Landmark Screens, LLC v. Morgan, Lewis, & Bockius, LLP et al, No. 5:2008cv02581 - Document 78 (N.D. Cal. 2009)
Court Description: ORDER GRANTING 58 MOTION TO COMPEL by Magistrate Judge Howard R. Lloyd. (hrllc1, COURT STAFF) (Filed on 10/7/2009)
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Landmark Screens, LLC v. Morgan, Lewis, & Bockius, LLP et al 1 Doc. 78 ** E-filed October 7, 2009 ** 2 3 4 5 For the Northern District of California United States District Court 6 7 NOT FOR CITATION 8 IN THE UNITED STATES DISTRICT COURT 9 FOR THE NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11 LANDMARK SCREENS, LLC, a Delaware limited liability company, 12 Plaintiff, v. 13 15 MORGAN, LEWIS & BOCKIUS LLP, a limited liability partnership; and THOMAS D. KOHLER, an individual, 16 Defendants. 14 17 No. C08-02581 JF (HRL) ORDER GRANTING PLAINTIFF’S MOTION TO COMPEL WITHDRAWAL OF OBJECTIONS TO INTERROGATORIES [Re: Docket No. 58] ____________________________________/ 18 Plaintiff Landmark Screens, LLC (“Landmark”) hired defendant Thomas Kohler and the law 19 firm Pennie & Edmonds LLP to prosecute patents pertaining to electronic billboard technology. 20 Several years later, Kohler joined defendant Morgan, Lewis & Bockius LLP (“MLB”). 21 Subsequently, Landmark sued both defendants, alleging that they failed to promptly and properly 22 advise it about a notice from the United States Patent and Trademark Office (“PTO”) stating that a 23 divisional patent application was incomplete. Landmark claims that on account of defendants’ 24 concealment and misrepresentation with respect to the notice, it lost patent rights in the divisional 25 application claims. 26 Landmark now moves to compel the withdrawal of MLB’s objections to several of 27 Landmark’s interrogatories as compound.1 MLB opposes the motion. Upon consideration of the 28 1 Although styled as a “motion to compel,” Landmark is in fact asking this court to overrule MLB’s “compound” objections. Dockets.Justia.com 1 moving and responding papers, as well as the arguments presented at the motion hearing, this court 2 grants Landmark’s motion. DISCUSSION 3 4 B. Landmark first argues that MLB waived its ability to object to interrogatories as compound. 5 For the Northern District of California United States District Court Waiver of Objections 6 It claims that MLB selectively withheld a response to Interrogatory No. 2 on grounds that Landmark 7 had already exceeded the twenty-five interrogatory limit, see Fed. R. Civ. P. 33, even though it had 8 not objected to either of the first two questions as being compound. MLB counters that it did not 9 answer Interrogatory No. 2 because it was “vague, ambiguous, and unintelligible,” and because it 10 was “indistinguishable” from Interrogatory No. 1. (Opp’n 3.) It claims that it later refused to 11 answer the question because Landmark’s clarification of it amounted to a brand-new interrogatory. The court rejects Landmark’s argument. Nonetheless, MLB’s objection to this interrogatory 12 13 is unwarranted. Interrogatory No. 1 reads: “Describe in detail your usual and customary practices, 14 policies or procedures during the years 2002 through 2006 for notifying and/or providing to your 15 clients copies of any documents, petitions, and/or notices received from and/or filed with the PTO 16 concerning any patent application and/or issued patent.” (Kwon Decl. Ex. A at 8.) Interrogatory 17 No. 2 is similar, but asks instead for the procedures MLB used “for the supervision and/or 18 monitoring of all persons responsible for notifying and/or providing to your clients copies” of such 19 notices. (Kwon Decl. Ex. A at 9.) These interrogatories are facially distinct because the procedures 20 to notify and the procedures to supervise that notification are not necessarily the same. As a result, 21 MLB’s objection to this interrogatory is overruled. 22 C. MLB’s Specific “Compound” Objections 23 Landmark’s first set of interrogatories had eight numbered questions. Its second set had a 24 single numbered question, making—ostensibly—a total of nine interrogatories. MLB objected to 25 several of these interrogatories as being compound, although it did provide substantive responses for 26 most of the questions. Landmark argues that MLB’s objections are “unreasonable and lack 27 justification” because the “subparts” are “clearly subsumed in the subject matter” of each question. 28 (Mot. 1.) 2 1 Absent leave from the court, a party may only serve another party twenty-five written 2 interrogatories, “including all discrete subparts.” Fed. R. Civ. P. 33(a)(1). The Federal Rules do not 3 define what “discrete subparts” means, but “courts generally agree that ‘interrogatory subparts are to 4 be counted as one interrogatory . . . if they are logically or factually subsumed within and 5 necessarily related to the primary question.’ ” Trevino v. ACB Am., Inc., 232 F.R.D. 612 (N.D. Cal. 6 2006) (Lloyd, Mag. J.) (quoting Safeco of Am. v. Rawstron, 181 F.R.D. 441 (C.D. Cal. 1998)). 7 8 when the topics are germane to the dispute, as MLB confirmed at the motion hearing. Nevertheless, 9 as the dispute is before the court, it must examine each interrogatory to which MLB objected as 10 For the Northern District of California United States District Court The court questions the usefulness of quibbling over the count of interrogatories, especially compound in order to determine the correct count. 11 1. 12 Interrogatory No. 5 reads: 13 Describe in detail what advice and/or recommendations, if any, you gave to Landmark concerning what steps and/or actions could be taken to in any way remedy and/or correct the failure to fully and properly file Landmark’s Divisional Patent Application No. 10/640,916, describe when and how you communicated this advice and/or recommendations to Landmark, and describe what steps, if any, you took in an effort to implement these steps and/or recommendations. 14 15 Interrogatory No. 5 16 17 (Kwon Decl. Ex. A at 9.) It appears to the court that this question contains two interrogatories. The 18 primary question asks for “what advice and/or recommendations” MLB gave to Landmark, which 19 includes the “when and how” of this communication. What steps MLB took to implement that 20 advice is then a discrete inquiry. However, MLB appears to have misread this question as its 21 response is incomplete. Instead of detailing the advice it gave to Landmark, and how it 22 communicated that advice, it only detailed the steps MLB took itself and the communication of 23 those steps after the fact. (Kwon Decl. Ex. C at 11.) MLB shall amend its response to provide this 24 missing information. 25 2. Interrogatories Nos. 6 and 7 26 Interrogatories Nos. 6 and 7 each ask for a contention and then to “describe in detail all facts 27 supporting this contention and identify all persons with knowledge of the facts and all materials 28 supporting this contention.” (Kwon Decl. Ex. A at 9.) The individuals who have knowledge of 3 1 facts and the materials that support each contention are distinct inquiries from the facts themselves. 2 See, e.g., Trevino, 232 F.R.D. 612; U.S. ex rel Pogue v. Diabetes Treatment Ctrs. of Am., Inc., 235 3 F.R.D. 521 (D.D.C. 2006); Superior Commc’ns v. Earhugger, Inc., 257 F.R.D. 215 (C.D. Cal. 4 2009). As a result, Nos. 6 and 7 each contain three subparts—facts, persons, and materials—for a 5 total of six interrogatories. 6 3. 7 Interrogatory No. 8 reads: 8 Identify any current or former MLB partners, associates, employees, and/or consultants, other than Kohler, Michael Lyons, Esq., Gary S. Williams, Esq., Shawn C. Glidden, Esq., and Dion M. Bregman, Esq., who were aware of any aspect of the Notice or the Petition on or before August 23, 2004 or who were aware of any aspect of the Dismissal prior to November 30, 2005 and describe all facts and all materials concerning which aspect(s) of the Notice, Petition, and/or Dismissal such persons were aware of and when and how such persons were aware of any aspect of the Notice, Petition, and/or Dismissal. 9 For the Northern District of California United States District Court 10 11 Interrogatory No. 8 12 (Kwon Decl. Ex. A at 9–10.) This question first asks for the identification of individuals who were 13 aware of three different documents: the Notice, the Petition, and the Dismissal. These are three 14 discrete inquiries because these groups may not include the same individuals. Then, for each of 15 these three groups, the question asks for all facts concerning the individuals’ awareness (including 16 which aspects of the documents such persons were aware and how they became aware) and all 17 materials concerning this awareness. Interrogatory No. 8 thus contains nine interrogatories. 18 4. 19 MLB refused to answer Interrogatory No. 9 because it deemed it “oppressive and harassing” 20 and because by its count, Landmark had already propounded more than twenty-five interrogatories. 21 (Opp’n 10.) Interrogatory No. 9 reads: 22 23 24 25 Interrogatory No. 9 Identify each denial of a material allegation and each special or affirmative defense in your Answer to Second Amended Complaint, filed on February 10, 2009, and for each denial and special or affirmative defense state all facts upon which you base the denial or special or affirmative defense, state the names, addresses, and telephone numbers of all persons who have knowledge of these facts, and identify all documents and tangible things that support each denial and special or affirmative defense and state the name, address, and telephone number of the person who has each document. 26 (Kwon Decl. Ex. B at 9.) Landmark later agreed to limit this interrogatory to each affirmative 27 defense. (Mot. 7.) However, MLB still refused to answer on grounds that the question remained 28 impermissibly compound because it asked for information about each of its nine affirmative 4 1 defenses. Landmark argues that it is unfair to read this interrogatory as having a separate subpart for 2 each affirmative defense, because then a defendant could simply “plead in excess of 25 affirmative 3 defenses” to avoid answering further interrogatories. (Mot. 8.) Interrogatory No. 9 is compound, though not to the degree MLB suggests. It makes three 4 5 distinct inquiries: the identification of (1) all facts; (2) all persons with knowledge of the facts; and 6 (3) all materials, which includes information about the materials’ custodians. However, no rule 7 requires this court to multiply these three subparts by the number of affirmative defenses MLB 8 happened to plead. Accordingly, Interrogatory No. 9 contains three interrogatories. CONCLUSION For the Northern District of California United States District Court 9 10 Based on the foregoing, IT IS ORDERED that: 11 1. Landmark has propounded a total of twenty-four (24) interrogatories to date, which is within the twenty-five interrogatory limit. 12 2. Because Landmark expressed concern that it may be foreclosed from propounding 13 14 additional interrogatories in the future, the court grants Landmark leave to propound ten 15 interrogatories over the presumptive limit, for an authorized total of thirty-five (35).2 3. MLB’s objections are overruled, and MLB shall provide the following to Landmark 16 within ten days of this order: 17 18 a. A response to Interrogatory No. 2; 19 b. An amended response to Interrogatory No. 5; and 20 c. A response to Interrogatory No. 9 for each affirmative defense. 21 22 IT IS SO ORDERED. 23 Dated: October 7, 2009 24 HOWARD R. LLOYD UNITED STATES MAGISTRATE JUDGE 25 26 27 28 2 Since there are two defendants, between them they are entitled to propound fifty interrogatories. 5 1 C 08-02581 Notice will be electronically mailed to: 2 Clark S. Stone Courtney Towle Edward John McIntyre Elliot Remsen Peters Inchan Andrew Kwon 3 4 5 6 7 8 John Elliot Trinidad Steven Mark Levitan Steven Paul Ragland Wendy Jill Thurm William N. Kammer clark.stone@haynesboone.com, sjctemp1@haynesboone.com ctowle@texarkanalaw.com emcintyre@swsslaw.com, dpierson@swsslaw.com epeters@kvn.com, aap@kvn.com, efiling@kvn.com inchan.kwon@haynesboone.com, edward.kwok@haynesboone.com, efilesjc@haynesboone.com, sjctemp1@haynesboone.com jtrinidad@kvn.com, efiling@kvn.com steve.levitan@haynesboone.com sragland@kvn.com, efiling@kvn.com, jwinars@kvn.com wthurm@kvn.com, efiling@kvn.com, llind@kvn.com, pwm@kvn.com wkammer@swsslaw.com, rtang@swsslaw.com Counsel are responsible for distributing copies of this document to co-counsel who have not registered for e-filing under the court’s CM/ECF program. 9 For the Northern District of California United States District Court 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6
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