The opinion of the court was delivered by: Hon. Nita L. Stormes U.S. Magistrate Judge United States District Court
ORDER GRANTING JOINT MOTION FOR DETERMINATION OF DISCOVERY DISPUTE NO. 1 [Doc. No. 39]
The parties filed a joint motion asking the court to determine four issues arising out of plaintiff Gen-Probe Incorporated's (Gen-Probe) first set of interrogatories (ROGs) and first set of requests for productions (RFPs). Defendant Becton-Dickinson (BD) agreed to supplement some of it ROG responses and produce some previously disputed categories of documents. The following issues remain in dispute: (1) Whether BD should be able to conduct discovery before responding to a contention ROG regarding an affirmative defense; (2) Whether the "how" and "what" involved in BD's learning about Gen-Probe's patents is protected by privilege; (3) Whether discovery related to a non-accused product is relevant; and (4) Whether BD should provide the internal contact information of its customers.
1. ROG No. 1: Contention Interrogatory
In ROG No. 1, Gen-Probe asks BD to state with particularity all facts BD relies on in support of its tenth affirmative defense that asserts "waiver, laches, and/or estoppel," and to identify all documents that support this defense. BD has provided or will provide facts regarding delay and prejudice, which only relate to its laches' defense. Gen-Probe seeks to compel BD to provide now all facts relating to its waiver and estoppel affirmative defenses. It argues that BD has not set forth any facts to show that it has a "facially plausible" theory to support the waiver and estoppel defenses and that BD should not be allowed to fish for discovery under the guise of a baseless defense. If no such facts support these defenses, Gen-Probe asks that BD affirmatively state that no such facts exist, as a prelude to withdrawing those defenses.
BD objects to further responding at this point to this contention interrogatory because it cannot provide any further information without obtaining discovery from Gen-Probe. BD says it needs, for example, information regarding when Gen-Probe first became aware of BD's use of the accused method, and that discovery is needed to determine the level of evidentiary prejudice that resulted from GenProbe's delay in bringing this claim. Without Gen-Probe first producing information related to the '200 patent, BD says it cannot determine whether key documents from the early 1990s has been destroyed.
Federal Rule of Civil Procedure 33(a)(2) says that a court may order that a contention interrogatory "need not be answered until designated discovery is complete." Several courts have found contention interrogatories served toward the beginning of a litigation to "be of questionable value to the goal of efficiently advancing the litigation." In re Ebay Seller Antitrust Litig., 2008 U.S. Dist. LEXIS 102815, *6 (N.D. Cal. Dec. 11, 2008); see In re Convergent Techs. Sec. Litig., 108 F.R.D. 328, 338 (N.D. Cal. 1985) (placing burden of justification on party who propounds contention interrogatories that track the allegations in an opponent's pleading "before substantial documentary or testimonial discovery has been completed"). For the propounding party to meet its burden, the party must show that answers to its well-tailored questions will contribute meaningfully to clarifying the issues in the case, narrowing the scope of the dispute, or setting up early settlement discussions, or that such answers are likely to expose a substantial basis for a motion under Rule 11 or Rule 56. A party seeking early answers to contention interrogatories cannot meet its burden of justification by vague or speculative statements about what might happen if the interrogatories were answered. Rather, the propounding party must present specific, plausible grounds for believing that securing early answers to its contention questions will materially advance the goals of the Federal Rules of Civil Procedure.
This court finds that Gen-Probe did not sufficiently tailor its question and show that an early response would promote any of the goals of the Federal Rules of Civil Procedure. Along with the facts that the parties have not yet completed substantial discovery, and because BD does not object to responding further to this contention interrogatory as discovery progresses, the court sustains BD's objections and denies Gen-Probe's request to compel BD to respond further to ROG no. 1 without the benefit of further discovery.
2. ROG No. 4: How BD Learned About Gen-Probe's Patents
Gen-Probe seeks facts regarding how BD first became aware of six of the patents asserted in this lawsuit. BD disclosed that its Senior Intellectual Property Counsel, Allan Kiang, first learned of six of the patents shortly after each was issued. But BD did not disclose other facts related to that first knowledge, such as how it acquired the information and what actions, if any, it took. BD argues this information is protected by the attorney-client privilege because the "how" and the "what" of how BD learned about each patent involves information protected by the attorney-client or work product privileges. It also argues this information is not relevant to any of Gen-Probe's claims. Gen-Probe replies that these are only facts and the privilege does not apply to them.
"Confidential information essentially is information 'of either particular significance or [that] which can be readily identified as either attorney work product or within the scope of the attorney-client privilege.'" Hewlett-Packard Co. v. EMC Corp., 330 F.Supp.2d 1087, 1094 (N.D. Cal. 2004) (citations omitted). The attorney-client privilege extends to communications between client and attorney for the purpose of obtaining legal advice; it does not extend to foundational questions that do not require the disclosure of any legal advice sought or provided:
[The] protection of the privilege extends only to communications and not to facts. A fact is one thing and a communication concerning that fact is an entirely different thing. The client cannot be compelled to answer the question, 'What did you say or write to the attorney?' but may not refuse to disclose any relevant fact within his knowledge merely because he incorporated a statement of such fact into his communication to his attorney.
Upjohn Co. v. United States, 449 U.S. 383, 395-396 (1981) (citation omitted); see Methode Elecs., Inc. v. Finisar Corp., 205 F.R.D. 552, 556 (N.D. Cal. 2001); see also Fox v. California Sierra Financial Services, 120 F.R.D. 520 (N.D. Cal. 1988) (The fact of a privileged communication is not itself privileged.). As for work product protection, that privilege applies only to materials "prepared in anticipation of litigation[.]" Fed. R. Civ. Proc. 26(b)(3)(A).
In its opposition, BD discloses some facts regarding how Mr. Kiang learned of the six patents that had not previously been disclosed. This information, and any other responsive information that has yet to be disclosed, is relevant to Gen-Probe's claim of willful infringement and its claim that BD induced others to infringe the method claims of the asserted patents. BD must now disclose the facts disclosed in the joint motion, as well as any other non-privileged foundational facts, that go to the "how" and the "what" involved in its learning of six of Gen-Probe's patents, in a supplemental interrogatory response verified by BD ...