The opinion of the court was delivered by: Magistrate Judge Morton Denlow
MEMORANDUM OPINION AND ORDER
This case comes before the Court on Defendant's motion for sanctions and Plaintiffs' motion to compel production of documents. Both motions have been referred to this Court from District Judge Amy J. St. Eve, as they are interrelated. Specifically, the motions arise from an incident in which a former contract employee of Defendant Lear Corporation ("Lear") emailed sensitive Lear documents to Plaintiff Johnson Controls Interiors, Inc. ("JCI"). Lear argues that JCI both attempted to bribe this potential witness and breached its duty to timely notify Lear of its possession of the documents. For its part, JCI maintains that it did nothing wrong and that Lear failed to produce the documents when it should have in the course of discovery. For the reasons explained below, this Court partially grants Lear's motion for sanctions and denies JCI's motion to compel.
These motions arise from a discovery dispute in a patent case. In the underlying case, Plaintiffs JCI and the Chamberlain Group, Inc. ("Chamberlain") allege that Lear infringed upon their Universal Garage Door Opener ("UGDO") patents, while Lear asserts that it legally designed around the patents.
Both motions relate to events surrounding a man named Prashant Mhamunkar ("Mhamunkar"). Mhamunkar, an engineer, was a former Lear contractor through a company called Wipro who worked on programming the UGDO device, as Lear attempted to design around Plaintiffs' patents. The present motions involve communications beginning in May 2009 between JCI and Mhamunkar, as well as documents Mhamunkar provided to JCI that may be relevant to Lear's alleged patent infringement.
A. Anonymous Emails Received
Mhamunkar sent an unsolicited email to JCI on May 18, 2009 from the anonymous email address "email@example.com," calling himself "Kova Kova." The then-anonymous Mhamunkar claimed to have "all LEAR data, design, history, algorithms etc about the garage door opener UGDO that was based upon JCI Homelink." DX 2.*fn1 JCI's Global Product Director James Trainor ("Trainor") responded via email on June 3, 2009, inviting Mhamunkar to call Trainor, but cautioning that JCI was in "active litigation" with Lear and that if he had confidentiality obligations to Lear, they should not talk. DX 4. Trainor informed his boss, Paul Lambert ("Lambert"), about the communications, and also brought it to the attention of JCI's in-house counsel.
That summer, Mhamunkar also sent two Lear documents as attachments to anonymous emails, but JCI denies viewing the attachments at that time. On July 1 and 2, Mhamunkar emailed two apparently unsolicited files to Trainor, one entitled "Ugdo History" and the other "Executive Summary Chamberlain Code." Trainor testified in his May 12, 2010 deposition that he never opened the documents, but sent them to JCI's in-house counsel. DX 1 at 147. Sandra Quick, a JCI Vice President and General Counsel, declares that she instructed Trainor not to open the attachments, because JCI did not at that time know the identity of Kova Kova or know whether he was bound by a confidentiality agreement with some third party. She asserts that she has no recollection of seeing the documents before this Court's hearing on the present motions. Likewise, JCI's outside counsel represent that they did not view the attachments until April 18, 2010, shortly before they finally turned the documents over to Lear.
Although Lear asserts that Lambert testified to viewing the attached documents, the JCI executive only admitted to viewing the Kova Kova emails, not to opening the attachments. Lear cites deposition testimony from Lambert that he had a "recollection of" an email dated June 7, 2009, but that email precedes the July 1 and 2 transmissions containing the attachments. DX 3 at 79--80.
Although JCI and its attorneys may not have viewed the documents, the two attachments do appear to contain privileged and confidential information. The "Executive Summary" is a one-page document on Lear letterhead dated August 31, 2004 and marked "Privileged/Confidential information prepared under direction of counsel." DX 5 at J037183. It lays out Lear's concerns that JCI/Chamberlain will change the code on their UGDO and discusses the potential value of a lawsuit against JCI for a product that may have infringed a Lear patent. The "Ugdo History" document is a one-page spreadsheet containing a "Timeline" apparently related to Lear's UGDO development. DX 4 at J037180.
Meanwhile, JCI attempted to probe the still-anonymous Mhamunkar for information about himself and what he knew. On July 6, 2009, after conferring with JCI's in-house counsel, Trainor emailed Mhamunkar to "confirm that you are not a current Lear employee and that you have honored and will honor whatever confidentiality obligations you owe Lear." DX 6 at J037196. Mhamunkar responded that he no longer worked for Lear but said nothing of his confidentiality obligations.
As time passed, it became clear that the man behind the Kova Kova emails wanted something in exchange for his information. In August 2009, Mhamunkar emailed, "I think I have interesting stuff for you. But at this point I want to see this as a win win relation, so lets be creative." DX 7 at J037243--44. Trainor responded that he wanted a "situation that is mutually beneficial to both parties" but that they should meet in person to "bridge the trust gap that exists as a result of communicating through anonymous emails and phone calls." Id. Trainor testified that JCI never intended to pay Mhamunkar for his information.
B. Personal Meeting and Follow-Up
Eventually, JCI became interested enough in the Kova Kova emails and phone calls to arrange a personal meeting. Trainor met with Mhamunkar on September 9, 2009 in Munich, Germany, detouring from a business trip in Cologne specifically to meet the potential witness. At this ninety-minute meeting, Trainor finally confirmed Mhamunkar's identity and learned that he contacted JCI because "he was involved in the development of the [UGDO] device, that he felt that it was a task . . . that he was uncomfortable executing because of the nature of the product and the manner in which it was being developed." DX 1 at 221--22. Mhamunkar also expressed interest in obtaining a Ph.D., which Trainor took to mean that Mhamunkar wanted JCI to pay for the degree in exchange for information. Of this meeting, Trainor wrote that he had reinforced JCI's unwillingness "to compromise the success of our suit by accessing information unethically or illegally." DX 9 at J037460. Around the same time, Mhamunkar also met with Patrick Nettesheim, JCI's in-house counsel in Germany.
After these meetings, Mhamunkar continued to press Trainor for "a smart way to benefit both sides," complaining that it would be "very difficult for me to get in trouble for good Karma." DX 9 at J037451. In the November 20 email that Lear points to as JCI's offer of a bribe, Trainor responded to Mhamunkar, One point I would like to reinforce is that Johnson Controls has recently been awarded grant monies in support of our hybrid battery initiative, which in our discussion in Munich, you expressed interest in. We have and will continue to have significant opportunities within our company related to this new market segment for qualified candidates, both in the US and Germany. Additionally, one of the benefits Johnson Controls provides its entire global staff is tuition reimbursement.
Again, we would certainly provide you with independent legal representation related to the current litigation should you desire.
Mhamunkar apparently took Trainor's email as an offer and replied with a counteroffer of his own. ...