The opinion of the court was delivered by: Hon. Hugh B. Scott
This matter has been referred to the undersigned pursuant to 28 U.S.C. § 636(b)(1)(C) (Docket No. 74, Order of Aug. 25, 2011; see also Docket No. 13, initial Referral Order of July 19, 2010). The instant matter before the Court is the motion of defendant Optimum Energy LLC (hereinafter "Optimum Energy") to compel (Docket No. 99*fn1 ). Responses to this motion were due by May 7, 2012, with any replies due by May 14, 2012, and the motion deemed submitted (without oral argument) on May 14, 2012 (Docket No. 98).
After defendants separately answered (Docket Nos. 10, 11) the original Complaint, plaintiff moved (without opposition) for leave to amend the Complaint (Docket No. 48; see Docket No. 54, Order granting leave; Docket No. 55, Am. Compl.), alleging claims for breach of contract and tortious interference with a contract (Docket No. 55, Am. Compl. ¶¶ 42-51, 52-60). On March 22, 2011, defendants again separately answered the Amended Complaint (Docket Nos. 56, 57). Optimum Energy's Answer asserted counterclaims against plaintiff (Docket No. 57, ¶¶ 78-132), wherein Optimum Energy claims that it is the successor in interest in plaintiff's license agreement (id. ¶¶ 85-86) and alleged that plaintiff committed multiple breaches of that agreement in installing the patented technology in an impermissible manner (id. ¶¶ 87-105). After seeking a declaratory judgment as to the terms of the licensing agreements of plaintiff and Optimum Energy (id. ¶¶ 106-12), Optimum Energy alleged counterclaims for violation of the license agreement by plaintiff selling as a stand alone product one of the patented technologies on a particular project, outside the scope of that license (id. ¶¶ 113-24). Further, Optimum Energy sought another declaratory judgment as to scope of plaintiff's licensing agreement relative to that one purported stand alone product (id. ¶¶ 129-32). Optimum Energy also asserted counterclaims for patent infringement by plaintiff selling the technology as a stand alone product (id. ¶¶ 125-28).
Plaintiff then moved for leave to amend its Answer to counterclaims asserted by Optimum Energy (Docket No. 97), which was granted (Docket No. 109). Plaintiff was to file and serve its Second Amended Answer, by May 21, 2012 (see Docket No. 111, [Second] Amended Ans.); defendants could reply to this Answer by June 5, 2012, and a Scheduling/Status Conference was set for June 26, 2012, before the undersigned (Docket No. 109). That conference later was reset for July 11, 2012, at 11 am (Docket No. 110). Familiarity with the Order on plaintiff's motion for leave to amend (Docket No. 109) is presumed.
This is a contract dispute commenced in this Court under diversity jurisdiction (see Docket No. 1, Compl.*fn2 ¶¶ 1-4). Plaintiff claims that it has pioneered products for customers in residential, commercial and industrial markets, developing chilled water products (Docket No. 55, Am. Compl. ¶¶ 8-10). In the late 1990s, Hartman applied for and obtained patents in methods, systems, and devices that improve the overall efficiency of chilled water cooling systems, the "LOOP Patents" (id. ¶ 12). Plaintiff entered into negotiations with Hartman to license the LOOP Patents to use in plaintiff's chilled water products (id. ¶ 13). After two years of negotiations, plaintiff signed a license agreement with Hartman (id. ¶ 15, Ex. A), with negotiated exclusive rights to plaintiff to develop chilled water products incorporating the licensed technology (id. ¶¶ 16, 33-39), and right of first refusal to any improvements in the three LOOP Patents (id. ¶¶ 17-18).
Meanwhile, Hartman negotiated with Optimum Energy for the latter to obtain rights to the LOOP Patents (id. ¶ 24). Since Optimum Energy was a non-manufacturing entity, Hartman carved out limited rights in its license agreement (id. ¶¶ 27-29, Ex. B). Optimum Energy later went into manufacturing and now directly competes with plaintiff (id. ¶¶ 29, 30). Optimum Energy sought an assignment of the LOOP Patents and Hartman agreed to proceed with the sale of those patents despite Hartman's licensing agreement with plaintiff (id. ¶ 31). Hartman entered into a Patent Purchase Agreement with Optimum Energy on February 9, 2010, and later entered into an amended agreement and other ancillary agreements (id. ¶ 40, Ex. C).
Plaintiff alleges that Hartman breached its License Agreement by transferring the rights to Optimum Energy (id. ¶¶ 43-46). Plaintiff also claims that Optimum Energy tortiously interfered with that License Agreement with Hartman (id. ¶¶ 52-60).
Optimum Energy's Motion--Docket No. 99
On April 20, 2011, Optimum Energy served its First Set of Requests for Production of Documents and Things (Docket No. 99, Optimum Energy's Atty. Decl. ¶ 7, Ex. A), seeking agreements between plaintiff and Hartman; documents concerning the negotiation of the Armstrong Pump licensing agreement; communication between Hartman and plaintiff and between Optimum Energy and plaintiff; documents concerning the Optimum Energy licensing agreement; other documents concerning Optimum Energy; communication between plaintiff and Flack & Kurtz and between plaintiff and Ben McLaughlin and A.R. Jensen Associates concerning Optimum Energy, the two licensing agreements, the Binney Street projects, and the MCOA project; documents concerning the Erieview project; communications; documents concerning specific e-mails Optimum Energy identified between Hartman, Brent Ross, Peter Thomsen, Brett Gaviglio, Charles Fletcher, Nathan Rothman, and CDB Canadian and U.S. catalogue holders; documents concerning a November 2, 2010, e-mail from McLaughlin and Jonathan Dickenson; documents concerning the sale, installation and servicing of IPC 11550 by plaintiff; advertising of the IPC 11550 by plaintiff; representations of the IPC 11550 by plaintiff to its customers or potential customers; and documents concerning plaintiff's document retention policy or procedure (id., Ex. A, Requests Nos. 1-16, attached Exs. A-F, G)*fn3 . Plaintiff responded on May 20, 2011, with objections to production of any request, but stating (notwithstanding those objections) that it would "produce responsive, non-privileged documents . . . in its possession, custody, or control, to the extent such documents exist, and can be found after a reasonably diligent search" (id. ¶¶ 8-9, Ex. B).
Optimum Energy now moves to compel plaintiff to provide full and complete responses to Optimum Energy's first set of document production requests (Docket No. 99, Notice of Motion; id., Optimum Energy's Atty. Decl. ¶ 2, Ex. A), arguing that almost a year after being served with the requests plaintiff has not provided full and complete production (Docket No. 99, Optimum Energy's Atty. Decl. ¶ 4). Optimum Energy now only seeks to compel production of documents plaintiff agreed to produce, reserving the right to move to compel objected items (id. ¶¶ 6, 3).
On July 1, 2011, Optimum Energy's counsel wrote to plaintiff's counsel seeking clarification on certain of the objections but plaintiff's counsel has not responded to this letter (id. ¶¶ 10-11, Ex. C (Optimum Energy's counsel's July 1, 2011, letter)). Optimum Energy claims that plaintiff has not served "a single document to Optimum until October 28, 2011," then producing an e-mail file of an Armstrong Pump employee, Brent Ross (id. ¶ 12, Ex. D). On February 2, 2012, plaintiff produced 285 pages of additional documents, publicly filed documents in another lawsuit and literature authored by co-defendant Thomas Hartman (id. ¶ 13, Ex. E). On February 17, 2012, Optimum Energy's counsel again wrote to plaintiff's counsel to renew its request for the balance of the responsive documents (id. ¶ 14, Ex. F), noting the paucity of materials served (id. ¶¶ 15-18, Ex. F). Optimum Energy termed this February 17th letter as its good faith attempt pursuant to Rule 37(a) to resolve this dispute short of motion practice (id. ¶ 19, Ex. F), among other previous attempts to obtain these materials (id. ¶ 19, Ex. G).
On February 29, 2012, plaintiff did produce almost a thousand additional pages of documents (id. ¶ 20, Ex. H), and on March 30, 2012, plaintiff produced about sixteen hundred more pages of documents (id. ¶ 20, Ex. I). Optimum Energy, however, termed these added documents to be merely additional correspondence files from Brent Ross and did not include materials from other plaintiff's employees and officers (id. ¶ 21). Optimum Energy concludes that it has not received full compliance with its document demands (id. ¶¶ 21-22), specifically Requests Nos. 1, 8, 9, 10, 12, 13, and 16 have not been addressed and there has been only partial production for Requests Nos. 2, 3, 4, 5, 6, 7, 11, 14, and 15 (id. ¶ 23). Optimum Energy believes that this partial and delayed production is part of plaintiff's strategy to delay this case until the underlying patents expire (id. ¶ 24). Optimum Energy filed this motion on April 13, 2012 (Docket No. 99).
Plaintiff responds describing its discovery requests to Optimum Energy and Optimum Energy's production, in December 2011, of CD disks containing documents (Docket No. 107, Pl. Atty. Decl. ¶¶ 2-4, Exs. A, B). Plaintiff searched these disks for a particular e-mail from Nathan Rothman of Optimum Energy to Charles Armstrong of plaintiff, dated April 16, 2010, but that e-mail was not found. Plaintiff claims that that e-mail is responsive to three of Optimum Energy's requests. (Id. ¶ 5.) Plaintiff notes further production made on April 19, 2012, and May 4, 2012, of 11,099 pages of documents to Optimum Energy (id. ¶ 8, Ex. D), as well as earlier production on February 2, February 29, and March ...