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Milwaukee Electric Tool Corp. v. Chervon North America Inc.

United States District Court, E.D. Wisconsin

June 6, 2017



          J.P. Stadtmueller, U.S. District Judge

         Defendant Chervon North America Inc. (“Chervon”) filed a motion to compel discovery responses on April 17, 2017. (Docket #177). In its motion, Chervon accuses Plaintiffs of failing to adequately respond to several of its interrogatories. Plaintiffs' general response is that the information Chervon seeks is either already in its possession or will be a part of Plaintiffs' expert disclosures, which are not yet due. Chervon's motion is fully briefed and, for the reasons stated herein, the Court will largely deny the motion.


         District courts have broad discretion in deciding matters relating to discovery. Packman v. Chicago Tribune Co., 267 F.3d 628, 646-47 (7th Cir. 2001); Rennie v. Dalton, 3 F.3d 1100, 1110 (7th Cir. 1993). Under Federal Rule of Civil Procedure 26(b)(1), parties may obtain discovery “regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” Fed.R.Civ.P. 26(b)(1). The information sought need not itself be admissible to be discoverable. Id. In considering matters of proportionality, the Rule directs courts to consider “the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Id. While these proportionality concerns have always been a part of the Rule, they now enjoy pride of place after the 2015 Rule amendments. See Fed. R. Civ. P. 26 advisory committee notes, 2015 Amendment; Elliot v. Superior Pool Prods., LLC, No. 15-cv-1126, 2016 WL 29243, at *2 (C.D. Ill. Jan. 4, 2016).

         2. DISCUSSION

         The interrogatories at issue are Nos. 1, 3, 5-7, and 9. At the outset, the Court notes that the issues Chervon raised herein were mostly resolved by Plaintiffs' supplemental responses served after the motion was filed. Yet as made clear in its reply brief, Chervon has not relented in any aspect of the motion. Nevertheless, in order to press onward to resolution of these matters, in view of the fast-approaching dispositive motion deadline, the Court is satisfied that the parties adequately met and conferred with respect to the issues raised in this motion as required by the federal and local rules. See Fed. R. Civ. P. 37(a)(1); Civ. L. R. 37. Thus, the Court will turn to substantive disputes over the interrogatories, addressing each in turn below.

         2.1 Interrogatory No. 1

         Interrogatory No. 1 is a contention interrogatory, seeking to learn Plaintiffs' legal theories and the factual bases for their infringement claims. See Fed. R. Civ. P. 33(a)(2) (allowing interrogatories to seek “opinion[s] or contention[s] that relat[e] to fact or the application of law to fact”); Tragozanos v. City of Algona, No. 09-C-1028, 2011 WL 2650852, at *1 (E.D. Wis. July 6, 2011) (“Contention interrogatories are used to elicit a description of the opposing party's theory and proof to be employed.”) (citing Zenith Elecs. v. WH-TV Broad. Corp., 395 F.3d 416, 420 (7th Cir. 2005)). As relevant here, Interrogatory No. 1 requests that Plaintiff map each limitation of each claim of the relevant patents onto each allegedly infringing product. (Docket #179-2 at 6-7). In response to this portion of the interrogatory, Plaintiffs provided charts which contain a side-by-side comparison of the limitations of each claim in the relevant patent and each accused product. Id.; (Docket #179-3 at 2-3).

         Chervon rejoins that these charts are unhelpful because they merely parrot the claim language twice, especially when it comes to the critical “20 Amp Limitation.” (Docket #178 at 11-13). For instance, with respect to Chervon's Kobalt K18-LB30A battery pack, Plaintiffs say that “[t]he plurality of Sanyo UR18650W2 battery cells of the Kobalt K18-LB30A battery pack are capable of producing an average discharge current greater than or equal to approximately 20 amps, ” making it equivalent to the limitation in claim 1 of the ‘290 patent requiring that “the battery cells [be] capable of producing an average discharge current greater than or equal to approximately 20 amps.” (Docket #179-3 at 4).

         Plaintiffs did not originally report any test results confirming that this battery has in fact been determined to meet the 20 Amp Limitation. Yet during this litigation and during inter parties review before the U.S. Patent and Trademark Office, Plaintiffs have relied on testing performed by one of their experts, Dr. Mehrdad Ehsani (“Ehsani”). In connection with the prior round of summary judgment briefing in 2015, Plaintiffs submitted supplemental charts that more specifically connect the infringing products to the facts learned in discovery. (Docket #91-1). Further, Ehsani submitted a declaration which provides some detail about Plaintiffs' interpretation of the 20 Amp Limitation, the tests Ehsani performed as they relate to that limitation, and the results of those tests. See (Docket #91-3); (Docket #185 at 3-4). Nevertheless, Chervon is unsatisfied, claiming that Plaintiffs never provided the raw data or methodologies Ehsani employed in his testing. Attempts to subpoena Ehsani's work from Plaintiffs have failed, and ongoing meet-and-confer efforts have yielded no supplemental responses. Without more specificity, Chervon argues, it cannot prepare for expert discovery. (Docket #178 at 12-13). Chervon contends that it should not have to wait for most of fact discovery to conclude before it learns the contentions underlying Plaintiffs' claims, especially when such information is routinely provided at the beginning of discovery in patent cases. Id. at 14.

         Plaintiffs respond by noting that they provided an additional supplemental response to Interrogatory No. 1 after Chervon filed the instant motion. (Docket #185 at 5). The supplemental response incorporates the supplementation previously included in Plaintiffs' 2015 summary judgment submissions, as well as citations to the evidence Plaintiffs believe support a finding that each limitation is met with respect to each accused product. Id. It also includes a narrative description of Plaintiffs' interpretation of the 20 Amp Limitation, Ehsani's testing methodology, and a promise to “identify the underlying test data. . .as soon as production of that data is complete.” Id. at 5-6, 16-17; (Docket #186-4 at 8-10). Plaintiffs also maintain that they should not be required to prove their infringement claims via an interrogatory response, especially not before the expert opinions underlying the contentions are due to be disclosed. (Docket #185 at 13).

         In its reply, Chervon insists that Plaintiffs' recent supplementation does not address its concerns about the methodologies and data Ehsani employed to assess the infringing products against the 20 Amp Limitation. (Docket #196 at 6-7). Specifically, Ehsani's averments do not, in Chervon's view, sufficiently describe “who performed all of the tests, what underlying testing protocols and methodologies Plaintiffs used, including the number times each battery pack was tested or the voltage and temperature thresholds (if any) that were used, or all of the raw data from their testing.” Id. Chervon also reports that Plaintiffs have not made good on their promise to start producing any of the underlying test data. Id. at 7.

         Whether Plaintiffs' existing response to Interrogatory No. 1 is adequate is influenced by the decisions of other district courts around the country dealing with similar questions. Preliminarily, however, it should be noted that some of these districts-the Eastern District of Texas and the Northern District of California in particular-have adopted local rules pertinent to contention interrogatories in patent infringement actions. See B-K Lighting, Inc. v Vision3 Lighting, 930 F.Supp.2d 1102, 1134 (C.D. Cal. 2013). These rules often require very early disclosure of infringement contentions and limit the plaintiff's ability to amend them later. See id.

         The policies animating those local rules-crystallizing legal theories early and ensuring those theories stay consistent throughout the case-are, to be sure, of significant value in ensuring expeditious trial preparation. See Id. But such rules do not exist in this District, and so the Court can only apply the underlying principles to the extent they are consistent with the parties' obligations under the Federal Rules of Civil Procedure, which control here. See O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006) (noting that the Federal Rules “replaced a system in which the issues had to be conclusively defined at the outset of litigation through the pleadings, with a system that relied on discovery and pretrial hearings to gradually identify the precise issues in dispute as more information became available”). Thus, at the ...

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