simplehuman, LLC v. iTouchless Housewares and Products, Inc.

• Court: District Court, N.D. California
• Decided: September 28, 2020
• Docket: 4:19-cv-02701
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 SIMPLEHUMAN, LLC, Case No. 19-cv-02701-HSG (AGT)

8 Plaintiff, ORDER REGARDING DISCOVERY 9 v. DISPUTES

10 ITOUCHLESS HOUSEWARES AND Re: ECF Nos. 59, 75 PRODUCTS, INC., et al., 11 Defendants.

12 13 The parties filed a joint discovery letter concerning two disputes: (1) whether iTouchless 14 must respond to simplehuman’s Interrogatory No. 15 and (2) the timing of iTouchless’ 15 outstanding production of custodian emails. ECF No. 75. During the August 21, 2020 discovery 16 hearing, the Court ordered iTouchless to submit a sworn declaration providing further details 17 regarding its claimed inability to access and search the remaining custodian email files due to its 18 COVID-19-related office closure. ECF No. 78. The Court also permitted simplehuman to file an 19 optional rebuttal declaration. Id. Both parties submitted declarations, ECF Nos. 79, 80, and the 20 Court now issues this order as to both disputes. 21 A. simplehuman’s Interrogatory No. 15 22 simplehuman moves to compel a response to Interrogatory No. 15, which asks iTouchless:

23 For each alleged prior art reference that You identified in response to simplehuman’s Interrogatory No. 1, describe in detail the bases (if any) for your contention that each 24 prior art reference renders the claim(s) of the Asserted Design Patents invalid, including, but not limited to an element-by-element description of how each 25 reference purportedly anticipates the claim(s), how combinations of references purportedly render the claim obvious, and any other bases under which you contend 26 such references render the claim(s) invalid. 27 ECF No. 61-3, Ex. 3, at 4. iTouchless objected to this interrogatory as “being excessive” because, 1 total 31 interrogatories which exceeds the 25 written interrogatory limit under Federal Rule of 2 Civil Procedure 33(a) and (2) Interrogatory No. 15 “contains over at least 100 discrete subparts” 3 because iTouchless identified more than 100 prior art references in response to Interrogatory 4 No. 1.1 Id. at 5; ECF No. 75 at 4–5. iTouchless further contends that responding to Interrogatory 5 No. 15 “would be extremely and unduly burdensome.” ECF No. 75 at 5. simplehuman asserts 6 that its interrogatories do not contain multiple subparts and argues that even if they do, the 7 circumstances justify granting it leave to serve Interrogatory No. 15 because the information 8 sought will “materially narrow and focus the parties’ disputes.” Id. at 3. The Court agrees, and 9 finds that even if simplehuman has exceeded the 25 interrogatory limit, requiring iTouchless to 10 respond to Interrogatory No. 15 is warranted here. 11 “Unless otherwise stipulated or ordered by the court, a party may serve on any other party 12 no more than 25 written interrogatories, including all discrete subparts. Leave to serve additional 13 interrogatories may be granted to the extent consistent with Rule 26(b)(1) and (2).” Fed. R. Civ. 14 P. 33(a). Importantly, “[t]he aim of the [numerical limit] is not to prevent needed discovery, but to 15 provide judicial scrutiny before parties make potentially excessive use of this discovery device.” 16 Protective Optics, Inc. v. Panoptx, Inc., No. C-05-02732-CRB (EDL), 2007 WL 963972, at *2 17 (N.D. Cal. Mar. 30, 2007) (citation omitted); see also Fed. R. Civ. P. 1 (stating that the Federal 18 Rules of Civil Procedure “should be construed, administered, and employed by the court and the 19 parties to secure the just, speedy, and inexpensive determination of every action and proceeding”). 20 Interrogatory No. 15 seeks iTouchless’ invalidity contentions based on the prior art it has asserted 21 against simplehuman’s two design patents. This information is highly relevant and will advance 22 this litigation by potentially limiting the issues for trial. See Protective Optics, 2007 WL 963972, 23 at *2 (“Although contention interrogatories propounded in the early stages of discovery can be a 24 form of discovery abuse, when served later, as here, they can also be a useful tool to narrow the 25 issues in dispute.”). Moreover, simplehuman cannot efficiently or adequately obtain the requested 26

27 1 Interrogatory No. 1 asks iTouchless: “For each of the Asserted Patents that You contend is ] information by other fact discovery means. See id. at *2—3 (granting plaintiff's motion to compel 2 || defendant to respond to an interrogatory seeking infringement contentions where plaintiff's 3 likelihood of obtaining the information in deposition was doubtful, and noting that “[d]epositions 4 || are frequently a more costly discovery tool than interrogatories, and they too are limited in 5 || number’). Finally, as to iTouchless’ claim of undue burden, the Court is not persuaded. The 6 || breadth of Interrogatory No. 15 is driven, in the first instance, by the breadth of the over 100 prior 7 || art references iTouchless identified in response to Interrogatory No. 1. iTouchless has the power 8 || to narrow Interrogatory No. 15 by withdrawing the asserted prior art references it does not actually 9 || intend to rely on.? The Court grants simplehuman’s request to compel a response to Interrogatory 10 || No. 15 and orders iTouchless to answer it within 30 days. 11 B. iTouchless’ Production of Remaining Custodian Emails 12 During the August 21 hearing, the Court further developed the record as to iTouchless’ 13 || purported inability to access and search email files for four remaining custodians and ordered 14 || iTouchless to submit a declaration providing additional information so Court could assess an 3 15 appropriate deadline for completion of iTouchless’ production of those emails. ECF No. 78. 16 || 1Touchless CEO Michael Shek subsequently filed a declaration in which he attested that 17 || 1Touchless “has now installed software to allow remote searching of the email files of the four 18 || remaining custodians” and estimated that “the files will be provided to Defendant’s counsel for 19 || expected production by September 18, 2020.” ECF No. 79 9§ 3-4. To the extent iTouchless has 20 || not completed its production of the custodian emails, it must do so by September 30, 2020. 21 This order terminates ECF Nos. 59 and 75. 22 IT ISSO ORDERED. 23 Dated: September 28, 2020 24 ALEX G. TSE 25 United States Magistrate Judge 26 27 | 2 Interrogatory No. 1 required iTouchless to identify only the prior art that it intends to rely on, 28 and during the August 21 discovery hearing, plaintiff's counsel confirmed that simplehuman does not object to 1Touchless narrowing its case to rely on fewer prior art references.