PHILIPPI-HAGENBUCH, INC. and LEROY G. HAGENBUCH, Plaintiffs,
WESTERN TECHNOLOGY SERVICES INTERNATIONAL, INC., and WOTCO, INC., Defendants.
BYRON G. CUDMORE, Magistrate Judge.
This matter comes before the Court on Plaintiffs Philippi-Hagenbuch, Inc.'s and LeRoy G. Hagenbuch's (collectively Hagenbuch) Motion to Compel Discovery (d/e 32) (Motion). For the reasons set forth below, the Motion is ALLOWED in part.
Hagenbuch filed this action on March 30, 2012. Hagenbuch owns two patents both entitled "Process for Three-Dimensional Modeling and Design of Off-Highway Dump Bodies." U.S. Patent No. 7, 369, 978, issued May 6, 2008 (978 Patent); and U.S. Patent No. 7, 412, 357, issued August 12, 2008 (357 Patent) (collectively the Design Patents). Hagenbuch also owns two patents both entitled "Baffled Tank for a Vehicle." U.S. Patent No. 6, 547, 091, issued April 15, 2003 (091 Patent); and U.S. Patent No. 7, 735, 507, issued June 15, 2010 (507 Patent) (collectively the Tank Patents). Amended Complaint (d/e 44) (Complaint), ¶¶ 17-18 and Exhibit 1-4 (All four patents collectively referred to as the Patents in Suit). Hagenbuch alleges that Defendant Western Technology International, Inc. (Westech) willfully infringed on the Patents in Suit. Complaint, ¶¶ 20-36.
On November 21, 2012, Hagenbuch served written discovery requests on Westech. Hagenbuch sought technical, sales, and marketing information regarding the accused tanks and the accused processes for customized truck body designs. Hagenbuch did not include any time limitations on the requests. See Plaintiff's Memorandum in Support of Their Motion to Compel Discovery (d/e 33) (Hagenbuch Memorandum), Exhibit C, Request for Production of Documents (d/e 34), and Exhibit D Interrogatories to Defendant (d/e 35). In response, Westech limited its responses regarding the Design Patents to May 1, 2008, because the earliest date of issue of those two patents was May 6, 2008. Westech limited its responses regarding the Tank Patents to March 30, 2006, because the six-year statute of limitations may limit Hagenbuch's available damages to that date. See Motion, Exhibit E, Westech Response to Document Requests, and Exhibit F, Westech Response to Interrogatories; see also 35 U.S.C. § 286. Westech has now agreed to provide responses regarding the Tank Patterns back to the first issuance date of the two patents, April 15, 2003. Defendant Westech's Opposition to Plaintiffs' Motion to Compel (d/e 45) (Opposition), at 4. The Motion is, thus, moot with respect to this information.
Hagenbuch moves to compel Westech to provide responses back to the first application date of the Design Patents and Tank Patents respectively. Hagenbuch filed the application for the first Design Patent, the 357 Patent, on June 15, 1999, and the application for the first Tank Patent, the 091 Patent, on June 1, 2001. Complaint, Exhibit 2, 357 Patent, at 1, and Exhibit 3, 091 Patent, at 1. Westech provided information from before the application dates. Hagenbuch does not seek to compel any additional responses from before the application date. See Motion, at 3 n.3. Westech objects to providing responses from the issue dates back to application dates on relevance grounds. Westech also objects to the discovery requests as being overly broad and unduly burdensome.
PRINCIPLES OF DISCOVERY
Federal Rule of Civil Procedure 26(b)(1) allows parties to obtain discovery regarding any matter, not privileged, which is relevant to the claim or defense of any party. Relevant information need not be admissible at trial if the discovery appears to be reasonably calculated to lead to the discovery of admissible evidence. The rule gives the district courts broad discretion in matters relating to discovery. See Brown-Bey v. United States , 720 F.2d 467, 470-471 (7th Cir.1983); Eggleston v. Chicago Journeymen Plumbers' Local Union No. 130 U. A. , 657 F.2d 890, 902 (7th Cir.1981); see also, Indianapolis Colts v. Mayor and City Council of Baltimore , 775 F.2d 177, 183 (7th Cir.1985) (on review, courts of appeal will only reverse a decision of a district court relating to discovery upon a clear showing of an abuse of discretion).
The federal discovery rules are to be construed broadly and liberally. Herbert v. Lando , 441 U.S. 153, 177 (1979); Jefferys v. LRP Publications, Inc. , 184 F.R.D. 262, 263 (E.D.Pa. 1999). Federal Rule of Civil Procedure 26(b)(1) provides that the "[p]arties may obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party..., " but "[f]or good cause, the court may order discovery of any matter relevant to the subject matter involved in the action." Id . The good cause standard is intended to be flexible,
If there is an objection the discovery goes beyond material relevant to the parties' claims or defenses, the Court would become involved to determine whether the discovery is relevant to the claims or defenses and, if not, whether good cause exists for authorizing it so long as it is relevant to the subject matter of the action. The good-cause standard warranting broader discovery is meant to be flexible.
Federal Rule of Civil Procedure 26(b)(1) Advisory Committee Notes, 2000 Amendment.
The party opposing discovery has the burden of proving that the requested discovery should be disallowed. Etienne v. Wolverine Tube, Inc. , 185 F.R.D. 653, 656 (D. Kan. 1999); Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co. , 132 F.R.D. 204, 207 (N.D. Ind. 1990); Flag Fables, Inc. v. Jean Ann's Country Flags and Crafts, Inc. , 730 F.Supp. 1165, 1186 (D. Mass. 1989). Remember, we are talking discovery, not admissibility at trial.
Hagenbuch argues that the information sought is relevant to prove willful infringement, damages, and to oppose Westech's invalidity defense. Motion, at 5-9. Westech responds that information before the issuance date is not relevant to any of these issues. Opposition, at 2-8. Westech also argues ...