The opinion of the court was delivered by: Cathy Ann Bencivengo United States Magistrate Judge
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION TO COMPEL [Doc. No. 210]
On August 25, 2011, Fastek filed a motion to compel the production of documents and responses to deposition questions and to exclude the opinion of counsel produced by defendants Steco and Blue Corporation (jointly "Steco"). [Doc. No. 210.] Steco filed an opposition. [Doc. No. 227]. Fastek filed a reply. [Doc. No. 233.] A telephonic hearing was scheduled for September 9, 2011; however, the was closed due to an emergency. Having reviewed the parties' submissions, the Court finds this motion suitable for determination on the papers submitted and without oral argument in accordance with Civil Local Rule 7.1(d)(1). The motion is GRANTED in part and DENIED in part.
A. Fastek's Motion to Exclude
The Scheduling Order in this case required Steco to produce an opinion of counsel and any documentation relating to the opinion no later than May 20, 2011. Steco was on notice that if it failed to comply with that requirement it would not be permitted to rely on an opinion of counsel as part of a defense to willful infringement. [Doc. No. 126, ¶3.] Steco asserted attorney-client privilege in response to requests from Fastek for documents supporting its contentions of non-infringement and specifically in response to requests for any opinions of counsel. The assertion of the privilege was without prejudice May 20, 2011. At that point, Steco was obligated to waive and produce the responsive documents, or retain the privilege but be precluded from introducing an opinion of counsel as a defense to willful infringement allegations.
Steco did not waive the privilege on May 20, 2011 and did not produce any previously withheld documents regarding opinion of counsel. Consequently, absent a stipulation by the parties or an order by the Court based upon a showing of good cause, Steco is precluded from introducing an opinion of counsel as a defense to any willful infringement allegations.*fn1
On June 16, 2011, Steco provided an opinion letter dated September 24, 2008, prepared by attorney Mark Brown, who is also a counsel of record for Steco in this litigation, and indicated it was waiving the privilege.*fn2 On July 25, 2011, Fastek proceeded with Mr. Brown's deposition regarding the opinion letter and its preparation. Fastek was dissatisfied with Mr. Brown's testimony and the production regarding his opinion letter. On August 25, 2011, Fastek filed its motion to compel the production of additional documents and to compel Mr. Brown's testimony. Fastek also moved to exclude Mr. Brown's opinion due to the untimely waiver by Steco.
In opposition, Steco acknowledges its waiver was untimely. It offers no explanation for the to comply with the Court's scheduling order, but argues that Fastek did not raise any objection to the untimely waiver and received the opinion, deposed Mr. Brown, and therefore Steco contends that Fastek was not prejudiced by the late election so the opinion should not be excluded. Fastek, however, is not stipulating to Steco's untimely disclosure and argues it is prejudiced by the inadequacy of Steco's production regarding the opinion letter and objections made at Mr. Brown's deposition instructing him answer certain questions.
Steco has not set forth a satisfactory explanation for its untimely waiver of Mr. Brown's opinion. The consequence of the failure to waive by May 20, 2011 is a self-executing exclusion of the opinion letter. Fastek had no obligation to object to the delay or show prejudice. Steco cannot shift that burden to Fastek. Steco has not demonstrated good cause for its failure to comply with the scheduling order regarding the production of opinion of counsel. Fastek's motion to exclude the September 24, 2008 opinion of counsel produced by Steco is GRANTED.
Fastek's related requests for further production of documents regarding the opinion, specifically request for further responses to Document Requests Nos. 71, 72 and 76, and for further responses to deposition questions are DENIED as moot in light of the exclusion of the opinion of counsel. The opinions of Mr. Brown, how they were reached and any testimony regarding his advice to Steco is excluded, no further discovery in this area is warranted.
Supplemental Document Production
Fastek also seeks an order compelling further production to Requests for Production Nos. 78, 79, 80 and 83. [Doc. No. 210, at 2, "Document Requests At Issue On This Motion".] These requests were all the subject of a previous motion to compel brought by Fastek in January 2011, to which the Court ordered Steco produce all non-privileged responsive documents no later than February 7, 2011. [Doc. No. 68.] Fastek's motion makes no specific reference to further production sought in response to Requests Nos. 78, 79 and 80. With regard to Request No. 83, Fastek contends that production of three groups of documents should be ordered as within the scope of this request made for "all documents other than pleadings in this action which mention or reference in any manner Fastek or any of its products; patents; patent applications; inventors; officers; present or former, or employees, present or former."
An interrogatory response served by Steco on July 21, 2011, identified certain industry publications to which Steco employees may have had access. Fastek argues that the publications should have been produced in response to its Request No. 83 and were not. Fastek demands Steco produce the publications.
The Court first notes that fact discovery closed*fn3 in this case on July 22, 2011. Consequently, Fastek left itself no opportunity to follow up on discovery it propounded for which the timely service of responses was the day before the close of discovery. Further, Fastek had 30 days from the service of the interrogatories (August 22, 2011 at the latest) to bring its discovery motion and did not file a timely request. Further, the documents sought by Fastek, identified in the interrogatory response would be equally available to Fastek so the Court is not convinced that Steco should be compelled to search for publications. The motion to compel production of the trade publications is DENIED.
On June 21, 2011, Fastek took the deposition of Richard Secrist and learned Mr. Secrist has contact information for Nathan Frankel in ...