Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Deckers Outdoor Corp. v. Sears Holdings Corp.

United States District Court, C.D. California

December 15, 2014

DECKERS OUTDOOR CORPORATION, Plaintiff,
v.
SEARS HOLDINGS CORPORATION; SEARS ROEBUCK AND CO.; SEARS BRANDS, LLC; DOES 1-10, inclusive, Defendants.

ORDER DENYING IN PART AND GRANTING IN PART PLAINTIFF'S MOTION TO COMPEL [45]

OTIS D. WRIGHT, II, District Judge.

I. INTRODUCTION

Plaintiff Deckers Outdoor Corporation ("Deckers") filed suit against Defendants Sears Holding Corporation, [1] Sears Roebuck and Co., and Sears Brands, LLC (collectively "Defendants") alleging trade dress and patent infringement of U.S. Patent Nos. D599, 999 and D616, 189. (ECF No. 1.) Specifically, Plaintiff alleges that Defendants sell knock-off UGG Boots, which infringe Plaintiff's "Bailey Button Boot Trade Dress" and "Bailey Button Design Patents." On November 19, 2014, Plaintiff filed the instant Motion to Compel Further Responses and Production of Documents by Defendants in Response to Decker's First Set of Requests for Production and Special Interrogatories. (ECF No. 45.)

Plaintiff argues that after several letters and meetings with Defendants, Defendants have still not produced any documents or any supplemental discovery responses per their agreement to do so. (ECF No. 45 at 1-2.) Defendants argue that they have already agreed to produce most of the documents that are subject to Plaintiff's Notice and Defendants assert valid objections for the remaining discovery requests. (ECF No. 46 at 1.)

II. DISCUSSION

After carefully considering the papers filed in support of and in opposition to the Motion, the Court deems the matter appropriate for decision without oral argument (Fed. R. Civ. P. 78; L.R. 7-15) and finds the following:

A. Requests to which Defendants agreed to produce documents (Nos. 1, 9, 10, 26, 27, 30-32, 39-42, 59, 60, 65, 68-70)

Seeing as there is no dispute that Defendants have agreed to produce documents responsive to these requests and discovery closes in ten months, this Court DENIES the Motion to Compel with respect to these documents as MOOT.

B. Requests Dealing with "Disputed Products" (Nos. 2, 5-8, 12-25, 28, 29, 33-38, 43, 44, 46, 51, 52, 56, 61, 62, 71; Interrogatories 1-13)

In light of Plaintiff's amended infringement contentions, that were served to Defendants on November 17, 2014, the dispute regarding the definition of "Disputed Products" is resolved and Defendants represent that they are in the process of producing documents to Plaintiff and will amend their interrogatory answers. ( See ECF No. 46 at 2-3.) This Court DENIES the Motion to Compel with respect to these documents and responses as MOOT. To the extent there is further dispute regarding these requests and interrogatories, the Court encourages the parties to meet and confer to resolve their issues instead of prematurely filing a motion.

D. Requests Relevant to Determination of a Reasonable Royalty (Nos. 45, 47-50)

Plaintiff's Requests call for documents regarding all footwear that Defendants have ever sold in the United States. ( See ECF No. 45, Ex. 1.) The Court agrees with Defendants that information about footwear generally has no bearing on reasonably royalties for the accused products and the requests are overly broad and unduly burdensome. ( See ECF No. 46 at 3.) Defendants agree to produce license agreements and license rates with respect to the accused products. To the extent the Motion to Compel seeks an order compelling further production of all footwear products (not just the accused products), the Motion is DENIED.

C. Requests Regarding Prior Accusations/Lawsuits (Nos. 54, 55; Interrogatory 16)

Plaintiff requests information and documents regarding prior accusations/lawsuits of intellectual property infringement, arguing relevance because prior acts may be used to demonstrate knowledge, intent, or absence of mistake. ( See ECF No. 45 at 3 (quotations and citations omitted).) Plaintiff also offered to limit these Requests to an identification of intellectual property infringement or ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.