TQP v. 1-800-Flowers.com, 2:11cv284 (7/22/13)
Judge: Roy Payne
Holding: Motion to Compel Discovery DENIED
Defendants HSN and Newegg filed this motion raising two issues. HSN then settled and Newegg withdrew one issue, so the motion proceeding to hearing on the sole issue of Newegg’s request to compel an answer to an interrogatory asking TQP to “[e]xplain in detail, and identify all documents and things relating to, IP Navigation Group, LLC’s involvement in [these cases], including, but not limited to, all communications between IP Navigation Group, LLC and TQP Development, LLC relating to the pre-filing investigation, filing, and prosecution of the case”.
Judge Payne denied the motion, noting that the adequacy of the pre-filing investigation conducted by TQP was not at issue, there being no Rule 11 motion pending. “As noted in the Patent Case Management Judicial Guide produced by the Federal Judicial Center (2009 ed.), at Section 4.6.1 (“Discovery Regarding Patentee’s Pre-Filing Investigation”)” he observed, “outside of the Rule 11 context, ... the best practice is to deny such discovery.”
The Court also rejected the case relied upon by Newegg, View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000). That opinion notes that “the patent holder, if challenged, must be prepared to demonstrate to both the court and the alleged infringer exactly why it believed before filing the claim that it had a reasonable chance of proving infringement.” (emphasis supplied by Judge Payne). Such a “challenge” would occur if a Rule 11 motion is filed and heard, he noted, or if a claim is made under §285, “or the like.”
In the absence of any such request, the Court held that there must be some other basis to support the discovery, which has not been offered. He held that there was no basis to apply the attorney-client privilege, but that the work product doctrine was a valid objection to a pre-suit investigation performed by agents of a party in anticipation of litigation, and Newegg had not even attempted to show the substantial need and undue hardship necessary to overcome this protection.
The Court also noted that the interrogatory was clearly overbroad, as it seeks not just the pre-filing investigation, but all documents “relating to IP Navigation Group, LLC’s involvement” in this case. For all of these reasons the motion was denied.
As is customary in Judge Payne’s court, in accordance with Rule 37(a)(5)(B), Newegg, Inc. was ordered to pay to TQP 50% of the reasonable expenses incurred in opposing the motion, including attorney’s fees. (The reduction by half was due to the withdrawal of one-half of the issues in the motion before the hearing). The parties were directed to meet and confer on the expenses and, if the matter is not resolved beforehand, Plaintiff was directed to file a motion to fix expenses within 21 days.