PODIUM CORPORATION INC., Plaintiff, v. CHEKKIT GEOLOCATION SERVICES INC., Defendant Case No. 2:20-cv-00352-JNP-DAO United States District Court, D. Utah, Central Division Signed April 01, 2021 Counsel Anthony J. Weibell, Dylan J. Liddiard, Wilson Sonsini Goodrich & Rosati, Palo Alto, CA, Ava R. Miller, Wilson Sonsini Goodrich & Rosati PC, Los Angeles, CA, J. Derek Kearl, Holland & Hart LLP, Salt Lake City, UT, John Rafael Perez, Pro Hac Vice, Wilson Sonsini Goodrich & Rosati, New York, NY, for Plaintiff. Jose A. Abarca, Romaine C. Marshall, Tanner Brad Camp, Pro Hac Vice, Nicolas Castanuela Wilde, Armstrong Teasdale LLP, Salt Lake City, UT, for Defendant. Oberg, Daphne A., United States Magistrate Judge ORDER DENYING DEFENDANT'S SHORT FORM DISCOVERY MOTION (DOC. NO. 40) AND GRANTING PLAINTIFF'S SHORT FORM DISCOVERY MOTION (DOC. NO. 41) *1 Before the court are Defendant Chekkit Geolocation Services, Inc.’s (“Chekkit”) Rule 37-1 Short Form Discovery Motion Re: Request for Production No. 4 (“Chekkit Mot.,” Doc. No. 40) and Plaintiff Podium Corporation Inc.’s (“Podium”) Short Form Discovery Motion to Compel Defendant to Supplement Its Responses to Plaintiff's First Set of Interrogatories and First Set of Requests for Production (“Podium Mot.,” Doc. No. 41). The court held a hearing on these motions on March 31, 2021. (Doc. No. 65.) For the reasons stated at the hearing and set forth below, the court DENIES Chekkit's discovery motion (Doc. No. 40) and GRANTS Podium's discovery motion (Doc. No. 41). A. Chekkit's Discovery Motion (Doc. No. 40) Chekkit seeks to compel Podium to state whether it is withholding documents responsive to Request for Production (“RFP”) 4 based on Podium's relevance objection. RFP 4 requests “[a]ll documents Podium has sent to or received from Summit Partners that evidence, constitute, concern, refer to, or relate to Chekkit.” (Ex. 1 to Chekkit Mot., Pl.’s Objections and Resps. to Def.’s First Set of Disc. Reqs. To Pl. 10, Doc. No. 40-1.) Podium objects to the request on the ground that it seeks information which is not relevant to any party's claim or defense. (Id.) Chekkit argues Podium is required to state whether it is withholding documents on the basis of this objection, regardless of whether the request is relevant to the case. Podium responds that, while it is not currently aware of any responsive documents, it should not be required to undertake a search of its records to determine whether responsive documents exist unless Chekkit articulates how the request is relevant to the case. Rule 34 of the Federal Rules of Civil Procedure provides that “[a]n objection must state whether any responsive materials are being withheld on the basis of that objection.” Fed. R. Civ. P. 34(b)(2)(C). However, to fall within the scope of discovery under Rule 26, a request must be “relevant to any party's claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). The party asserting a discovery response is inadequate “has an implicit obligation to address relevance because the scope of discovery is limited to information relevant to any party's claim or defense.” Jensen v. W. Jordan City, No. 2:12-cv-00736, 2015 U.S. Dist. LEXIS 120730, at *3 (D. Utah Sep. 9, 2015) (unpublished). Thus, Chekkit must first articulate how RFP 4 is relevant to the claims or defenses in this case before the court will order Podium to search for documents responsive to this request.[1] *2 Chekkit asserts the request is relevant to a potential defense of unclean hands, but Chekkit has not pleaded this defense in its Answer. (See Answer, Doc. No. 26.) Although Chekkit indicated at the hearing that it may amend its Answer if Podium produces documents supporting an unclean hands defense, Chekkit is not entitled to discovery solely aimed at developing a new, unpleaded defense. See Gatti v. Granger Med. Clinic, P.C., No. 2:19-cv-00028, 2019 U.S. Dist. LEXIS 202299, at *5 (D. Utah Nov. 20, 2019) (Parties “have no entitlement to discovery to develop new claims or defenses that are not already identified in the pleadings.” (quoting Advisory Committee Notes to Fed. R. Civ. P. 26(b)(1)). Chekkit has failed to demonstrate RFP 4 is relevant to any party's claim or defense in the operative pleadings as they stand. In sum, Chekkit has failed to demonstrate RFP 4 falls within the scope of discovery under Rule 26, which is a prerequisite to finding Podium's response to be inadequate. Accordingly, Chekkit's motion (Doc. No. 40) is DENIED. B. Podium's Discovery Motion (Doc. No. 41) Podium seeks an order compelling Chekkit to respond to Interrogatory 5 and RFPs 16 and 26. Interrogatory 5 and RFP 16 Podium has asserted claims against Chekkit for copyright infringement, trademark infringement, and related claims, alleging Chekkit unlawfully copied and used Podium's intellectual property in order to sell competing products and services and solicit away Podium's customers. (See Compl. ¶¶ 2, 74–92, Doc. No. 2.) Interrogatory 5 asks Chekkit to “provide monthly unit sales, revenue, and any costs deducted from revenue to arrive at a profit calculation” for each of Chekkit's products and services, which Chekkit identified in response to Interrogatory 2. (Ex. A. to Podium Mot., Def.’s Resps. To Pl.’s First Set of Interrogs. (“Interrog. Resps.”) 8, Doc. No. 41-1.) RFP 16 requests “[d]ocuments sufficient to show the monthly and annual sales (in dollars and in number of units sold) of each of Chekkit's products and services.” (Ex. B. to Podium Mot., Def.’s Resps. To Pl.’s First Set of Reqs. for Produc. (“RFP Resps.”) 10, Doc. No. 41-2.) Chekkit objected to these requests on grounds of relevance, confidentiality, and temporal overbreadth, and it declined to respond. (Interrog. Resps. 8, Doc. No. 41-1; RFP Resps. 10, Doc. No. 41-2.) Podium asserts the requested discovery is relevant to determining damages for its copyright and trademark infringement claims. Chekkit argues the requests are not relevant insofar as they seek information unrelated to Podium's former customers.[2] Chekkit asserts Podium has sufficient information to calculate its damages based on a chart Chekkit provided in response to another interrogatory, which lists former Podium customers which are now Chekkit customers, and the amount each customer has paid to Chekkit to date. Podium's copyright and trademark infringement claims go beyond solicitation of former customers. Podium alleges Chekkit infringed Podium's intellectual property in order to sell its products and services generally, not just to solicit former Podium customers. (See Compl. ¶¶ 2, 74–92, Doc. No. 2.) Additionally, Podium confirmed at the hearing that its claims relate to all products and services which Chekkit listed in response to Interrogatory 2. Thus, discovery regarding Chekkit's overall sales and profits are relevant to damages for Podium's copyright and trademark infringement claims. Chekkit's relevance objection is overruled. *3 For these reasons, the court GRANTS Podium's motion with respect to Interrogatory 5 and RFP 16 and ORDERS Chekkit to respond to these requests within fourteen days of this order. RFP 26 RFP 26, as narrowed by the parties’ conferral, asks Chekkit to produce all agreements between Chekkit and any of Podium's former customers who have purchased Chekkit's products or services. (Podium Mot. 2, Doc. No. 41; RFP Resps. 13, Doc. No. 41-2.) Chekkit has offered to provide a “representative sample” of ten to fifteen agreements with former Podium customers, but it refuses to produce all such agreements. (Def.’s Resp. to Podium Mot. 2–3, Doc. No. 43.) Podium argues all agreements with its former customers are relevant to damages, including the specific terms in each agreement identifying the products and services sold, pricing, and the timeframe of the sale. Chekkit acknowledges variation among the agreements as to these terms, but argues a representative sample of ten to fifteen agreements is nevertheless sufficient. Chekkit also argues producing all of the approximately 250 agreements would be unduly burdensome because Chekkit is a small corporation and it could take an employee a few days to compile the requested documents. The court finds the requested documents are relevant to Podium's claims, and a representative sample is insufficient given the variations among the agreements. Further, the burden of producing the documents does not outweigh the likely benefit of the discovery, given the documents’ relevance to Podium's claims. See Fed. R. Civ. P. 26(b)(1). Because RFP 26, as narrowed, is relevant and proportional to the needs of the case, the court GRANTS Podium's motion with respect to RFP 26 and ORDERS Chekkit to produce all agreements with former Podium customers within fourteen days of this order. C. Conclusion The court DENIES Chekkit's discovery motion (Doc. No. 40), GRANTS Podium's discovery motion (Doc. No. 41), and ORDERS Chekkit to produce the responsive documents and information set forth above within fourteen days of this order. DATED this 1st day of April, 2021. Footnotes [1] Chekkit argues it is merely seeking a statement from Podium regarding whether responsive documents are being withheld, and it is not seeking to compel production of documents. But in order to determine whether any responsive documents exist which have not been produced, Podium must first undertake a search of its records. The court will not require such a search unless Chekkit's discovery request is relevant to this case. [2] Chekkit did not rely on its confidentiality or temporal overbreadth objections in its response to Podium's motion or at the hearing. (See Def.’s Resp. to Podium Mot., Doc. No. 43.) Accordingly, the court does not address them.