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Aevoe Corp v. Ae Tech. Co.

May 6, 2013

AEVOE CORP., PLAINTIFF,
v.
AE TECH. CO., ET AL.,
DEFENDANTS.



The opinion of the court was delivered by: Nancy J. Koppe United States Magistrate Judge

ORDER GRANTING IN PART AND DENYING IN PART MOTION TO COMPEL (Docket No. 218)

Pending before the Court is Defendants' motion to compel. Docket No. 218. Plaintiff filed a response and Defendants filed a reply. Docket Nos. 237, 245. The motion came on for hearing on April 29, 2013. See Docket No. 268. Based on the parties' submissions and the argument of counsel, and for the reasons discussed more fully at the hearing, the Court hereby GRANTS in part

DENIES in part the motion as follows:

(1) Request for Production 4: The motion to compel is GRANTED in part, but the request for production shall be limited to policies related to intellectual property to the extent not already

(2) Requests for Production 13-15: These requests relate to several non-touch screen products, which Defendants assert are relevant to, inter alia, their amended unenforceability counterclaim. See Mot. at 11. The Court agrees with Defendants that the information sought is relevant to the counterclaim, see Docket No. 217 at 12, and discoverable generally, see Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 635 (9th Cir. 2005) (discussing relevancy standard).*fn1

Plaintiff resists producing the documents by arguing that the amended counterclaim will ultimately fail, see Response at 6-7, and that the amended counterclaim is being challenged in a pending motion to dismiss, see id. at 7. As a result, Plaintiff argues that "it is impractical to grant broad discovery on claims that have already been dismissed and are likely to be dismissed again."

. Plaintiff's argument is not persuasive. The pendency of a motion to dismiss does not in itself allow a party to avoid discovery. Tradebay, LLC v. eBay, Inc., 278 F.R.D. 597, 600 (D. Nev. 2011) ("The Federal Rule of Civil Procedure do not provide for automatic or blanket stays of discovery when a potentially dispositive motion is pending"). When a party seeks to avoid responding to discovery requests pending resolution of a motion to dismiss, the proper mechanism for doing so is through a motion to stay discovery. See, e.g., id. at 600-03.*fn2 To succeed in such a motion, the movant carries a "heavy burden of making a strong showing why discovery should be denied." Id.

To be sure, Judge Navarro previously noted several deficiencies in Defendants' counterclaim as initially pleaded. See Docket No. 217 at 9-16. But Judge Navarro also concluded that "Defendants could possibly cure the defects" and granted leave to amend. Id. at 16. Plaintiff has failed to carry its burden of showing that discovery should not go forward based on its motion to dismiss the amended counterclaim. See Tradebay, 278 F.R.D. at 603 (staying discovery pending resolution of motion to dismiss is proper where, inter alia, the Court conducts a preliminary peek at the motion and is "convinced" that a claim cannot be stated).*fn3

Accordingly, the motion to compel is GRANTED.

(3) Request for Production 33: The motion to compel is GRANTED in part, but the request for production shall be limited to touch screen protectors and only to the extent such documents have not already been produced.

(4) Request for Production 53: The motion to compel is GRANTED in part, but the request for production shall be limited to (a) documents within Plaintiff's possession, custody or control; (b) a time-frame 2 years before the application and 6 months after the application; and (c) only to the extent such documents have not already produced.

(5) Request for Production 54: The motion to compel is GRANTED in part with respect to all related patent applications, as well as published applications and file histories related to touch screen protectors, to the extent not already produced, as further clarified at the hearing (Tr. at 46-

(6) Request for Production 57-58: These requests relate to Defendants' amended false marking counterclaim. As with Requests for Production 13-15, Plaintiff's primary argument is that the false marking counterclaim to which these documents relate was previously dismissed and the amended false marking counterclaim is currently being challenged through a renewed motion to dismiss. For the same reasons discussed above, Plaintiff is not excused from complying with discovery requests based solely on the pendency of a motion to dismiss.

Plaintiff also objects to the fact that Request for Production 57 seeks documents for "each and every screen protector" sold by Plaintiff, questioning the relevance of the screen protectors beyond those identified in the amended counterclaim. See Response at 10. The Court agrees that screen protectors beyond those identified in the amended counterclaim are not relevant.*fn4 The Court is not persuaded by Defendants' argument that false ...


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