United States District Court, E.D. Wisconsin
WILLIAM E. DUFFIN U.S. Magistrate Judge
Court of Appeals for the Federal Circuit remanded this action
for a new trial regarding damages. Nordock, Inc. v. Sys.,
Inc., 681 Fed.Appx. 965 (Fed. Cir. 2017). The retrial
will require the finder of fact to determine what the
“article of manufacture” is in light of the
Supreme Court's decision in Samsung Elecs. Co. v.
Apple Inc., 137 S.Ct. 429, 196 L.Ed.2d 363 (2016). The
court articulated the factors relevant to that determination.
Nordock, Inc. v. Sys., Inc., No. 11-CV-118, 2017
U.S. Dist. LEXIS 192413 (E.D. Wis. Nov. 21, 2017). Nordock
Inc. now requests leave to serve 20 additional
interrogatories and conduct ten additional depositions
“to develop the record regarding the relevant article
of manufacture, quantity of infringing levelers sold, and
Defendant's profits on its infringing levelers or a
component of the infringing levelers.” (ECF No. 279 at
opposes the motion, calling it “premature” and
noting that it “has already provided its
relevant sales and financial records pertaining to the number
of the subject ‘hydraulic' dock levelers Systems
sold in the relevant period between issuance of the subject
patent on November 4, 2008 and trial in March, 2013.”
(ECF No. 280 at 1 (emphasis in original).) It says that it
ceased selling the infringing product immediately after
receiving the jury's verdict. (ECF No. 280 at 2.)
a party is limited to 25 interrogatories and 10 depositions.
Fed.R.Civ.P. 30, 33. The court may authorize additional
interrogatories and depositions “to the extent
consistent with Rule 26(b)(1) and (2).” Fed.R.Civ.P.
30(a)(2) and 33(a)(1). A party is not permitted additional
interrogatories or depositions if they would be
“unreasonably cumulative or duplicative or [the
information] can be obtained from some other source that is
more convenient, less burdensome, or less expensive.”
Fed.R.Civ.P. 26(b)(2)(C)(i). The court likewise will deny
leave for additional discovery if “the party seeking
discovery has had ample opportunity to obtain the information
by discovery in the action” or the information sought
is not relevant to a party's claim or is disproportionate
to the case. Fed.R.Civ.P. 26(b)(1), (2)(C)(ii)-(iii).
says that before the first trial it served 20 interrogatories
(five fewer than permitted by Rule 30) and conducted eight
depositions (two fewer than permitted by Rule 33). (ECF No.
279 at 1.) Some courts have required parties seeking
additional depositions or interrogatories to first exhaust
available discovery and then support the motion with a
“‘particularized showing' of necessity”
of each additional interrogatory or deposition. Illiana
Surgery & Med. Ctr. LLC v. Hartford Fire Ins. Co.,
2008 U.S. Dist. LEXIS 97770, *6 (citing Duncan v. Paragon
Publ'g, Inc., 204 F.R.D. 127, 128 (S.D. Ind. 2001));
see also Scott v. City of Sioux City, Iowa, 298
F.R.D. 400, 402 (N.D. Iowa 2014). Moreover, it is helpful if
the moving party identifies the proposed additional
deponent(s) and presents the proposed additional
interrogatories, explaining why each is necessary.
See § 2168.1 Number of Interrogatories, 8B Fed.
Prac. & Proc. Civ. § 2168.1 (3d ed.).
contends that the retrial of damages requires discovery on
the “article of manufacture” issue. The court
agrees. The Supreme Court's decision in Samsung
represented a significant shift in the law regarding damages
under 35 U.S.C. § 289. Therefore, it is plausible, if
not likely, that Nordock's initial discovery would not
have encompassed the matters that will be most relevant at
the retrial. The parties even seemed to acknowledge as much
when they agreed during the November 29, 2017 telephonic
scheduling conference that additional discovery was
necessary. (ECF No. 271.)
does not follow from the fact that additional discovery is
needed on the “article of manufacture” issue and
sales related to that article that Nordock needs essentially
the full allotment of depositions and interrogatories
authorized under the Rules. “Responding to
interrogatories is ‘inherently expensive and
burdensome.'” Duncan v. Paragon Publ'g,
Inc., 204 F.R.D. 127, 128 (S.D. Ind. 2001) (quoting
Herdlein Technologies, Inc. v. Century Contractors,
Inc., 147 F.R.D. 103, 105 (W.D. N.C. 1993)). The same
can be said about depositions.
court acknowledges that further discovery is necessary but
finds that Nordock has failed to show that a basis exists for
permitting it to exceed the number of interrogatories and
depositions authorized under the Federal Rules. According to
its motion, Nordock still has two depositions and five
interrogatories unused. It does not even attempt to explain
why the remaining discovery is not enough to get the
information it needs on the damages issue to be tried in the
new trial. Having failed to demonstrate that two depositions
and five interrogatories are insufficient, Nordock's
motion is denied.
allotted discovery proves insufficient, Nordock may again
seek relief from the court, but it must support its motion
with a particularized showing. See Archer Daniels Midland
Co. v. Aon Risk Servs., Inc. of Minnesota, 187 F.R.D.
578, 586 (D. Minn. 1999). With respect to depositions, this
generally will require that Nordock identify the proposed
deponent, articulating the relevant information it seeks from
that person, and explaining why it was unable to obtain it
through other means. See, e.g., San Francisco
Health Plan v. McKesson Corp., 264 F.R.D. 20, 21 (D.
Mass. 2010). With respect to interrogatories, generally a
motion should be supported by the proposed interrogatories
and an explanation as to why the interrogatories are
IS THEREFORE ORDERED that Nordock Inc.'s Motion
for Leave to Expand the Number of Interrogatories and