DIAMOND SERVICES MANAGEMENT COMPANY, LLC and FREDERICK GOLDMAN, INC., Plaintiffs, v. C&C JEWELRY MANUFACTURING, INC. and ROBERT G. CONNOLLY, Defendants Case No. 19 C 7675 United States District Court, N.D. Illinois, Eastern Division Filed: May 11, 2021 Counsel Leah Rachel Bruno, Kristine Marie Schanbacher, Shannon Young Shin, Dentons US LLP, Chicago, IL, Tony K. Lu, Pro Hac Vice, Dentons US LLP, Boston, MA, for Plaintiff Diamond Services Management Company LLC. Leah Rachel Bruno, Kristine Marie Schanbacher, Shannon Young Shin, Dentons US LLP, Chicago, IL, for Plaintiff Frederick Goldman, Inc. John G. Fischer, Pro Hac Vice, Scheef & Stone, LLP, Frisco, TX, Jonathan Paul Froemel, Mark A. Hagedorn, Kyle Alexander Forgue, Barnes & Thornburg LLP, Chicago, IL, for Defendants. Fuentes, Gabriel A., United States Magistrate Judge ORDER *1 This matter is before the magistrate judge on discovery referral. (D.E. 116.) Defendant and counterclaimant C&C Jewelry Manufacturing, Inc. (“CCJM”) has moved to compel a substantial volume of supplemental discovery responses from plaintiffs Diamond Services Management Co., LLC and Frederick Goldman, Inc. (D.E. 141.) CCJM also filed a motion to seal selected, redacted portions of its memorandum in support of the motion. (D.E. 145.) A telephonic hearing was held on both motions before the Court on May 10, 2021. At the hearing and in the motion papers, a vast majority of the 86 document requests came up as in dispute, along with all 12 requests for admission and all four interrogatories from CCJM's first set of interrogatories. The Court, in this order, has sought to address all of the discovery requests in dispute. For the reasons stated below and as to the discovery requests set forth below, the motion to compel is partially granted and partially denied, and the motion to seal is denied. I. Motion to Compel Document Requests Request Nos. 1-3: Recurring throughout plaintiffs' resistance to these requests and multiple other discovery requests is the argument that the discovery should wait until after the district court rules on the pending motions to dismiss the complaint and the counterclaims. Plaintiffs say that if the district court rules that defendants may not, as a matter of contract, raise the supposed invalidity of the '734 Patent in this lawsuit, that issue would be outside the scope of relevant and proportional discovery under Rule 26(b)(1), even in defendants' counterclaims. In those counterclaims, CCJM alleges fraudulent conduct by plaintiffs in connection with the submission of Certificates of Correction to the USPTO in a manner that wrongfully or improperly sought to extend the life of the '734 Patent; CCJM also says that a recent re-examination of that patent resulted in the invalidation of all of its claims. (CCJM's Memorandum in Support (“Mem.”), D.E. 142, at 2-4 & Exh. A.) The magistrate judge respectfully disagrees that discovery on CCJM's counterclaim allegations should be delayed or stayed. The district judge, on February 12, 2021, did not expressly address the idea of staying any discovery until he decided those motions, but he did say he would decide the motions as soon as he could, and he expressed a general desire to keep the case moving. The magistrate judge echoed those sentiments in the scheduling order it issued on April 8, 2021. (D.E. 133.) Earlier in the case, on November 29, 2020, the district court suggested that the parties might move to stay discovery if they wished, but they had not done so (and still have not done so), and the district court's comments suggested that it believed a stay might not be productive because the motion on file then was not likely to dispose of the entire case. (Mem., Exh. E. at 5-6, 13.) Instead, the district court suggested that the parties “prioritize” discovery, but that was some seven months ago, and four months after the Local Rule 37.2 conference that gave rise to the instant motion to compel. In that time, rather than prioritize or phase discovery, the parties have argued over what is or is not discoverable, and plaintiffs have taken the position that they will resist many discovery requests completely until the dispositive motions are decided. The district court will make whatever decision it makes on plaintiffs' pending motion to dismiss, but the magistrate judge, under all the circumstances, does not see a de facto stay on the predominant issues in CCJM's discovery requests as productive at this phase of the case, with fact discovery set to close on November 5, 2021. On balance, given the Court's broad discretion in managing discovery, see Jones v. City of Elkhart, Ind., 737 F.3d 1107, 1115 (7th Cir. 2013), and in the absence of a stay, the Court overrules plaintiffs' objections to discovery requests based on the pendency of the dispositive motions. The motion to compel is granted in part as to Request Nos. 1-3, and plaintiffs are ordered to produce responsive, non-privileged documents in their possession, custody and control (“Responsive Documents”) by 5 p.m. May 28, 2021, with the term “agreements” limited to those which, as to any of the listed patents, bear upon the deletion of the claim of priority of the '734 Patent, including but not limited to the filing of requests for Certificate(s) of Correction directed at deleting the claim of priority and/or extending the life of the '734 Patent. *2 Request Nos. 4-15: For the same reasons stated with respect to Request Nos. 1-3, plaintiffs' objections are overruled, the motion to compel is granted, and plaintiffs are ordered to produce Responsive Documents by 5 p.m. on May 28, 2021. Request Nos. 16-17: For the same reasons stated with respect to Request Nos. 1-3, plaintiffs' objections are overruled, the motion to compel is granted in part, and plaintiffs are ordered to produce Responsive Documents by 5 p.m. May 28, 2021, with the requests limited to communications bearing upon any request for Certificate of Correction directed at deleting the priority claim of the '734 Patent. Request Nos. 18-19: These requests directed at “[a]ll communications” concerning the 2007 Agreement, from which plaintiffs originally obtained their exclusive license from Trent West to sell tungsten carbide jewelry finger rings manufactured under West-owned patents, may be relevant to the claims and defenses in this case involving plaintiffs' claims that defendants breached the subsequent 2011 License Agreement granting defendants a non-exclusive license to make, use, import and sell certain such finger rings in exchange for royalty payments. But CCJM did not establish in the motion why such broad discovery of “all” communications concerning the 2007 Agreement between plaintiffs and West is proportional to the needs of this case arising from defendants' alleged breach of the 2011 License Agreement, notwithstanding the attenuated relationship between the 2007 Agreement and the 2011 License Agreement in which plaintiffs granted a license to CCJM in connection with a 2011 settlement of patent litigation between CCJM and West. The motion is denied as to these two requests. Request Nos. 22-23: These requests for “[a]ll communications” between plaintiffs and West or West's counsel “after January 1, 2018” are overbroad and disproportionate. The motion is denied as to these two requests. Request Nos. 24-25: As phrased, these requests for “[a]ll communications” between plaintiffs and West or West counsel “related to” the 2011 Settlement Agreement are overbroad and disproportionate. The 2011 Settlement Agreement, as the Court understands it, is the 2011 agreement settling the patent litigation between defendant CCJM and West and giving rise to the 2011 License Agreement between plaintiffs and CCJM, and thus it is within the scope of Rule 26(b)(1) relevancy. (See Defendants' Counterclaims, D.E. 22, ¶ 23.) Plaintiffs' objections are overruled, the motion to compel is granted in part, and plaintiffs are ordered to produce Responsive Documents by 5 p.m. May 28, 2021, with the requests limited to communications between plaintiffs and West or West's counsel concerning the aspect of the 2011 Settlement Agreement resulting in the 2011 License Agreement. Request Nos. 26-27: Plaintiffs' objections to these requests as “overly burdensome” are overruled.[1] As among the 2007 Agreement, the 2011 Settlement Agreement, and the 2011 License Agreement, the latter has the greatest relevance to the issues in this case, and defendants' requests directed at communications between plaintiffs and West or West's counsel as to the agreement under which plaintiffs were to license the tungsten carbide ring products to CCJM are relevant and proportional. The motion is granted as to these requests. *3 Request Nos. 32-58: These are contention discovery requests aimed at obtaining documents said to “support[ ]” the allegations in particular paragraphs of the Complaint. The Court believes that discovery requests like these usually turn out to be little more than make-work for the receiving party, which is not generally barred from offering evidence or contentions not contained in the responses. See United States ex re. Tyson v. Amerigroup Ill., Inc., 230 F.R.D. 538, 541 (N.D. Ill. 2005). Instead of obtaining useful discovery when requests such as these are propounded before expert discovery, the requesting party often receives only a “evanescent and illusory narrowing of the issues.” Id. at 542. In this case, plaintiffs' expert disclosures are set to be served on December 6, 2021, and that expert report may be highly “revelatory of the theory of theories actually to be relied on,” rendering earlier contention discovery requests “exercises in futility.” See id. at 541-42. Because neither fairness nor efficiency would be served by granting the motion to compel as to these requests under the circumstances of this case, see Fed. R. Civ. P. 1, the motion is denied as to them. See Fed. R. Civ. P. 1; Ziemack v. Centel Corp., No 92 C 3551, 1995 WL 729295, at *2 (N.D. Ill. Dec. 7, 1995). Request Nos. 59-60: Plaintiffs' vagueness objections to Request No. 59 are overruled. These requests are directed at the “extension of the life” of the '734 Patent, an issue related to CCJM's allegation that FGI “sent letters to entities on or around September 2018 asserting that ‘[o]ur Tungsten Carbide rings will be protected in the market through 2023’ in relation to a September 2018 Certificate of Correction issued in the '734 Patent deleting the sentence ‘This patent is subject to a terminal disclaimer.’ ” (Defendants' Counterclaim, D.E. 22, ¶ 209.) Request No. 59 is directed at any “consideration” provided in connection with extending the life of that patent, and Request No. 60 is directed at communications after September 2018 concerning the licensing of the other West patents whose prior art is now said to invalidate the '734 Patent's claims in the wake of Certificates of Correction including one dating to September 2018. These requests are relevant and proportional. The motion is granted as to Request Nos. 59 and 60. Request Nos. 61-66: The Court is allowing CCJM discovery on its allegations that plaintiffs caused the entry of various Certificates of Correction with a fraudulent intent as to the extension of the life of the '734 Patent. (CCJM's Memorandum in Support (D.E. 142) at 2-4.) Request Nos. 61-66 seek relevant and proportional discovery on that issue. Moreover, as plaintiffs' counsel noted at argument, plaintiffs are merely the licensors under this patent, and not the patent holder. To the extent plaintiffs possess communications about these Certificates of Correction, the Court would not expect the volume to be as great as if plaintiffs were the patent holder, and the proportionality of asking plaintiffs to produce their copies of these communications is greater. The motion is granted at to these requests. Request No. 67: This overbroad request for all communications related to the 2007 Agreement is disproportionate. The motion is denied as to this request. Request No. 68: The Court agrees that the request for “[a]ll communications” related to a 2019 piece of litigation between West and plaintiffs is overbroad, and the Court is not in a position to re-write or reform the request to ensure relevance and proportionality. The Court is not declaring this 2019 lawsuit off-limits for discovery in this case. But the Court finds the request itself too broad and burdensome, seeking as it does every communication plaintiffs possess relating to a lawsuit in which they are parties or parties in interest. The mere task of placing all of the privileged communications on a log offers just a glimpse of the burden plaintiffs would face in responding to this request. The motion is denied as to this request. *4 Request Nos. 69-70: These requests seek all communications with anyone concerning the 2011 Settlement Agreement and the 2011 License Agreement, as oppose to communications on those topics between plaintiffs and West or West's counsel, sought in Request Nos. 24-27. The Court's ruling as to Request Nos. 24-27, as set forth above, provides CCJM with sufficient discovery on these issues, and the motion is denied as disproportionate as to these requests. Request No. 71: The motion is denied as to this request for the same reason the Court denied the motion as to Request No. 68. Request No. 72: This contention document request for materials supporting an allegation of plaintiffs, or one of them, in an amended complaint in a 2006 lawsuit against West in the Southern District of New York is too far-flung and disproportionate. The motion is denied as to this request. Request No. 74: The motion as to this request is denied for the reasons stated above as to Request Nos. 32-58. Request Nos. 78-80: The motion is denied as to Request No 78 because it includes the denied, abandoned '456 Application, and the request is too broad and would sweep in any communication with virtually anyone about any aspect of the listed patents. Request Nos. 79 and 80 appear to seek the same discovery as Request No. 60, except that the time frame is not limited to after September 2018. The Court was inclined to deny the motion as to these requests on the basis of its having granted the motion as to Request No. 60, except that the Court is not adequately informed as to whether other time frames than the one in Request No. 60 might be appropriate. For the reasons stated as to Request No. 60, the motion is granted in part as to Request Nos. 79 and 80, limited to the time frame after filing date, as to each listed patent, of a Certificate of Correction for such patent. Request No. 81: Without knowing what is redacted from the version of the 2007 Agreement that plaintiffs have produced to CCJM, the Court is not in a position to rule on the motion to compel plaintiffs to produce an unredacted version of the document. The motion is denied without prejudice as to this request, and if the parties decide that they want to spend their resources running this ground ball down for judicial resolution while understanding that the Court would be favorably inclined to producing any confidential business information as attorneys-eyes only, they may do so. Request No. 82: The request for “any communication” related to CCJM or defendant Connolly could include holiday cards (not that plaintiffs would have sent them any) or other innocuous, irrelevant communications, and the motion is denied as to this overbroad and disproportional request. Request No. 83-84: The motion is denied as to these requests for the same reasons the Court denied the motion as to Request Nos. 18 and 19 above. Request No. 85-86: The motion is denied as to these requests in light of the discovery CCJM will receive by virtue of the Court's allowing the motion as to Request Nos. 1-3, thus these requests are disproportional. As for actual document production, plaintiffs' counsel stated at hearing that plaintiffs' “rolling production” began on or about February 19, 2021 (three months after the responses and objections to the document requests were served) with a 119-page production that since has been supplemented to some 300 pages and will be supplemented again over the next month in a production that defense counsel said it learned about for the first time at the hearing. It is time for the “rolling” production to “get rolling.” A timetable for compliance with this order is set forth at the end of the order. Requests for Admission: *5 CCJM confirmed at the motion hearing that although it has not asked that any of the 12 responses to its requests for admission be deemed admitted, it seeks compelled supplemental responses. The objections to these requests variously are that they prematurely call for discovery that ought to wait until after the district court rules on the pending motions to dismiss, or that various terms in the requests are too vague to allow for an admission or a denial. In addition, plaintiffs' counsel noted at hearing that as to some requests, plaintiffs simply do not possess the information that would allow them to admit or deny, because they are the patent licensors and not the patent holders. In any event, plaintiffs, like any litigant, are under an obligation to comply with Rule 36(a)(4) in responding to requests to admit: They must either, admit, deny, or “state in detail why” they “cannot truthfully admit or deny,” and if lack of knowledge is asserted as a reason for not admitting or denying, they must state that after reasonable inquiry, the information they know or can readily obtain is insufficient to enable an admission or a denial. Fed. R. Civ. P. 36(a)(4). In addition, the scope of requests to admit are matters relating to “facts, the application of law to fact, or opinions about either,” and “the genuineness of any described documents.” Fed. R. Civ. P. 36(a)(1). Request No. 1: The information requested for admission or denial in this request is not vague and goes to the heart of what CCJM claims in this case. The question is whether or not, during the cited time period, the '734 Patent claimed priority to a non-provisional patent application with a filing date of September 8, 1998. Plaintiffs' failure to admit or deny this request does not comply with Rule 36(a)(4), and the Court is overruling the objections plaintiffs have set forth. The motion is granted as to this request, and plaintiff must respond in a manner that complies with Rule 36(a)(4). Request Nos. 2-3: Those same objections are overruled as to these requests, as to which the motion is granted, and plaintiffs must respond in a manner that complies with Rule 36(a)(4). Request Nos. 4-5: Notwithstanding plaintiffs' objections that the Court is overruling, plaintiffs have admitted or denied these requests, so the motion is denied as to these requests. Request No. 6: The Court overrules the objections except for the one challenging this request as calling for legal conclusions. Ordinarily, that kind of objection is baseless because Rule 36 calls for admission or denial of matters including the application of law to fact. But in the Court's view, and in its discretion, see Jones, 737 F. 3d at 1115, the request for an admission that the '734 Patent's claim of priority was “improper” at any point in time is so purely legal a conclusion that it beyond the scope of Rule 36. See Sommerfield v. City of Chicago, 251 F.R.D. 353, 355 (N.D. Ill. 2008) (“Requests to admit may not be used to establish legal conclusions.”). The motion is denied as to this request. Request No. 7: The request assumes that plaintiffs believed, at the relevant time set forth in the request, that the '734 Patent's priority date was April 28, 2003. The request then asks plaintiffs to admit or deny that they failed to tell CCJM of that belief. The motion is granted in part as to this request: If either or both plaintiffs believed that the patent had such a priority date at the relevant times and failed to tell CCJM, then either party that did so must admit the request, but if one or both did not have such a belief, the response for such a party would be denial. Alternatively, either plaintiff might truthfully state a lack of knowledge in compliance with Rule 36(a)(4). The fact that neither plaintiff was a holder of the patent does not excuse them from answering in compliance with the rule – they must truthfully admit, deny, or state a lack of knowledge as the rule requires, as they may well have had the information even as licensors of the patent. Plaintiffs may not continue to refuse to answer. Request Nos. 8-9: The Court has overruled plaintiffs' objections (once again, nothing about the requests is vague or confusing), the motion is granted as to these requests, and plaintiffs must answer them. Request No. 10: The motion is denied because plaintiffs denied the request. *6 Request Nos. 11-12: Plaintiffs' objections are overruled, and the motion is granted as to these requests. Interrogatories CCJM propounded four interrogatories in its first set and moved to compel on all of them, at least as far as the Court could tell, as CCJM's memorandum mentioned all of them as having baseless objections. Interrogatory No. 1: The motion is denied as to this interrogatory. Plaintiffs answered it by supplying a name and adequate contact information for the person who answered the interrogatories. Interrogatory No. 2: This contention interrogatory is almost identical to Interrogatory No. 13 from CCJM's second set of interrogatories to plaintiffs, who answered that interrogatory; their answer and the sufficiency of it are not before the Court on this motion to compel. The Court accordingly is denying the motion as to Interrogatory No. 2, in no small part due to the Court's views about the utility of contention discovery at this phase of the case, see the Court's views as to Document Requests 32-58 and 74 above. In so doing, the Court is not reaching the question of whether this hydra-headed interrogatory ought to be counted as multiple interrogatories to the extent it calls for answers beyond a single topic or theme. This denial is without prejudice to either party moving on Interrogatory No. 13 at some point in the future upon compliance with Local Rule 37.2. Interrogatory Nos. 3 and 4: The motion is granted as to these interrogatories. They are not vague, they are directed to relevant subject matter, and the pendency of the motions to dismiss does not justify continuing to place them on hold. *** To recap as to the motion to compel, the motion is granted in part and denied in part. As to document requests: (1) The motion is granted in full as to Document Request Nos. 4-15, 26-27, 59-60, and 61-66; (2) the motion is granted in part, as described by the limiting language above, as to Document Request Nos. 1-3, 16-17, 24-25, 79-80; (3) the motion is denied as to Request Nos. 18-19, 22-23, 32-58, 67-72, 74, 78, and 82-86; and (4) the motion is denied without prejudice as to Request No. 81. All responsive documents are due to be produced by 5 p.m. on May 28, 2021, with a modified set of written responses as to each request fully or partially granted. As for privilege, to the extent any document is being withheld, it must be identified on a privilege log in compliance with the Court's Standing Order, and the parties must confer before 5 p.m. May 28, 2021 as to the date by which the log is to be produced.[2] As to requests for admission: (1) the motion is granted as to Request Nos. 1-3, 8-9, and 11-12; (2) the motion is granted in part, as described above, as to Request No. 7; and (3) the motion is denied as to Request Nos. 4-6 and 10. Supplemental responses in compliance with this order are due to be served by 5 p.m. on May 28, 2021. *7 As to interrogatories: (1) the motion is denied as to Interrogatory Nos. 1 and 2; and (2) the motion is granted as to Interrogatory Nos. 3 and 4. Supplemental responses in compliance with this order are due to be served by 5 p.m. on May 28, 2021. CCJM's request for discovery sanctions is denied, as plaintiffs had a good-faith basis for resisting the discovery as disproportionate to the needs of the case, and thus their resistance was “substantially justified,” defeating the sanctions claim. See Fed. R. Civ. P. 37(a)(5)(A)(ii). II. Motion to Seal Defendants moved to seal two small excerpts from page 3 of the memorandum in support of their motion to compel, but they apparently did not read the Court's Standing Order concerning protective orders and motions to seal. As noted in the Standing Order, under the common law of the Seventh Circuit, material submitted to the Court with a public filing may not be sealed simply because one or more parties sought to give it confidential treatment under a protective order. Rather, a basis must exist for keeping from the public the material requested for sealing. See Bond v. Utreras, 585 F.3d 1061, 1073 (7th Cir. 2009) (noting that public “has a presumptive right to access discovery materials that are filed with the court”); Baxter Int'l, Inc. v. Abbott Labs., 297 F.3d 544, 545-46 (7th Cir. 2002) (stating that filed discovery documents “that influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality ... In civil litigation only trade secrets, information covered by a recognized privilege (such as the attorney-client privilege), and information required by statute to be maintained in confidence (such as the name of a minor victim of sexual assault), is entitled to be kept secret”); Union Oil Co. of Cal. v. Leavell, 220 F.3d 562, 567-68 (7th Cir. 2000) (“Many a litigant would prefer that the subject of the case ... be kept from the curious (including its business rivals and customers), but the tradition that litigation is open to the public is of very long standing.”); Citizens First Nat'l Bank of Princeton v. Cincinnati Ins. Co., 178 F.3d 943, 945-46 (7th Cir. 1999) (warning courts not to allow parties “to seal whatever they want” and urging them to apply “a neutral balancing of the relevant interests” in connection with any good-cause determination presented by a motion to seal). At hearing, defense counsel stated that the six innocuous words from the middle of page 3, describing the manner in which defendants challenged the validity of the '734 Patent (“as a counterclaim to a lawsuit”), and the end of the last sentence of that paragraph (containing the 2011 License Agreement's definition of the term “licensed product”), were sought to be sealed because CCJM was afraid that plaintiffs would accuse CCJM of placing protected information from the 2011 License Agreement into the public arena. But counsel for neither party argued, and nor could they, that any of this material met any of the Seventh Circuit's standards for sealing. Filing a motion to seal filed discovery to protect one's self from accusations of violating a protective order is not a reason to file a motion to seal. The motion to seal is denied, and CCJM is ordered to file a fully unredacted copy of its memorandum forthwith, with the correct Exhibit E (the November 29, 2020 court transcript). *8 Further, the parties' joint written status report due May 14, 2021 is vacated, and the parties are ordered to file a joint written status report by 5 p.m. on May 28, 2021, describing the state of compliance with this order and the expected timetable for service of plaintiffs' privilege log. If the district court rules on the dispositive motions, a joint written status report is due seven days later, after the parties confer under Rule 26(f) about the impact of the ruling on outstanding discovery. SO ORDERED. ENTER: Footnotes [1] So is plaintiffs' objection about the requested documents being “equally in the possession of, or available to, C&C.” This objection, which almost always is a non-starter because a party is entitled to relevant and proportional discovery revealing what is in the other party's files, is overruled as to each and every assertion of it in the discovery request responses at issue here. [2] The apparent sample or exemplar log produced as Exhibit E to one of the filed versions of the CCJM memorandum (D.E. 148-5) is extremely inadequate because it contains no description of any withheld document and thus offers CCJM (and the Court) no way of judging, from the log, whether the privilege claim is sustainable or warrants further scrutiny. See Fed. R. Civ. P. 26(b)(5)(A)(ii).