United States District Court, E.D. Wisconsin
MILWAUKEE ELECTRIC TOOL CORPORATION, METCO BATTERY TECHNOLOGIES LLC, AC MACAO COMMERCIAL OFFSHORE LIMITED, and TECHTRONIC INDUSTRIES CO. LTD., Plaintiffs,
SNAP-ON INCORPORATED, Defendant.
STADTMUELLER U.S. DISTRICT JUDGE.
Snap-On Incorporated (“Snap-On”) filed a motion
to compel discovery responses on June 2, 2017. (Docket #156).
Snap-On complains that Plaintiffs have not adequately
responded to interrogatories concerning dates of conception
and reduction to practice, marking of products, and
identifying commercial embodiments of the patents-in-suit.
For the reasons stated below, the motion will be granted in
part and denied in part.
STANDARD OF REVIEW
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,
Court will address the interrogatories at issue here in turn.
The Court will consider only the parties' substantive
disputes relating to these discovery requests. Despite
Plaintiffs' contention that the parties did not meet and
confer on these matters as required by the federal and local
rules, see Fed. R. Civ. P. 37(a)(1); Civ. L. R. 37,
the evidence presented satisfies the Court that sufficient
conciliation efforts were made, except to the extent Snap-On
concedes that certain topics were not covered, as explained
Common Interrogatory No. 2, Snap-On requested that Plaintiffs
identify, for each claim in each patent-in-suit, “the
earliest priority date to which you contend that such claim
is entitled and describe with particularity all factual and
legal bases for each such claimed priority date, . . .and
if you intend to rely on a conception date[, ] an
identification and description in detail of all facts and
circumstances relating to the asserted claim's
conception, diligence, and reduction to practice.”
(Docket #158-1 at 3). In response, Plaintiffs asserted a
priority date (the date of reduction to practice) of
“at least as December 12, 2002, ” and a
conception date of “at least as early as November 21,
2002.” Id. at 7.
parties' dispute focuses on the qualifying language in
Plaintiffs' response. Snap-On seeks to hold Plaintiffs to
particular dates for these events, claiming that merely
proposing the latest possible date is insufficient. Thus,
Snap-On asks that the Court order Plaintiffs to delete the
qualifying language or identify the earliest dates on which
they contend that these events occurred.
assert that their qualified responses are adequate at this
time. First, because of the gradual nature of the development
process, Plaintiffs complain that they cannot in good faith
designate a single date for these events. Second, Plaintiffs
argue that Snap-On has not identified any potential prior art
references with dates of conception or reduction to practice
earlier than the dates Plaintiffs have presently identified.
In Plaintiffs' view, this makes the need to identify a
precise date unnecessary, as there is no competing prior art
that would make an earlier date relevant.
Court finds Snap-On's request to be reasonable. Snap-On
has in fact offered evidence showing at least colorable
claims of prior art that precede the dates Plaintiffs have
identified. See (Docket #193 at 4-6). This
development renders it important for Snap-On to know whether
Plaintiffs will claim dates that are any earlier than the
current dates. See Invacare Corp. v. Sunrise
Med. Holdings, Inc., No. 04-CV-1439, 2005 WL 1750271, at
*3 (N.D. Ohio Jan. 21, 2005) (plaintiff's large
date-range for conception and reduction to practice
“entirely leave[s] open the critical time period”
in light of prior-art assertions). Plaintiffs have conceded
as much. (Docket #174 at 13-14) (“Nothing more is
necessary until or unless Snap-on makes the issue relevant by
identifying one or more prior art references with dates near
in time to the asserted latest date [of] conception.”).
estimate of such dates will do when a party cannot in good
faith pick a precise date. See Layne Christensen Co. v.
Purolite Co., Civil Action No. 09-2381-JWL-GLR, 2011 WL
231400, at *3 (D. Kan. Jan. 24, 2011); Phillip M. Adams
& Assoc., L.L.C. v. Fujitsu Ltd., No. 1:05-CV-64 TS,
2010 WL 1330002, at *2 (D. Utah Mar. 29, 2010). But it is not
enough at this late stage for Plaintiffs to produce a pile of
documents and claim that they “could be interpreted as
evidence of conception well prior to the latest possible date
identified.” (Docket #174 at 12). Plaintiffs offer
little in the way of concrete reasons why they cannot form a
more precise belief about the relevant dates, and Snap-On
should not be left guessing until the briefs on such matters
are filed. See In re Papst Licensing GMBH & Co. KG
Litig., 252 F.R.D. 7, 17 (D.D.C. 2008) (rejecting
plaintiff's attempt to avoid taking a stand on date of
conception despite evidence in its possession enabling it to
the Court convinced that Plaintiffs' reference to
documents pursuant to Rule 33(d) is sufficient. That Rule
if the answer to an interrogatory may be determined by
examining, auditing, compiling, abstracting, or summarizing a
party's business records (including electronically stored
information), and if the burden of deriving or
ascertaining the answer will be ...