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Milwaukee Electric Tool Corp. v. Snap-On Inc.

United States District Court, E.D. Wisconsin

July 24, 2017

MILWAUKEE ELECTRIC TOOL CORPORATION, METCO BATTERY TECHNOLOGIES LLC, AC MACAO COMMERCIAL OFFSHORE LIMITED, and TECHTRONIC INDUSTRIES CO. LTD., Plaintiffs,
v.
SNAP-ON INCORPORATED, Defendant.

          ORDER

          J.P. STADTMUELLER U.S. DISTRICT JUDGE.

         Defendant 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.

         1. STANDARD OF REVIEW

         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 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 further below.

         2.1 Priority Date

         In 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.

         The 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.

         Plaintiffs 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.

         The 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.”).

         An 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 do so).

         Nor is the Court convinced that Plaintiffs' reference to documents pursuant to Rule 33(d) is sufficient. That Rule provides that

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 ...

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