The opinion of the court was delivered by: Arlander Keys, United States Magistrate Judge
MEMORANDUM OPINION AND ORDER
The parties in this suit have each filed cross-motions to compel discovery from the other party. The Plaintiff, Lakewood Engineering and Manufacturing Co. ("Lakewood"), moves the Court for an order compelling the Defendant, Lasko Products, Inc. ("Lasko"), to produce all materials relating to opinions of counsel that Lasko received relating to the validity and alleged infringement of Lakewood's patent, as well as to produce all documents that Lasko received from a third party, Interfreight. Lasko has filed motions to compel document discovery, written discovery, and deposition discovery from Lakewood. For the reasons set forth below, the parties' motions are granted in part and denied in part.
Lakewood filed suit against Lakewood for willful infringement of its `822 fan motor patent. Upon learning of Lakewood's lawsuit against Lasko for patent infringement, Lasko's outside opinion counsel, RatnerPrestia, provided Lasko with opinions relating to the alleged infringement and validity of the `822 patent. Lasko has also retained Woodcock Washburn as its trial counsel in this suit.
Lasko has asserted the affirmative defense of reliance on opinion of counsel to defend against the charge of willful infringement. Lasko has also asserted other affirmative defenses, including invalidity and inequitable conduct, and has filed a counterclaim against Lakewood. Lasko has also amended its answer and counterclaims to include fraudulent misrepresentation. Further, in amassing discovery to defend against the charges brought by Lakewood, Lasko argues that Lakewood has not adequately produced various documents and other types of discovery necessary for Lasko to prosecute its claims.
Fact discovery in this case closed on October 1, 2002. The Court addresses each of the parties' respective motions in turn.
Pursuant to Rule 37 of the Federal Rules of Civil Procedure, a party may file a motion to compel discovery when the other party fails to respond to a discovery request or where the response is inadequate, such as an incomplete or evasive response. See FED. R. Civ. P. 37(a)(2), (a)(3). The Court has broad discretion in ruling on discovery motions. Videojet Sys. Intl, Inc. v. Inkjet, Inc., No. 95 C 7016, 1997 WL 138008, at *1 (N.D. Ill. Mar. 19, 1997). Parties may obtain discovery "regarding any matter, not privileged, which is relevant to the subject matter" of the action. FED. R. CIV. P. 26(b)(1). Relevance is broadly defined, and includes information that may "not be admissible at trial [but is discoverable] if [it] appears reasonably calculated to lead to the discovery of admissible evidence." Id. A request for discovery "should be considered relevant if there is any possibility that the information sought may be relevant to the subject matter of the action." Videojet, 1997 WL 138008, at *1 (internal citations omitted).*fn1
I. Lasko's Motion to Compel Document Discovery
A. E-Mail and Other Documents in Electronic Form
It appears that Lakewood has produced various E-Mail and other documents in electronic form generated or received by the alleged inventor of the `822 patent, Yung Chen. To the extent that Lakewood produced these electronic documents after the close of discovery, the Court finds that Lakewood has not engaged in a good faith effort to produce all requested discovery in a timely manner. However, the Court concludes that the costs to Lasko in adding this specific request to its other numerous discovery requests is negligible, and therefore, will not order Lakewood to reimburse Lasko for its expenses in requesting such documents. Further, to the extent that Lakewood has not produced all of the E-Mails generated or received by Mr. Chen relating to the patent, the Court orders that Lakewood produce these documents.
B. Un-Redacted Copy of LKW 01397
In its Reply, Lasko admits to finally receiving an un-redacted copy of Lakewood's document numbered LKW 01397. Thus, Lakewood's motion to compel this particular document is moot.*fn2
C. Lakewood's Outbound Shipping Files relating to Supreme or Sagitta
Similarly, Lakewood has finally produced its shipping files relating to Supreme or Sagitta. However, the Court finds that, to the extent these documents are duplicative of the files obtained by Lasko through its subpoena of third-party Interfreight, Lakewood must reimburse Lasko for its expenses in conducting discovery upon Interfreight. If Lakewood had produced these shipping documents in a timely manner, Lasko would not have been forced to locate these documents through Interfreight and would have saved itself much time and expense. Further, as Lasko has only recently received these documents from Lakewood, the Court orders limited discovery on any new matters, relevant to Lasko's defense and not previously addressed or discovered, which may arise from these newly discovered shipping files.
D. Reports, Analysis, or Evaluations Relating to the "Matrix of
Material" Disclosed and Claimed in the `822 and `863 Patents
The patent in suit, patent `822, describes a "matrix of material" that is applied on one of its rotors in order to reduce the torque output of the motor. (Def.'s Ex. 58.) Lasko is seeking production from Lakewood of all documents relating to this "matrix of material" in response to its First Set of Requests for Production, as well as its Third Set of Requests for Production. Lasko believes that such documents may exist because of Mr. Chen's declaration at his deposition that he had discovered the importance of the "matrix of material" in connection with sending the rotors of development motors to a laboratory for analysis. Although Mr. Chen never testified that any reports, analyses, or evaluations relating to the matrix actually exist, the documents, whether relied upon by Mr. Chen in arriving at his conclusion or not, are still discoverable if they do exist. In its Third Set of Requests, Lasko requested any reports, tests, analyses, or other evaluations or descriptions relating to the subject matter identified in the `822 and `862 patents as a "matrix of material . . . including any tests . . . performed at the request of or for Mr. Yung Chen. . . ." (Def.'s Ex. 39.) (emphasis added). The "matrix of materials" is relevant to the patent at issue, and any documents referring to such materials should be turned over to Lasko. of course, if no such documents exist, then the issue is moot, but Lakewood should thereby make a formal declaration to Lasko and represent that no such documents exist or are in Lakewood's possession.
E. Underwriters' Laboratories ("UL") Documents
The UL files sought by Lasko depict and describe the past and present fan product design and performance data for any of its fan products that have ever contained a 4-pole PSC motor. The parties had previously agreed to supply one another with UL documents from the first listing of each respective party's motors with UL and any supplementation or modification of such listings. Lasko claims that Lakewood's production is incomplete, because Lasko seeks UL documentation regarding all 4-pole PSC motors. The Court agrees that all 4-pole PSC motors are, arguably, the prior art of Lakewood and are relevant in this case, and the production of these UL documents is likely to lead to admissible evidence. Thus, Lakewood must produce all UL documentation regarding it 4-pole PSC motors.
Similarly, Lakewood claims that Lasko had not produced a single UL document as of the date of its Response. Lakewood claims, and the Court agrees, that such information is relevant to determine the date when Lasko allegedly first infringed upon Lakewood's patent. of course, as both parties had previously agreed to share each other's UL documents, and doing so will lead to relevant evidence, Lasko must also produce its aforementioned UL documents to Lakewood.
F. Lakewood's Privileged Document Log
Lasko claims that Lakewood's privilege log, including the revised privilege log recently provided to Lasko, is deficient and that Lasko is unable to "assess the applicability of the privilege" as required by Rule 26. However, the Court has reviewed Lakewood's revised privilege log and finds that it sufficiently comports with the requirements of Rule 26. A sample of the descriptions of the privileged documents include the following:
Legal advice re: issued `822 patent;
Re: issue fee and legal advice re: a continuation
application in design case;
Re: design application and seeking information for
Office Action to patent application that issued as `822
Legal advice re: foreign filing of patent application;
Legal advice and enclosing copy of application filed
with Patent Office;
Re: enclosure of drawings re: motor configuration as
follow-up to request for legal advice re: application;
Internal memo re: issue fee for continuation of
Re: drawings from FT Industries;
Legal advice re: patent application and claim
Re: and enclosing cease and desist letter sent to J.
Re: enclosure of correspondence from Supreme including
nondisclosure agreement signed in 9/97.
(Def.'s Reply Ex. 6.)
The Court finds that Lakewood's descriptions are neither vague nor ambiguous and to provide any more detail would likely divulge privileged information, further, the Court finds that Lasko can adequately assess the applicability of the privilege based on Lakewood's ...