IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
SHOALS TECHNOLOGIES ) GROUP, LLC, ) ) Plaintiff, ) ) v. ) 1:25CV26 ) VOLTAGE, LLC and ) NINGBO VOLTAGE SMART ) PRODUCTION CO., ) ) Defendants. )
ORDER AND MEMORANDUM OPINION OF UNITED STATES MAGISTRATE JUDGE
The plaintiff, Shoals Technology The case is now before the Court on Group, LLC (“Shoals”), has sued the Shoals’s motion to compel Voltage to defendants, Voltage, LLC and Ningbo respond to certain discovery requests. Voltage Smart Production Co. Docket Entry 216. Shoals filed the (collectively, “Voltage”), for patent instant motion on December 31, 2025, infringement. See generally Docket the same day discovery closed. The Entry 74. Both Shoals and Voltage Court resolved paragraphs 1 and 4 of produce solar panel installations, and the motion on February 20, 2026. Shoals alleges that a particular part of Docket Entry 374. The Court now Voltage’s installation—the LYNX turns to the remaining issues. As set Trunk Bus (“LYNX”)—infringes on forth below, the Court grants in part one of Shoals’s products. See id. ¶¶ 17, the remainder of Shoals’s motion. 31, 45, 73. The parties held a bench I. DISCUSSION trial on equitable defenses that started on February 25, 2026 and Federal Rule of Civil Procedure 26 concluded on March 5, 2026. See provides that: minutes entries dated 02/25/2026 Parties may obtain discovery and 03/05/2026. The parties’ regarding any nonprivileged dispositive briefs are due on April 13, matter that is relevant to any 2026, and a jury trial is scheduled for party’s claim or defense and August 24–28, 2026. Docket Entry 83 proportional to the needs of the at 3. case, considering the importance of the issues at stake in the action, the amount from being “required to search for, in controversy, the parties’ collect, or produce emails in response relative access to relevant to any document request” absent information, the parties’ “good cause” and a “timely request . . . resources, the importance of that leaves the other Party sufficient the discovery in resolving the time to search for, collect, review, and issues, and whether the burden produce responsive emails.” See or expense of the proposed Docket Entry 45 ¶ 4. Thus, Shoals discovery outweighs its likely must demonstrate that its request was benefit. Information within this timely and good cause supported it. scope of discovery need not be See OptoLum, Inc. v. Cree, Inc., No. admissible in evidence to be 1:17CV687, 2018 WL 6834608, at *4 discoverable. (M.D.N.C. Dec. 28, 2018) (finding that a prior order preventing Fed. R. Civ. P. 26(b)(1). “District discovery of electronically stored courts generally have broad discretion information absent good cause in managing discovery, including operated as a “burden-shifting whether to grant or deny a motion to mechanism”). compel.” Eramo v. Rolling Stone LLC, 314 F.R.D. 205, 209 (W.D. Va. 2016) Shoals has carried its burden. Voltage (citing Lone Star Steakhouse & did not inform Shoals that emails Saloon, Inc. v. Alpha of Virginia, Inc., responsive to RFP Nos. 8, 12, and 56 43 F.3d 922, 929 (4th Cir. 1995)). might exist until December 29, 2025, Generally, the party “resisting see Docket Entry 215-1 at 27; Docket discovery, not the party moving to Entry 250 at 25, making Shoals’s compel discovery, bears the burden of request for the emails on that day persuasion.” Kinetic Concepts, Inc. v. timely. Because communications ConvaTec Inc., 268 F.R.D. 226, 243 about the development of the LYNX (M.D.N.C. 2010) (collecting cases); may support or undermine Shoals’s accord Carlton & Harris claim of willful infringement, good Chiropractic Inc. v. PDR Network, cause exists. LLC, No. 3:15-CV-14887, 2024 WL Further, Voltage has made no 1451124, at *2 (S.D.W. Va. Apr. 3, argument that production of the 2024). emails would be unduly burdensome. A. Voltage must produce See Docket Entry 250 at 19-20. emails responsive to RFP Voltage only argues that the emails Nos. 8, 12, and 56. predate the patent at issue in this case. See id. at 20. But “evidence Shoals seeks emails between Voltage regarding pre-issuance activities may and Huatong, one of Voltage’s be relevant to establishing that post- business partners, regarding the issuance products constitute development of the LYNX. See Docket infringement.” Chimie v. PPG Indus., Entry 215-1 at 27. The parties have consented to a rule preventing them Inc., 402 F.3d 1371, 1382 (Fed. Cir. Here, Voltage’s response to 2005). Interrogatory No. 12—which asks for the “factual basis” of Voltage’s Voltage must therefore produce all argument against willful emails between Voltage and Huatong infringement—contains few facts. See responsive to Shoals’s RFPs 8, 12, and Docket Entry 215-8 at 66–68. 56. Instead, it contains various legal B. Voltage must provide a arguments: that Voltage did not factual response to infringe Shoals’s patents, that the Interrogatory No. 12, to the patents are invalid and extent that such facts exist. unenforceable, that Voltage received no notice of infringement, and that Shoals seeks a more “fulsome” Shoals has not carried its burden of response to Interrogatory No. 12. showing willful infringement. See id. Docket Entry 216 ¶ 3.1 This Voltage also states that it incorporates interrogatory asks Voltage to “state Ruiyan Ge’s deposition testimony the entire factual basis supporting from prior litigation before the Your contention [that your International Trade Commission, infringement was not willful] and but—as Voltage appears to identify any supporting documents.” acknowledge—this testimony is not Docket Entry 215-8 at 66. facially useful. See Docket Entry 250 A party is not required to plan an at 24. argument “based on all possible The Court therefore orders Voltage to documents or information presented specify which facts it will be relying on during depositions, but rather must to argue against willful infringement, be adequately informed by the to the extent that such facts exist. opposing party, in response to proper However, if Voltage does not discovery requests, which facts, anticipate relying on any additional theories, and documents will likely be facts beyond those provided in its relied upon at trial.” See Contech existing response (e.g., the facts Stormwater Sols., Inc. v. Baysaver supporting lack of notice), Voltage Techs., Inc., 534 F. Supp. 2d 616, 625 need not supplement its response. (D. Md. 2008), aff’d, 310 F. App’x 404 (Fed. Cir. 2009) (unpublished).
1 In its reply brief, Shoals also requests an unfair to the other party and would risk additional deposition of Ruiyan Ge on an improvident or ill-advised opinion on this topic. Docket Entry 266 at 14 n.4. the legal issues raised.” Docket Entry 201 However, as the Court has previously (citing Kelly v. Naples Prop. Holding told Shoals, it “may not consider Co., LLC, 671 B.R. 432, 452 (D. Md. arguments a party makes for the first 2025)). time in a reply . . . because it would be C. Voltage must investigate keeps “in the usual course of and determine whether it business.” As this Court noted in a can easily provide cost data previous order, “Rule 34 only requires by project. a party to produce documents that exist at the time of the request; a party The remaining information Shoals cannot be compelled to create a seeks is relevant to calculating document for its production.” Docket damages.
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IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
SHOALS TECHNOLOGIES ) GROUP, LLC, ) ) Plaintiff, ) ) v. ) 1:25CV26 ) VOLTAGE, LLC and ) NINGBO VOLTAGE SMART ) PRODUCTION CO., ) ) Defendants. )
ORDER AND MEMORANDUM OPINION OF UNITED STATES MAGISTRATE JUDGE
The plaintiff, Shoals Technology The case is now before the Court on Group, LLC (“Shoals”), has sued the Shoals’s motion to compel Voltage to defendants, Voltage, LLC and Ningbo respond to certain discovery requests. Voltage Smart Production Co. Docket Entry 216. Shoals filed the (collectively, “Voltage”), for patent instant motion on December 31, 2025, infringement. See generally Docket the same day discovery closed. The Entry 74. Both Shoals and Voltage Court resolved paragraphs 1 and 4 of produce solar panel installations, and the motion on February 20, 2026. Shoals alleges that a particular part of Docket Entry 374. The Court now Voltage’s installation—the LYNX turns to the remaining issues. As set Trunk Bus (“LYNX”)—infringes on forth below, the Court grants in part one of Shoals’s products. See id. ¶¶ 17, the remainder of Shoals’s motion. 31, 45, 73. The parties held a bench I. DISCUSSION trial on equitable defenses that started on February 25, 2026 and Federal Rule of Civil Procedure 26 concluded on March 5, 2026. See provides that: minutes entries dated 02/25/2026 Parties may obtain discovery and 03/05/2026. The parties’ regarding any nonprivileged dispositive briefs are due on April 13, matter that is relevant to any 2026, and a jury trial is scheduled for party’s claim or defense and August 24–28, 2026. Docket Entry 83 proportional to the needs of the at 3. case, considering the importance of the issues at stake in the action, the amount from being “required to search for, in controversy, the parties’ collect, or produce emails in response relative access to relevant to any document request” absent information, the parties’ “good cause” and a “timely request . . . resources, the importance of that leaves the other Party sufficient the discovery in resolving the time to search for, collect, review, and issues, and whether the burden produce responsive emails.” See or expense of the proposed Docket Entry 45 ¶ 4. Thus, Shoals discovery outweighs its likely must demonstrate that its request was benefit. Information within this timely and good cause supported it. scope of discovery need not be See OptoLum, Inc. v. Cree, Inc., No. admissible in evidence to be 1:17CV687, 2018 WL 6834608, at *4 discoverable. (M.D.N.C. Dec. 28, 2018) (finding that a prior order preventing Fed. R. Civ. P. 26(b)(1). “District discovery of electronically stored courts generally have broad discretion information absent good cause in managing discovery, including operated as a “burden-shifting whether to grant or deny a motion to mechanism”). compel.” Eramo v. Rolling Stone LLC, 314 F.R.D. 205, 209 (W.D. Va. 2016) Shoals has carried its burden. Voltage (citing Lone Star Steakhouse & did not inform Shoals that emails Saloon, Inc. v. Alpha of Virginia, Inc., responsive to RFP Nos. 8, 12, and 56 43 F.3d 922, 929 (4th Cir. 1995)). might exist until December 29, 2025, Generally, the party “resisting see Docket Entry 215-1 at 27; Docket discovery, not the party moving to Entry 250 at 25, making Shoals’s compel discovery, bears the burden of request for the emails on that day persuasion.” Kinetic Concepts, Inc. v. timely. Because communications ConvaTec Inc., 268 F.R.D. 226, 243 about the development of the LYNX (M.D.N.C. 2010) (collecting cases); may support or undermine Shoals’s accord Carlton & Harris claim of willful infringement, good Chiropractic Inc. v. PDR Network, cause exists. LLC, No. 3:15-CV-14887, 2024 WL Further, Voltage has made no 1451124, at *2 (S.D.W. Va. Apr. 3, argument that production of the 2024). emails would be unduly burdensome. A. Voltage must produce See Docket Entry 250 at 19-20. emails responsive to RFP Voltage only argues that the emails Nos. 8, 12, and 56. predate the patent at issue in this case. See id. at 20. But “evidence Shoals seeks emails between Voltage regarding pre-issuance activities may and Huatong, one of Voltage’s be relevant to establishing that post- business partners, regarding the issuance products constitute development of the LYNX. See Docket infringement.” Chimie v. PPG Indus., Entry 215-1 at 27. The parties have consented to a rule preventing them Inc., 402 F.3d 1371, 1382 (Fed. Cir. Here, Voltage’s response to 2005). Interrogatory No. 12—which asks for the “factual basis” of Voltage’s Voltage must therefore produce all argument against willful emails between Voltage and Huatong infringement—contains few facts. See responsive to Shoals’s RFPs 8, 12, and Docket Entry 215-8 at 66–68. 56. Instead, it contains various legal B. Voltage must provide a arguments: that Voltage did not factual response to infringe Shoals’s patents, that the Interrogatory No. 12, to the patents are invalid and extent that such facts exist. unenforceable, that Voltage received no notice of infringement, and that Shoals seeks a more “fulsome” Shoals has not carried its burden of response to Interrogatory No. 12. showing willful infringement. See id. Docket Entry 216 ¶ 3.1 This Voltage also states that it incorporates interrogatory asks Voltage to “state Ruiyan Ge’s deposition testimony the entire factual basis supporting from prior litigation before the Your contention [that your International Trade Commission, infringement was not willful] and but—as Voltage appears to identify any supporting documents.” acknowledge—this testimony is not Docket Entry 215-8 at 66. facially useful. See Docket Entry 250 A party is not required to plan an at 24. argument “based on all possible The Court therefore orders Voltage to documents or information presented specify which facts it will be relying on during depositions, but rather must to argue against willful infringement, be adequately informed by the to the extent that such facts exist. opposing party, in response to proper However, if Voltage does not discovery requests, which facts, anticipate relying on any additional theories, and documents will likely be facts beyond those provided in its relied upon at trial.” See Contech existing response (e.g., the facts Stormwater Sols., Inc. v. Baysaver supporting lack of notice), Voltage Techs., Inc., 534 F. Supp. 2d 616, 625 need not supplement its response. (D. Md. 2008), aff’d, 310 F. App’x 404 (Fed. Cir. 2009) (unpublished).
1 In its reply brief, Shoals also requests an unfair to the other party and would risk additional deposition of Ruiyan Ge on an improvident or ill-advised opinion on this topic. Docket Entry 266 at 14 n.4. the legal issues raised.” Docket Entry 201 However, as the Court has previously (citing Kelly v. Naples Prop. Holding told Shoals, it “may not consider Co., LLC, 671 B.R. 432, 452 (D. Md. arguments a party makes for the first 2025)). time in a reply . . . because it would be C. Voltage must investigate keeps “in the usual course of and determine whether it business.” As this Court noted in a can easily provide cost data previous order, “Rule 34 only requires by project. a party to produce documents that exist at the time of the request; a party The remaining information Shoals cannot be compelled to create a seeks is relevant to calculating document for its production.” Docket damages. See Docket Entry 216 ¶¶ 5– Entry 21 at 16 (citing Atkins v. AT&T 7. Voltage sells the LYNX as a part of Mobility Servs., LLC, No. 2:18-CV- larger solar installation projects, and 00599, 2019 WL 8017851, at *6 this Court previously determined that (S.D.W. Va. Apr. 25, 2019)). Shoals may discover cost data associated with all aspects of those Under the above rules, whether projects, not just the LYNX. Docket Voltage must produce project-level Entry 201 at 4–5. The parties appear data turns on whether that data is to agree that Voltage has now already available at the project-level produced this information, but in a to Voltage. If so, Voltage must very inconvenient form: hundreds of produce it. But if it is not so available individual sales order documents. See and providing it would unavoidably Docket Entry 215-1 at 16, 33; Docket require combing through the Entry 250 at 25–28; Docket Entry 266 hundreds of sales orders Voltage has at 16. Shoals argues that Voltage can already produced, that burden produce the data in a more useful belongs to Shoals. form: a spreadsheet organized by Unfortunately, the Court is flying project.2 Docket Entry 215-1 at 29-35. blind. Voltage’s response brief Under Federal Rule of Civil Procedure represents that “Voltage does not 33(d), a party can respond to an track sales based on project.” Docket interrogatory by providing business Entry 250 at 26. This suggests that records if the burden of deriving the extracting the data from the sales answer from those records would be orders is unavoidable. But the source the same for either party. Similarly, Voltage cites for this representation— Rule 34(b)(2)(E) only requires parties Ruiyan Ge’s deposition testimony—is to produce documents in response to not so clear. Although Ge testified that requests for production that the party “it makes more sense to keep track [of
2 The Court interprets Shoals’s briefing to Shoals’s reply brief suggests that it seeks communicate that such production production of transfer pricing between would resolve the remaining issues different Voltage entities, see Docket raised by Shoals’s motion to compel, Entry 266 at 18, but Shoals’s initial brief Docket Entry 216 ¶¶ 5–6. To the extent mentions transfer pricing only in its that Shoals is seeking any production factual background, not its argument regarding damages beyond that ordered section, see Docket Entry 215-1 at 18, 19– below, the Court denies it as 35. insufficiently briefed. For example, cost data] based on sales orders” II. CONCLUSION instead of projects, Ge also testified The Court GRANTS IN PART that Voltage’s internal database might ; . 179s Shoals’s motion to compel, Docket possibly” be able to produce a Ent 6. as follows: spreadsheet of costs by project. See HITY 210, as TOulows: Docket Entry 215-26 at 14-16. Voltage SHALL produce the emails Further, during litigation before the responsive to Shoals’s Requests for International Trade Commission, Production Nos. 8, 12, and 56. In Voltage produced spreadsheets response to Shoals’s Interrogatory containing cost data sorted by project. No. 12, Voltage SHALL specify any See Docket Entries 266-5, 266-6. It is facts it will use to show non- not clear whether these sorts of willfulness, to the extent such facts records are regularly kept by Voltage, exist. especially given that Shoals onl . . . mentioned ‘hem in its reply brief, Finally, Voltage SHALL Investigate depriving Voltage of the opportunity and determine whether it can easily to respond. See Docket Entry 266 at produce the project-based data 17. sought by Shoals’s motion, Docket Entry 216 {{] 5—6, using the existing The Court therefore orders that reporting capabilities of its current Voltage investigate and determine database, and provide that data to whether it can easily produce the cost Shoals if so. Once Shoals has received data by project by, e.g., generating a or assembled the data requested by report from its internal database. If Docket Entry 216 {§ 5-6, Shoals Voltage can do so, it must, and it must SHALL allowed to seek provide all such data to Shoals that is information responsive to responsive to Shoals’s motion to Interrogatory Nos. 7, 8, 20, 24, and 25 compel, Docket Entry 216 {{ 5-6. by deposing one knowledgeable Otherwise, Shoals must assemble the individual. The discovery deadline data it seeks from the documents SHALL be extended to March 31, Voltage has already produced. 2026, for the sole purpose of Once Shoals received’ or complying with this order. assembled the relevant data, it may depose one individual based on what (| f it has learned. The Court limits the pe ON deposition to questions for lop nna Gibs6n McFadden information responsive to United States Magistrate Judge Interrogatory Nos. 7, 8, 20, 24, and 25. March 11, 2026 Durham, North Carolina