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Merz North America, Inc. v. Cytophil, Inc.

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

September 26, 2017

MERZ NORTH AMERICA, INC., Plaintiff,
v.
CYTOPHIL, INC., d/b/a REGENSCIENTIFIC, Defendant. CYTOPHIL, INC., Plaintiff,
v.
MERZ NORTH AMERICA, INC., Defendant.

          ORDER

          KIMBERLY A. SWANK UNITED STATES MAGISTRATE JUDGE

         This matter is before the court on Cytophil's motion to compel discovery pursuant to Fed.R.Civ.P. 26 and 37 [DE #212], the matter having been referred to the undersigned by Senior United States District Judge Malcolm J. Howard for disposition pursuant to 28 U.S.C. § 636(b)(1)(A). Merz has responded in opposition to Cytophil's motion [DE #215], and the matter is ripe for ruling. For the reasons stated below, Cytophil's motion to compel is granted in part and denied in part.

         BACKGROUND

         These consolidated actions involve U.S. Patent No. 6, 537, 574 ("the '574 Patent"), which is held by Merz North America, Inc. ("Merz") and discloses a method of use for soft tissue augmentation. In Merz North America, Inc. v. Cytophil, Inc., No 5:15-CV-262-H-KS, Merz asserts a claim of inducement of patent infringement by Cytophil, which Cytophil denies. In Cytophil v. Merz North America, Inc., No. 5:16-CV-745-H-KS ("Cytophil action"), Cytophil asserts claims of false patent marking, monopolization, and commercial disparagement by Merz, which Merz denies. The Cytophil action was originally filed in the United States District Court for the Eastern District of Wisconsin, see Cytophil, Inc. v Merz North America, Inc., No. 2:16-CV-423-LA (E.D. Wis. filed Apr. 6, 2016), and subsequently transferred to this court with consent of the parties.

         The motion presently before the court concerns certain discovery requests served by Cytophil on Merz. Specifically, Cytophil requests an order requiring Merz to produce documents and things sought in Requests for Production Nos. 63, 74-77, 120-21, and 137-40 of its First Set of Requests for Production of Documents and Things and to pay Cytophil's attorney's fees and expenses incurred in filing its motion. (Cytophil's Mot. Compel [DE #212] at 1.) Merz opposes the motion, arguing that Cytophil's document requests "are improper fishing expeditions without any showing of relevance and proportionality, are contrary to the law of the case, and improperly seek documents protected from discovery." (Merz's Resp. Mot. Compel [DE #215] at 1.)

         DISCUSSION

         Rule 26 provides for a broad scope of discovery:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.

Fed. R. Civ. P. 26(b)(1). "Relevancy under this rule has been broadly construed to encompass any possibility that the information sought may be relevant to the claim or defense of any party, " and the burden rests on the party resisting discovery to demonstrate that discovery should not be had. Eshelman v. Puma Biotech., Inc., No. 7:16-CV-18-D, 2017 WL 2483800, at *6-7 (E.D. N.C. June 7, 2017) (quoting EEOC v. Sheffield Fin., LLC, No. 1:06-CV-889, 2007 WL 1726560, at *3 (M.D. N.C. June 13, 2007)).

         Rule 26 requires the court to limit the frequency or extent of discovery if "the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive"; "the party seeking discovery has had ample opportunity to obtain the information by discovery in the action"; or the discovery sought is outside the scope of Rule 26(b)(1). Fed.R.Civ.P. 26(b)(2)(C). The rule also authorizes the court to impose appropriate limitations on discovery in order "to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense." Fed.R.Civ.P. 26(c)(1). Such protective orders may include, inter alia, provisions "forbidding the disclosure or discovery"; "specifying terms, including time and place or the allocation of expenses, for the disclosure or discovery"; "prescribing a discovery method other than the one selected by the party seeking discovery"; or "forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters." Fed.R.Civ.P. 26(c)(1)(A)-(D).

         Rule 37 permits a party to move to compel cooperation with discovery requests so long as that party certifies that it has "in good faith conferred or attempted to confer with the person or party failing to make disclosure or discovery in an effort to obtain it without court action." Fed.R.Civ.P. 37(a)(1). The local rules of this district similarly require that counsel "certify that there has been a good faith effort to resolve discovery disputes prior to the filing of any discovery motions." Local Civil Rule 7.1. (c)(2) (E.D. N.C. Dec. 2016); see generally Boykin Anchor Co., Inc. v. Wong, No. 5:10-CV-591-FL, 2011 WL 5599283, at *3 (E.D. N.C. Nov. 17, 2011) (describing discovery motion requirements under federal and local rules).

         Cytophil has made this certification of good faith efforts to resolve the discovery disputes (Mot. Compel at 3), to which Merz takes exception. Merz asserts that it served its responses to Cytophil's 165 documents requests on September 7, 2016; that it received letters dated September 22 and 23, 2016, from Cytophil's attorneys demanding amended responses to thirty-five document requests by September 28, 2016; and that Merz "submitted a lengthy and detailed response to Cytophil's deficiency letters on September 28." Merz represents that it "heard nothing more on the matter from Cytophil" until the afternoon of November 22, 2016, "a day and a half before office and Court closures for the Thanksgiving holiday" when it received an email from Cytophil's counsel demanding supplementation of thirty-three document requests by 10:00 a.m. the following day. (Merz Resp. Mot. Compel at 3-4.) There does not appear to have been any further communication between the parties concerning the discovery requests prior to the filing of the instant motion in which Cytophil seeks to compel responses to eleven of the thirty-three document requests noted in its email the day before.

         The communications between counsel in this case do not appear to satisfy the requirements of Rule 37 and this court's local rules. However, the court is mindful that the rules provide little guidance, and there appears to be a lack of uniformity among the courts as to the conferment requirement. It is for this reason that the court has chosen to address Cytophil's motion. Before doing so, however, the court considers it appropriate to address its expectation of counsel with regard to the conferment requirement of Rule 37 and this court's local rules in hopes that it will provide guidance to the parties in addressing any future discovery disputes.

         The purpose of the conferment requirement set forth in Rule 37 and this court's local rules is to encourage the parties to resolve their discovery disputes prior to resorting to judicial intervention. "Meet and confer requirements are not satisfied 'by requesting or demanding compliance with the requests for discovery'" or by "mailing or faxing a letter to the opposing party." Pro FitMgmt, Inc. v. Lady of Am. Franchise Corp., No. 08-CV-02662-JAR-DJW, 2011 WL 5825423, at *1 (D. Kan. Nov. 17, 2011). Rather, the rules require that "the parties in good faith converse, confer, compare views, consult and deliberate, or in good faith attempt to do so." Id. (emphasis added). While not expressly required by Rule 37 or this court's local rules, it is the undersigned's expectation that any discovery conference ...


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