United States District Court, W.D. New York
HUGH B. SCOTT, District Judge.
Before the Court are two motions. First is plaintiff's motion to compel (Docket No. 176); second, is defendant Optimum Energy LLC's ("Optimum Energy") motion to compel (Docket Nos. 178, 180 (correcting signature page)). Responses to these motions were due by May 16, 2013, reply by May 23, 2013 (Docket Nos. 177, 179, 181), and the motions were argued on May 28, 2013 (Docket Nos. 179, 181, 182, 188 (minute entry)). Scheduling Order discovery deadlines (cf. Docket No. 148, 2d Amended Scheduling Order) were held in abeyance while these motions were pending (Docket No. 179). The parties entered into a stipulation as to the confidentiality of certain third party materials (Docket Nos. 189, 190 (Order adopting stipulation)).
Also considered is the parties' request to adjourn renewal of mediation under this Court's Local Patent Rules (cf. Docket No. 174)
This is a contract action over licenses to patented processes for heating ventilation and air conditioning, later amended to add patent infringement and invalidity claims. After a motion to dismiss (Docket Nos. 15, 17 (motions), 34, 39 (Orders denying motions)) and litigation over amendments to plead the intellectual property claims and defenses (see generally Docket Nos. 48-175; see also Docket No. 184, Optimum Energy Memo. at 2-6), familiarity with which is presumed, the parties commenced discovery.
Plaintiff filed its motion to compel (Docket No. 176) arguing that defendant Optimum Energy did not produce certain documents that Optimum Energy claimed were confidential. These documents revealed Optimum Energy's transactions with third parties, for example licensing arrangements with Johnson Controls (a competitor of plaintiff). The parties stipulated to treat Johnson Controls and its relevant documents like confidential documents from the parties in this case (Docket Nos. 189, 190; see Docket No. 66). Plaintiff alleged that Optimum Energy had dealings with third parties (Johnson Controls, Trane, and Delta Controls) regarding the LOOP technology (Docket No. 1, Compl. ¶ 42; see Docket No. 55, Am. Compl. ¶ 32) and plaintiff now seeks documents about business relationships to which Optimum Energy entered into with third parties (Docket No. 176, Pl. Memo. at 1). Optimum Energy instead withheld these documents citing third party confidentiality concerns (id. at 2, citing In re Oxycontin Antitrust Litig., No. 04-md-1603, 2013 WL 1701009, at *2 (S.D.N.Y. Apr. 15, 2013) (no privilege recognized merely because material may be subject to confidentiality agreement). Plaintiff seeks, at a minimum, Optimum Energy's agreements with Johnson Controls concerning LOOP technology; drafts and correspondence regarding these agreements; and communication in general with third parties regarding the LOOP technology (id. at 2-3). Plaintiff rejects Optimum Energy's confidentiality claims and calls for production of documents within five days of entry of an Order (id. at 7, 8) and seeks recovery of attorneys' fees for making this motion (id. at 8).
Optimum Energy raises additional objections to plaintiff's production beyond confidentiality, arguing that plaintiff's requests are duplicative and that responsive documents were produced already (Docket No. 184, Optimum Energy Memo. at 7-9, 1 (almost 200, 000 pages of documents produced)), some served after the motion was filed (id. at 9). Optimum Energy argues that courts have recognized confidentiality concerns of third parties in connection with discovery (id.).
Regarding confidentiality, Optimum Energy points out that it is governed by a contractual confidentiality provision with Johnson Controls and required Johnson Controls' consent prior to release discoverable material to plaintiff (id. at 1).
Optimum Energy opposes attorneys' fees to plaintiff opposes. Alternatively, Optimum Energy would waive its objection if Optimum Energy receives fees on its motion to compel (id. at 13).
Plaintiff replies that Optimum Energy's response admits to withholding documents (Docket No. 185, Pl. Reply at 1). Plaintiff rejects Optimum Energy's "discovery estoppel" argument (id. at 1-2; cf. Docket No. 184, Optimum Energy at 11).
Optimum Energy then moved to compel plaintiff for dates to depose four witnesses claimed to be under plaintiff's control (Docket No. 180). Optimum Energy also seeks production of plaintiff's privilege log. Optimum Energy sought dates for deposition of Charles Armstrong, Peter Thomsen, Paul Novello and expert witness John Conover, IV (Docket No. 180, Optimum Energy Atty. Decl. ¶¶ 3-6, 9-20, Ex. A; see Docket No. 187, Optimum Energy Reply at 1). Plaintiff counters that Optimum Energy did not meet and confer over these items and thus they should not be compelled (Docket No. 183, Pl. Response at 2-3). Further, plaintiff declares these issues moot since plaintiff produced a privilege log and has engaged (and is willing to engage) in setting a deposition schedule for these witnesses (id. at 4). Optimum Energy replies that it did meet and confer in good faith on these issues (Docket No. 187, Optimum Energy Reply at 5). Optimum Energy contends that it waited until the last day for motions to compel before filing this motion (id. at 4).
During oral argument, the parties stated that they would discuss the issues raised in the motions to see if they could resolve them prior to judicial intervention (Docket No. 188). The parties also noted that the intellectual property claims and defenses were no longer in the case and requested that further mediation deadlines (see Docket No. 174) be adjourned (Docket No. 188).
I. Applicable ...