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Brandt v. Honnecke

United States District Court, D. Colorado

January 23, 2018

STEVEN LEE BRANDT, an individual, JAMES CLAY WALTERS, an individual, and COLORADO BOX COMPANY, INC., a Colorado corporation, Plaintiffs/Counterclaim Defendants,
VON HONNECKE, an individual, CHASE HONNECKE, an individual, and S&H SHEET METAL, INC., a Colorado corporation, Defendants/Counterclaimants. No.-NYW


          Nina Y. Wang, United States Magistrate Judge

         This matter is before the court on Defendants Von Honnecke, Chase Honnecke, and S&H Sheet Metal, Inc.'s (collectively, “Defendants”) Motion for Protective Order Re: Second Deposition of Von Honnecke (the “Motion”), filed October 25, 2017 [#120], which is before the undersigned Magistrate Judge pursuant to 28 U.S.C. § 636(b), the Order of Referring Case dated March 28, 2016 [#21], and the memorandum dated October 26, 2017 [#121]. This court has reviewed the Motion and related briefing, the entire case file, and the applicable law, and has concluded that oral argument will not materially assist in the resolution of this matter. For the reasons stated herein, this court DENIES the Motion.


         This court has discussed the background of this matter in its prior Recommendation, see [#66], and does so here only as it pertains to the instant Motion. This patent infringement case was initially filed by pro se Plaintiffs Steven Lee Brandt (“Mr. Brandt”) and James Clay Walters (“Mr. Walters”) (collectively, “Individual Plaintiffs”) against Defendants. [#1]. In that original Complaint, the Individual Plaintiffs alleged that they were the inventors of United States Patent No. 8, 999, 029 (the “‘029 Patent” or “Asserted Patent”) and owned “all rights, title, and interests in the Asserted Patent.” [Id. at ¶ 9]. The ‘029 Patent entitled “Furnace Filter Box and Method of Assembly” was filed on November 2, 2012, and was issued on April 7, 2015 [#42-1 at 2]. The Asserted Patent has twenty claims, including both device and method claims, and at a high level, is directed at a furnace filter box that is adapted for receiving a furnace filter for filtering intake air that can be quickly assembled and cut to size while maintaining the strength of the box and is easily shipped. [#42-1]. In that original Complaint, the Individual Plaintiffs alleged that S&H “has been and is now directly and indirectly infringing one or more claims of the ‘029 Patent by (1) making, having made, manufactured, distributed, using offering to sell, or selling the patent inventions, (2) by actively inducing others to purchase, distribute, use, offer to sell, or sell the patented inventions, and, or (3) by contributing to the manufacture, distribution, use, sale, and, or offer for sale the patented inventions in the State of Colorado, this Judicial District, and the United States of America.” [#1 at ¶ 35].

         In response to the Honorable Gordon G. Gallagher's Order to Show Cause on January 12, 2016, the Individual Plaintiffs filed an “Amendment to Claim” and a proposed Amended Complaint. [#8, #8-1]. Judge Gallagher directed the Clerk of the Court to docket the Amended Complaint on February 29, 2016. [#10, #11]. Defendants then filed a “First Amended Answer and Counterclaim” on March 10, 2016. [#17]. On March 30, 2016, Brian D. Smith entered his appearance on behalf of the Individual Plaintiffs. [#25]. This court held a Scheduling Conference on April 4, 2016, at which all Parties were represented and participated in submitting the proposed Scheduling Order. [#27, #28, #29].

         On April 21, 2016, the Individual Plaintiffs filed a renewed Motion to Amend the Amended Complaint, indicating that they wished to join one party to the action and to “clean up” the First Amended Complaint that was filed pro se. [#35]. Defendants did not oppose the filing of a Second Amended Complaint, and said complaint was docketed on May 4, 2016. [#42].

         The Second Amended Complaint added Colorado Box Company, Inc. (“Colorado Box”) as a plaintiff, based on the Individual Plaintiffs' assignment of their right, title, and interest in the ‘029 Patent to Colorado Box on March 28, 2016. [#42 at ¶ 3]. S&H was also identified as S&H Sheet Metal, Inc., rather than S&H Heating, A/C, Sheetmetal Co. Compare [id. at 1, ¶ 9] with [#11]. The Second Amended Complaint asserted three causes of action as to the ‘029 Patent: (1) direct infringement by Defendants in violation of 35 U.S.C. § 271(a); (2) induced infringement by Defendants in violation of 35 U.S.C. § 271(b); and (3) contributory infringement by Defendants in violation of 35 U.S.C. § 271(c). [#42]. As relief, Plaintiffs sought damages, prejudgment interest, enhanced damages based on willful infringement, injunctive relief, and attorney's fees and costs. [Id. at 14-16]. Plaintiffs also demanded a jury trial. [Id. at 15]. Defendants filed a “Second Amended Answer and Counterclaim” on May 17, 2016 [#46]. The undersigned subsequently issued a Recommendation to deny Plaintiffs' request to file a Third Amended Complaint, which the presiding judge, the Honorable Raymond P. Moore, adopted in full. See [#66, #70]. Therefore, the Second Amended Complaint is the operative one.

         The undersigned set a Scheduling Order [#29] in this matter that was subsequently amended to account for the appearance of counsel on behalf of Plaintiffs [#54] and to allow for an extension of time for the designation of expert witnesses [#109]. This court also extended the discovery deadline to April 28, 2017. See [#56]. The Parties proceeded through discovery, and, on September 16, 2016, Plaintiffs noticed the Rule 30(b)(6) deposition of S&H Sheet Metal, Inc. (“S&H”), scheduled for October 21, 2016. See [#122-4; #122-5]. The notice identified thirty-two (32) topics to be explored at the Rule 30(b)(6) deposition, and Mr. Von Honnecke was identified, and later testified, as S&H's Rule 30(b)(6) designee. See [#122-5]. The topics included both broad and tailored ones directed at S&H's “legal opinions regarding invalidity, unenforceability, and/or non-infringement of the ‘029 Patent” and at damages. [#126-2].

         Then, on or about August 30, 2017, [1] Plaintiffs disclosed their affirmative experts (a certified public accountant and a professional engineer) and their experts' corresponding reports. See [#109; #120 at 3; #122 at 7-8]. On September 29, 2017, Defendants supplemented their Rule 26(a)(2)(C) disclosures “to memorialize the rebuttal opinions of Mr. Von Honnecke, in view of the Plaintiff's [sic] expert witness reports.” [#120 at 3-4; #122-2]. Defendants' supplemental disclosures state that Mr. Von Honnecke may offer opinion testimony at trial related to issues of infringement, enforceability, and validity of the ‘029 Patent, as well as to issues of damages, including loss profits and/or the establishment of a reasonable royalty rate on a claim-by-claim basis. See [#122-2 at 1-3]. In response to the supplemental disclosures, Plaintiffs noticed the deposition of Mr. Von Honnecke as an individual, scheduled for October 27, 2017. [#122-6].

         Defendants filed the instant Motion on October 25, 2017, seeking a protective order under Rule 26(c), prohibiting the deposition of Mr. Von Honnecke. [#120]. Defendants aver that a protective order is warranted, because Mr. Von Honnecke has already been deposed and Plaintiffs did not seek leave of court to conduct a second deposition, the discovery sought is duplicative and cumulative of discovery already produced, and Plaintiffs had ample opportunities to obtain the information sought by the second deposition. See [#120; #126]. Plaintiffs argue that Defendants fail to demonstrate good cause for a protective order, as Plaintiffs do not seek duplicative and/or cumulative discovery and had no previous opportunities to discovery the information sought because they did not know of Mr. Von Honnecke's rebuttal opinions until after receiving Defendants' supplemental Rule 26(a)(2)(C) disclosures. See [#122]. The Motion is now ripe for disposition.


         Rule 26(b)(1) of the Federal Rules of Civil Procedure defines the scope of permissible discovery in this action. Fed.R.Civ.P. 26(b)(1). The Rule permits discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case. Id. In considering whether the discovery sought is proportional, the court weighs the importance of the discovery to the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Id.

         This scope for discovery does not include all information “reasonably calculated to lead to admissible evidence.” The amendments to Rule 26 effective December 1, 2015, purposefully removed that phrase. See In re Bard Filters Products Liability Litig., 317 F.R.D. 562, 564 (D. Ariz. 2016). As explained by the Bard court, the Advisory Committee on the Federal Rules of Civil Procedure was concerned that the phrase had been used incorrectly by parties and courts to define the scope of discovery, which “might swallow any other limitation on the scope of discovery.” Id. (citing Fed.R.Civ.P. 26 advisory committee's notes to 2015 amendment). The applicable test is whether the evidence sought is relevant to any party's claim or defense, and proportional to the needs of the case. Id. Rule 401 of the Federal Rules of Evidence defines relevant evidence as “evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more or less probable than it would be without the evidence.” Fed.R.Evid. 401.

         Rule 26(c) of the Federal Rules of Civil Procedure provides that a court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense. Fed.R.Civ.P. 26(c). The party seeking a protective order bears the burden of establishing its necessity, Centurion Indus., Inc. v. Warren Steurer & Assoc., 665 F.2d 323, 325 (10th Cir. 1981), but the entry of a protective order is left to the sound discretion of the court. See Rohrbough v. Harris, 549 F.3d 1313, 1321 (10th Cir. 2008). As part of the exercise of its discretion, the court may also specify the terms for disclosure. ...

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