a blanket refusal. (Burlington Northern & Santa Fe Ry. Co. v. United States District Court for the District of Montana, 408 F.3d 1142, 1149 (9th Cir. 2005).) Rather, Federal Rule of Civil Procedure 26(b)(5) requires that a party making such an objection must "describe the nature of the documents, communications, or things not produced or disclosed in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the applicability of the privilege or protection." (Fed. R. Civ. P. 26(b)(5).) Though Plaintiffs acknowledge that their assertion of privilege requires the creation of a privilege log in support of their assertion, no such log has yet been produced. Plaintiffs shall now produce a privilege log that describes the nature of the documents that are being withheld from document production under Patent Local Rule 3.2. The privilege log shall describe the nature of the withheld documents, without disclosing their contents, with sufficient particularity that Defendant can challenge, and the Court can assess, the claim of privilege if there be such a need. The Court's detailed requirements for the privilege log appear below, in the Conclusion of this Order.
Plaintiffs are further instructed to reinspect the documents in their possession to ensure that they have produced all non-privileged documents evidencing the conception, reduction to practice, design, and development of the claimed invention, created on or before January 16, 1997. The Court is wary of Plaintiffs' broad denial of the relevance of documents that are in their possession because the parties represented to this Court at their Early Neutral Evaluation conference that Plaintiff has previously litigated the European patent of this same invention. The Court ...