Name of Assigned Judge Sitting Judge if Other or Magistrate Judge Amy J. St. Eve than Assigned Judge
The Court grants in part and denies in part Sloan's motion to strike Zurn's "late-asserted" invalidity defense and to compel discovery and award sanctions . The Court orders Zurn to produce, by 5/4/12, 1) all worn valves it fabricated using the Zurn Machine; 2) all non-privileged documents relating to those valves, including, but not limited to, documents describing the procedure used and parameters employed in making them; and 3) a detailed privilege log. Zurn must also produce a Rule 30(b)(6) witness for a deposition consistent with the terms of this order, and it must bear the costs of the deposition as well as the fees for one of Sloan's attorney's time spent at the deposition. The Court denies Sloan's motion to strike Zurn's invalidity defense, but orders Zurn to produce all relevant, non-privileged documents related to that defense and a privilege log by 5/4/12, and to produce a witness, if requested, to testify about that defense in a deposition. Zurn must also pay Sloan's reasonable attorney's fees and costs associated with such additional discovery. Finally, the Court orders Zurn to pay Sloan's reasonable attorney's fees and costs incurred during the preparation of its motion to compel and reply in support thereof. Sloan should submit a fee petition no later than 21 days after the close of fact discovery in this case. Zurn shall have 7 days thereafter in which to respond. The parties shall submit a joint proposed amended scheduling order to the Court by 4/20/12.
O[ For further details see text below.] Notices mailed by Judicial staff.
Before the Court is Plaintiff Sloan Valve Company's ("Sloan") motion to strike Defendants Zurn Industries, LLC's and Zurn Industries, Inc.'s ("Zurn") "late-asserted" invalidity defense and to compel discovery and award sanctions for failure to provide discovery. For the following reasons, the Court grants Sloan's motion in part and denies it in part. The Court further grants in part and denies in part Sloan's request for attorney's fees and costs.
Sloan filed this lawsuit on January 13, 2010, alleging that Zurn had appropriated its "dual mode flush valve invention," therefore infringing U.S. Patent No. 7,607,635, entitled "Flush Valve Handle Assembly Providing Dual Mode Operation" (the "'635 Patent") and the corresponding U.S. Patent Application Publication No. 2006/0151729 (the "'729 Patent Application"). (R. 1.) On February 8, 2010, Zurn filed its Answer, Counterclaims, and Affirmative Defenses, asserting invalidity and non-infringement of the '635 Patent, as well as inequitable conduct during Sloan's prosecution of the '635 Patent. (R. 17.)
On April 26, 2010, Zurn served its supplemental Initial Invalidity, Unenforceability and Non-Infringement Contentions ("Initial Invalidity Contentions") on Sloan, in which it stated the following:
Claims 1, 5, 7, 8, 12, 14, 18, 19, 28, 29, 30, 31, 33 and 34 of [the '635 Patent] are invalid under 35 U.S.C. § 102(a) or (b) as anticipated by a worn flush valve. Zurn has performed life tests on a handle assembly and reported the findings in ZP000029 to ZP000037. The life cycle test simulates wear that occurs during normal operation of the handle assembly when attached to a flush valve. Thus, in the description [in the attached chart], the "worn flush valve" refers to a Zurn flush valve having a brass bushing handle assembly. Specifically, the handle is a handle used in Zurn's flush valve Z6000AV-2-WS1-H (ZP000068-72), which was offered for sale at least as early as April 28, 2003.
(R. 64-1 at 2.) Sloan filed a motion to compel Zurn to supplement its Initial Invalidity Contentions with, among other things, additional information regarding Zurn's fabrication and testing of the fabricated valve (the "Worn Zurn Flush Valve"). (R. 63.) The Court granted Sloan's motion. (R. 71.)
Zurn served supplemental contentions on May 14, 2010, which included some additional information regarding the dimensions of the Worn Zurn Flush Valve, but did not specify when Zurn created the valve or provide information regarding testing of the fabricated valve. Sloan then served an interrogatory on Zurn, asking it to describe specific information regarding the alteration of the valve handle and the testing thereof. (R. 238-9 at 1, Interrog. 11.) Zurn responded that the fabrication of the handle was completed on or about March 6, 2009, but it did not state when the procedure began or give all of the details of the procedure. (Id. at 2.) Zurn stated, among other things, that "[a]pproximately 300,000 flushes were applied to the flush valve handle using Zurn's handle life test machine" and that the "life cycle test is monitored throughout the life of the test." (Id.)
Sloan then filed a second motion to compel Zurn to fully answer the interrogatory and to produce documents that Sloan had requested regarding the worn valves. (R. 86.) On August 13, 2010, the parties appeared before the magistrate judge to address certain discovery disputes. (R. 109, Transcript of Aug. 13, 2010 Hrg.) The magistrate judge entered an agreed order, pursuant to which Zurn's counsel was to provide a letter identifying certain supplemental information and certifying that it was not withholding responsive documents. (R. 108.)
On August 24, 2010, Sloan inspected the life cycle machine that Zurn used to fabricate the Worn Zurn Flush Valve (the "Zurn Machine") and discovered from Zurn's counsel that Zurn had created 20-25 "worn valves" with the Zurn Machine, which it never produced. On August 27, 2010, Zurn's counsel sent a letter to Sloan's counsel, essentially stating that its document production was complete.*fn1 (R. 111-3.)
On September 20, 2010, Sloan filed a third motion to compel based on the information it learned during its inspection of the Zurn Machine. (R. 110.) The parties again appeared before the magistrate judge on October 5, 2010 to discuss Sloan's motion. (R. 140, Transcript of Oct. 5, 2010 Hrg.) The magistrate judge ordered Zurn to supplement the contents of its certification regarding its ...