Name of Assigned Judge or Magistrate Judge Amy J. St. Eve Sitting Judge if Other than Assigned Judge
The Court grants Morningware's motion to compel  and its request for attorneys' fees incurred in connection with its motion and denies Morningware's request for costs related to taking Messrs. Choi, Cha, and Kim's depositions. Morningware shall depose Mr. Kim on or before 10/21/11, and it shall submit an attorneys' fee petition on or before that date.
O[ For further details see text below.] Notices mailed by Judicial staff.
Before the Court is Morningware's motion to compel the deposition of Charles Kim and its request for attorneys' fees. Hearthware opposed the motion and also seeks attorneys' fees. For the reasons discussed below, the Court grants Morningware's motion to compel and its request for attorneys' fees incurred in connection with its motion and denies Morningware's request for costs related to taking Messrs. Choi, Cha, and Kim's depositions. Morningware shall depose Mr. Kim on or before October 21, 2011. The Court also denies Hearthware's request for attorneys' fees.
On July 20, 2009, Plaintiff Morningware, Inc. ("Morningware"), filed its Complaint against Hearthware Home Products, Inc. ("Hearthware"), alleging that Hearthware had commercially disparaged Morningware's goods, had committed the common-law tort of unfair competition, and had violated the Deceptive Trade Practices Act of Illinois, as well as the unfair competition and product-disparagement provisions of the Lanham Act. (R. 1, Complaint.) Separately, Hearthware brought an action against Morningware alleging that Morningware's use and sale of the Halogen Convection Oven Model H0-1200 infringed Hearthware's U.S. Patent No. 6,201,217 ("the '217 patent"). (IBC-Hearthware, Inc. v. Morningware, Inc., No. 09-CV-4903 (N.D. Ill.) (R. 1).) The Court consolidated both cases on August 26, 2009. (Id.,R. 19.)
On October 9, 2009, Morningware issued interrogatories to Hearthware, including an interrogatory that requested Hearthware to "[d]describe all efforts by Hearthware (including its agents and attorneys) to determine whether Morningware's counter-top ovens infringed any claims of the patent prior to the time Hearthware filed the Complaint on August 10, 2009." (R. 110-2, Hearthware's Objs. and Resps. to First Set of Interrogs. at 9.) Morningware clarified that "the term 'efforts' includes, but is not limited to the identity of all individuals who were involved in such efforts, a detailed description of the activities of each individual identified, the dates when such efforts took place, all documents and things considered by each individual, and all documents relating to any such efforts including any opinions that were prepared." (Id.) On March 8, 2010, the Court granted Morningware's motion to compel Hearthware to respond to certain of Morningware's interrogatories, including the one described above, and ordered that Hearthware submit supplemental responses to such interrogatories produce a supplemental privilege log. (R. 111)
In its supplemental response to Morningware's interrogatories, Hearthware stated that its counsel conducted a patent infringement analysis with respect to the '217 Patent between early June and August 2009 and that counsel conferred with Hearthware employees Mr. Gene Kim and Ms. Yoo Jin Jung regarding tests that Hearthware engineers P.G. Choi and E.Y. Cha performed. (R. 202, Morningware's Mot. at 2.) On its supplemental privilege log, Hearthware also listed Messrs. Choi and Cha as having performed product testing at Hearthware's attorney's request.*fn1 (R. 202-2, Hearthware's Supp. Priv. Log at 2.) Based on that information, Morningware deposed Messrs. Choi and Cha on July 21, 2011. (R. 202-4, Cha Dep. and 202-5, Choi Dep.) The parties dispute the import of Messrs. Choi and Cha's deposition testimony-Morningware contends that the two employees did not perform the testing as Hearthware had previously represented to them, and Hearthware contends that these two employees testified that they may have been involved with the testing, but they simply do not remember the testing. Hearthware's counsel also posits that Mr. Choi, whose first language is Korean, did not understand the questions Morningware's counsel asked him, despite having a Korean interpreter present at the deposition. A review of Messrs. Choi and Cha's deposition transcripts reveals that neither witness was able to testify intelligently about the pre-filing analysis of Morningware's oven.
It is uncontested that Morningware discovered, for the first time, during Mr. Choi's deposition that Mr. Charles Kim, one of Hearthware's engineers, performed pre-filing testing of Morningware's oven. Hearthware concedes that Mr. Kim had a "greater role in the hands-on application" of the test (R. 208, Hearthware Resp. at 11) and that it did not identify Mr. Kim as having been involved with the testing in its discovery responses or supplemental privilege log, despite the Court's prior order on Morningside's motion to compel. Indeed, after Mr. Choi's deposition, Hearthware further supplemented its interrogatory answer to reflect that Mr. Kim was involved with the pre-filing testing. (Id.)
After Messrs. Choi and Cha's depositions on July 21, 2011, Hearthware agreed verbally to make Mr. Kim available for a deposition. (R. 208-1, Aug. 9, 2011 letter from Mr. Tousi to Mr. Bishop.) On August 8, 2011, Morningware filed a motion to compel Mr. Kim's deposition. (R. 195.) On August 9, 2011, Hearthware's counsel sent a letter to Morningware's counsel, confirming his agreement to allow Morningware to depose Mr. Kim and proposing August 18, 2011 for the deposition. (Aug. 9, 2011 letter from Cameron Tousi to Edward Bishop and Nicholas Lee.) Hearthware's counsel also confirmed that they produced "documents relating to Hearthware's pre-filing investigation," including IBC-H015022-31, to Morningware.*fn2 (Id.) The following day, Morningware withdrew its motion to compel without prejudice. (R. 197.) Due to scheduling conflicts, the parties thereafter rescheduled Mr. Kim's deposition to August 30, 2011. (Morningware's Mot. at 11.) ...