Taiyo International, Inc. v. Phyto Tech Corp.

275 F.R.D. 497, 80 Fed. R. Serv. 3d 319, 2011 U.S. Dist. LEXIS 85057, 2011 WL 3156042
CourtDistrict Court, D. Minnesota
DecidedJuly 26, 2011
DocketCiv. No. 10-3378 (DSD/JJK)
StatusPublished
Cited by5 cases

This text of 275 F.R.D. 497 (Taiyo International, Inc. v. Phyto Tech Corp.) is published on Counsel Stack Legal Research, covering District Court, D. Minnesota primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Taiyo International, Inc. v. Phyto Tech Corp., 275 F.R.D. 497, 80 Fed. R. Serv. 3d 319, 2011 U.S. Dist. LEXIS 85057, 2011 WL 3156042 (mnd 2011).

Opinion

ORDER AND MEMORANDUM

JEFFREY J. KEYES, United States Magistrate Judge.

This matter is before the Court on Plaintiffs Motion to Compel and Request for Extension of Time to Complete Discovery (Doc. No. 43). A hearing was held on the matter on July 19, 2011. Based on the parties’ submissions and arguments, together with all pleadings, records, and files herein, and the Court being fully advised in the premises, the Court grants Plaintiffs Motion to Compel and its request for an extension of the discovery deadline.

Accordingly, IT IS HEREBY ORDERED that:

1. Plaintiffs Motion to Compel (Doc. No. 43), is GRANTED. Defendant must provide to Plaintiff within twenty days of this Order:
a. the identities and sources of the enzymes used in its production process for its L-theanine product;
b. the identities and sources of all ingredients used in Defendant’s L-theanine production process; and
c. complete information about the equipment and procedures used in Defendant’s L-theanine production process;
2. Plaintiffs Request for Extension of Time to Complete Discovery (Doc. No. 43), is GRANTED. An Amended Pretrial Scheduling Order will be issued separately; and
3. The following Memorandum is incorporated herein by reference.

MEMORANDUM

Plaintiff, Taiyo International, Inc. (“Tai-yo”) has initiated this suit against Phyto Tech Corp., d/b/a Blue California (“Blue California”) for false advertisement under the Lanham Act, 15 U.S.C. § 1125(a), deceptive trade practices under Minn.Stat. § 325D.44, unlawful trade practices under Minn.Stat. § 325D.13, and false statement in advertising under Minn.Stat. § 325F.69. In the present motion, Taiyo seeks to compel production of (1) the identities and sources of the enzymes used in Blue California’s L-theanine1 production process; (2) the identities and sources of all ingredients used in Blue California’s L-theanine production process; and (3) complete information regarding the procedures and equipment used in Blue California’s L-theanine production process. (Doc. No. 43.) Based on the parties’ submissions and arguments, together with all pleadings, records, [499]*499and files herein, and the Court being fully advised in the premises, the Court grants Taiyo’s Motion to Compel and its request for an extension of the discovery deadline.

BACKGROUND

This matter arises from the fact that Blue California advertises its L-theanine product as “naturally derived from green tea.” (Compl. ¶ 12.) Taiyo, which also manufactures and sells L-theanine, brought this suit alleging Blue California’s advertisement was false because its L-theanine was in fact not “naturally derived from green tea.”

Before suit was brought, Taiyo became suspicious about Blue California’s claim that its L-theanine was naturally derived from green tea because the process of extracting L-theanine from tea leaves is very expensive and this was inconsistent with the price charged by Blue California for its L-theanine supplement. To test whether Blue California’s claims of natural derivation would pass scientific muster, Taiyo hired Molecular Isotope Technologies, LLC (“Molecular”). Molecular’s Dr. John Jasper tested the isotopic composition of Blue California’s L-theanine, which provided a specific ratio of isotopes characteristic of the L-theanine. This ratio was then compared to the ratio of isotopes existing in tea leaves. The two ratios were different, and this led Taiyo to believe that Blue California’s L-theanine was not derived from green tea leaves. These results prompted Taiyo to send a cease-and-desist letter to Blue California demanding that Blue California not claim that its L-theanine was naturally derived from green tea.

On September 7, 2010, after Blue California’s failure to respond to its letter, Taiyo filed the Complaint. Taiyo initially also filed a motion for preliminary injunction, but withdrew the motion in favor of expedited discovery. Taiyo’s expedited discovery included document requests, interrogatories, and depositions of two of Blue California’s representatives. The parties signed a stipulated Protective Order, which was entered by the Court on November 1, 2010. (Doc. Nos. 22, 24.)

Discovery Requests

Taiyo served its First Requests for Production of Documents and its First Set of Interrogatories to Blue California on November 18, 2010. Blue California responded to Taiyo’s first discovery requests on December 20, 2010. Then on both December 22, 2010, and January 10, 2011, Blue California provided supplemental responses to Taiyo’s discovery requests. Now, in its motion to compel, Taiyo alleges that Blue California’s responses to these discovery requests are insufficient, particularly with respect to Request Nos. 3, 6, 7, and 8, as well as Interrogatories Nos. 1-5, because they do not describe Blue California’s L-theanine production process in enough detail to allow Taiyo to replicate the process.

Blue California contends that it has produced documents that are relevant and non-privileged, and that it was responsive to Tai-yo’s discovery requests. Specifically, Blue California asserts that its response regarding Dr. Jasper’s isotopic-composition analysis is sufficient and that no further discovery of the sort sought by Taiyo is necessary. Blue California explains that it starts its L-thea-nine production with green tea and other unidentified material and that the process “could result in altered isotope composition,” but that “[t]he exact process or the exact chemical reaction is not clear because it happens in a complex mixture.” (Doc. No. 51, Def.’s Mem. 6.) Blue California further contends that it has provided an adequate response in relation to Dr. Jasper’s isotopic findings.

Depositions of Blue California Representatives

Taiyo deposed both Steven Chen and Dr. Oliver Yu, representatives of Blue California, regarding Blue California’s L-theanine production process. In their description of the process, both Chen and Yu identified green tea leaves as a starting material, and Chen also admitted that a portion of the L-theanine product of Blue California’s production process was derived from other substances that went through microbial fermentation. In testimony that Blue California designated as Confidential Attorneys’ Eyes Only, Chen and Yu described the details of [500]*500Blue California’s L-theanine production process and provided a general description of the mechanisms of Blue California’s enzymes. However, both refused to identify the enzymes used in Blue California’s production process because of their belief that the enzymes constituted trade-secret information.

Discovery Dispute

Over the last two-and-a-half months, the parties have been meeting and corresponding over Taiyo’s demand for detailed information about the ingredients and process utilized by Blue California in its production of L-thea-nine. But an impasse has been reached and Blue California has refused to disclose all of the starting ingredients, the specific enzymes, and the production process involved in its production of L-theanine, which, Blue California continues to maintain, is naturally derived from green tea.

DISCUSSION

I. Standard of Review

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275 F.R.D. 497, 80 Fed. R. Serv. 3d 319, 2011 U.S. Dist. LEXIS 85057, 2011 WL 3156042, Counsel Stack Legal Research, https://law.counselstack.com/opinion/taiyo-international-inc-v-phyto-tech-corp-mnd-2011.