Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Valencell Inc. v. Apple Inc.

United States District Court, E.D. North Carolina, Western Division

April 17, 2017

VALENCELL, INC., Plaintiff,
v.
APPLE INC., Defendant.

          ORDER

          James E. Gates United States Magistrate Judge.

         This case comes before the court to memorialize and elaborate on various directives issued by the court at the discovery status conference with plaintiff Valencell, Inc. (“Valencell”) and defendant Apple Inc. (“Apple”) held on 13 April 2017 and to resolve various matters remaining in dispute.

         Directives regarding Discovery Requests to Valencell

         1. The portion of Valencell’s 7 April 2017 motion (D.E. 155) seeking a one-week extension of the deadline in the court’s 3 April 2017 Order (D.E. 153 ¶ 1) applicable to its outstanding supplemental document production that is not otherwise addressed in the instant Order is ALLOWED. Service of such supplemental document production effected by Valencell by 14 April 2017 shall be deemed timely.

         2. The portion of Valencell’s 7 April 2017 motion seeking reconsideration and withdrawal of the requirement in the court’s 3 April 2017 Order that Valencell supplement its response to Apple’s Interrogatory No. 6[1] relating to Valencell’s damages claim is DENIED.[2] Valencell shall serve a complete, supplemental answer to Interrogatory No. 6, with a verification for it, as soon as practicable but in no event later than 21 April 2017. The supplemental answer shall reflect such inquiry by Valencell into the information within its possession, custody, or control regarding its damages claim, including consultation with its damages expert, as necessary, to provide a complete response as of the time it serves its supplemental answer. See Fed. R. Civ. P. 26(g)(1).

         In making this ruling, the court rejects Valencell’s contention that this interrogatory is a request that Valencell produce the report of its damages expert prematurely. Rather, it is a proper inquiry into Valencell’s current position regarding its damages claim, which is, of course, subject to possible supplementation as discovery progresses. The fact that the information sought may entail contentions and opinions, including expert opinions, does not render it impermissible. SPH Am., LLC v. Research in Motion, Ltd., No. 13CV2320 CAB (KSC), 2016 WL 6305414, at *4 (S.D. Cal. 16 Aug. 2016) (rejecting plaintiff’s argument that it was unable to respond to interrogatory concerning damages as premature in part because “[u]nder plaintiff's theory, any contention interrogatories seeking information on damages would be rendered almost useless as they would not require responses until the eve of the close of discovery”); Honeywell Int’l Inc. v. Furuno Elec. Co., No. 09-CV-3601 MJD/TNL, 2013 WL 2385224, at *4 (D. Minn. 30 May 2013) (allowing motion to compel damages interrogatory in patent case holding that contention interrogatories related to damages theories and calculations “‘almost invariably will comport with the requirements of Rules 26(b)(1) and 33(c) . . ., seeking as they do, information about an inherent element of a claim’” and noting that plaintiff could supplement its response after obtaining an expert report) (quoting U.S. ex rel Tyson v. Amerigroup Ill., Inc., 230 F.R.D. 538, 544 (N.D. Ill. 2005)). Supplementation by Valencell at this late stage of fact discovery is certainly appropriate. It is inconceivable that Valencell does not now have more responsive information regarding its damages claim than it has provided in its prior responses to Interrogatory No. 6, which gave very little, if any, insight into its damages claim. Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1280 (Fed. Cir. 2012) (“This court has recognized that answers to contention interrogatories evolve over time as theories of liability and defense begin to take shape; answers to those interrogatories may not come into focus until the end of discovery. . . . Rule 26(e) requires that as theories mature and as the relevance of various items of evidence changes, responses to interrogatories, and particularly contention interrogatories, be corrected or supplemented to reflect those changes.”). Absence of supplementation at this point would prejudice Apple and likely delay discovery proceedings.

         3. The court DENIES without prejudice Apple’s request that Valencell be compelled to respond further to Apple’s Request for Production No. 67[3] regarding Valencell’s efforts to obtain funding from investors; Request for Production No. 69[4] regarding research and development costs incurred by Valencell; and Request for Production No. 75[5] regarding initial public offerings by Valencell. While it is conceivable that the documents sought by each of these production requests could contain information relevant to one or more issues in this case, the record does not presently show that they are likely to do so. At the same time, the production sought by each production request is extensive, the burden on Valencell of making the production significant, and the intrusion into Valencell’s operations entailed by the production substantial. The production sought therefore fails to meet the proportionality standard of Fed. R. Civ. P. 26(b)(1). The denial is without prejudice because information could conceivably be developed through future investigation or discovery, including depositions, showing that the production sought is warranted at that time.

         4. Apple’s request that Valencell be compelled to answer more fully Apple’s Interrogatory No. 4[6] seeking information about products practicing the patents in suit is ALLOWED. Valencell shall serve a supplemental answer to Interrogatory No. 4, with a verification for it, as soon as practicable but in no event later than 21 April 2017. The supplemental answer shall provide all information sought by the interrogatory, unless after reasonable inquiry into the information within its possession, custody, or control regarding the matters inquired about, including consultation with its experts, Valencell determines that it lacks possession, custody, or control over requested information. Valencell shall explain in its supplemental answer any claimed inability to provide requested information.

         In compelling a further response by Valencell, the court finds that the information sought is clearly relevant to issues in this case, including the value of the patents in suit. The fact that Valencell may not maintain records containing the information sought as part of its regular business operations does not insulate it from answering the interrogatory. Nor does the possible need for Valencell to consult an expert to be able to provide information sought.

         5. Apple’s request that Valencell be compelled to answer more fully Apple’s Interrogatory No. 5[7] seeking, in relevant part, information about potential agreements relating to the patents in suit or related applications is ALLOWED. Valencell shall serve a supplemental answer to Interrogatory No. 5, with a verification for it, as soon as practicable but in no event later than 21 April 2017. For purposes of the instant Order, the term “potential agreement” shall mean any agreement into which Valencell or the other party or parties to it declined to enter after Valencell communicated to the other party or parties proposed terms for the agreement. The description of the terms of each potential agreement shall include a description of the reasons why the agreement was not entered into. Except as to potential agreements not entered into because of price terms, Valencell may defer identification of the material documents that refer to or describe any potential agreement until after it has produced the other information sought by this interrogatory and the parties confer about whether Apple continues to seek such identification with respect to the potential agreement. The parties shall be prepared to address at the biweekly discovery status conference on 27 April 2017 any unresolved disputes regarding identification of such documents. Subject to such deferred identification, Valencell’s supplemental answer shall respond fully to the interrogatory. As with all interrogatories, Valencell retains the option to produce business records in response to Interrogatory No. 4 pursuant to Fed. R. Civ. P. 33(d) to the extent that it permits.

         In compelling a further response by Valencell to Interrogatory No. 4, the court finds that the likelihood that the discovery regarding potential agreements will produce information relevant to the issues in this case is sufficient to justify its scope and the burden it places on Valencell. It is, of course, conceivable that certain potential agreements may not ultimately prove to be relevant, such as if the reasons why the agreement was not entered into are extraneous to the issues in this case. It is because of that possibility, in an effort to avoid imposition of an undue burden on Valencell, that the court has provided Valencell the option of deferring identification of documents relating to potential agreements not entered into for reasons other than price until after conferral with Apple.

         Directive regarding Discovery Request to Apple

         Valencell’s request that Apple be compelled to further respond to Valencell’s Interrogatory No. 8 is DENIED. Interrogatory No. 8 reads: “State with specificity the basis for, and all facts and circumstances supporting or otherwise relating to, each defense and counterclaim asserted by you in this litigation and identify all persons with knowledge relevant to such defense and counterclaim, and identify all documents and evidence supporting such alleged defenses and/or counterclaims.” (Emphasis added). This request is overbroad and unduly burdensome on its face. It essentially asks Apple to provide a detailed exposition of all evidence underlying its entire case-in addition to other information.

         Directives regarding Conferral, ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.