Innovative Automation v. Amazon.com, 6:12 CV 88 (11/13/13)
Judge: K. Nicole Mitchell
Holding: Motion to Compel Inspection of Accused Instrumentality Denied
In this case, plaintiff sought to compel an on-site inspection of the accused product and service at one of the defendants. Plaintiff requested that it be permitted to enter the defendants' facility to inspect, photograph, and videotape the CD and DVD duplication product and service at issue. Plaintiff also sought to compel production of documents from prior litigation involving the accused products in this case.
In light of the plaintiff's failure to serve requests pursuant to Rule 34 and its failure to address any alleged deficiency in the Patent Rule 3-4 (same number - coincidence?) production of technical documents warranting a need for site inspection, as well as the potential issues related to the defendants' assertion that the plaintiffs claims had been released (I should have mentioned that the defendants recently filed a letter brief requesting an early summary judgment on their defenses of release, covenant not to sue and patent exhaustion) Judge Mitchell denied the motion to compel inspection without prejudice to refiling after the plaintiff made a proper request under Rule 34 and conducted a "meaningful review" of the technical documents produced by the defendant pursuant to the patent rules. (Somebody's going to have a sad little Christmas doing document review).
Judge Mitchell also denied without prejudice the motion to compel document production, holding that the plaintiff had not met its burden to show that material sought, which constituted discovery responses from lawsuits involving different patents, were relevant to this action or would lead to the discovery of admissible evidence. "Moreover, Innovative is prematurely seeking to compel document production before receiving and reviewing documents disclosed pursuant to the Discovery Order entered in this case and in accordance with the Local Patent Rules."