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: July 30, 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” or “Defendant”) has filed a third motion to compel discovery. (“Motion”; D.E. 174.) Defendant[1] also wants a further four-month discovery extension, at least measured from the date of the Court's final order on the Motion. Defendant also certifies that it complied with Local Rule 37.2 via a meet-and-confer that occurred on May 24, 2021 – nearly two months before the filing of this Motion asking for a further discovery extension. Motion at 2. The background of this matter is set forth in detail in five multi-page discovery orders that the Court has entered since March 2021 to resolve various discovery disputes in this matter. (D.E. 130, 133, 155, 163, 170.) The Court has ruled already, in one or more of those earlier orders, on many of the disputes presented in the Motion. The Court will proceed to decide this Motion, in the interest of advancing this matter and resolving disputes promptly. Fed. R. Civ. P. 1. Requests for Production Nos. 89-99: No. 89-92, 99: The objections set forth by Plaintiffs in response to this request (Motion, Exh. B, D.E. 175-2) are presumptively overruled because the Court considers limited discovery of information concerning other patents, customers or licensees to be relevant and proportional under Rule 26(b)(1), and part of Defendants' counterclaim or defense to this suit involves claims that Plaintiffs misled such other parties about the '734 Patent, its validity, or its expiration. The Court was prepared to compel responses to these document request in some limited, reasonable form, but in their response to the Motion, Plaintiffs pointed out that notwithstanding their overruled general objections to producing during the pendency of their partial dismissal motion aimed at the counterclaims, they made a supplemental production on May 11, 2021. Plaintiffs' Response in Opposition to Defendants' Third Motion to Compel (“Resp.”; D.E. 179) at 4 n.2. Their supplemental production, Plaintiffs said, included: ■ “[A] chart of all direct customers and licensees of Tungsten Carbide Rings, including Defendants, that were contacted regarding the continued validity of the '734 Patent”; ■ “[T]he notification that Plaintiffs sent to each direct customer and licensee regarding the continued validity of the '734 Patent related to Tungsten Carbide Rings”; ■ “[A]n additional license agreement with another licensee which was signed after the USPTO issued the Certificate of Correction for the '734 Patent”; and *2 ■ “[N]on-privileged documents and communications concerning the 2018 Certificate of Correction.” Id. at 4. Defendants filed their Motion and supporting memorandum of law (D.E. 175) on July 16, 2021, more than two months after Plaintiffs' supplemental production. But the focus of Defendants' arguments in the memorandum is almost entirely on Plaintiffs' generalized objections that the Court is overruling, and not on the sufficiency of the actual document production including the materials produced on May 11. The Court recognizes that Defendants may well have more to say about the produced documents and their purported insufficiency, but at this point if the Court were to grant Defendants leave to reply on that issue, they would be addressing it for the first time on reply when they could have addressed it in their initial motion papers. Arguments raised for the first time on reply are waived. Innogenetics, N.V. v. Abbott Labs., No. 05-C-0575-C, 2006 WL 6068352, at *2 (W.D. Wis. Aug. 11, 2006) (citing Multi-Ad Servs., Inc. v. N.L.R.B., 255 F.3d 363, 370 (7th Cir. 2001)). And for good reason: Making such arguments in that posture “asks the Court to aim at a moving target.” Id. Defendants' request to have the Court compel responses over and above the foregoing supplemental production, without having explained initially why that supplemental production falls short, represents just such a moving target, in that the Court is learning about the supplemental production for the first time in Plaintiffs' response memorandum a substantial period after the movants (the Defendants) received the production. The Court, in its discretion in managing discovery, Jones v. City of Elkhart, Ind., 737 F.3d 1107, 1115 (7th Cir. 2013), accordingly denies the Motion as to Request Nos. 89-92 and 99. Plaintiffs are reminded that their generalized objections based on the pendency of their partial motion to dismiss, or on the idea that Defendants should receive no patent-related discovery because this matter is not a patent infringement suit, remain overruled. No. 93: Defendants appear to have moved on this request because they wish to see Plaintiffs' generalized objections overruled, even as Plaintiffs agreed to produced non-privileged, responsive documents. C&C Jewelry Mfg., Inc.'s Memorandum in Support of Its Third Motion to Compel (“Mem.”; D.E. 175) at 10 n.2. The generalized objections still are overruled, but the Motion is denied as to Request No. 93. No. 94-98: These are contention discovery request seeking supporting documents for specified allegations in the Complaint including certain of Plaintiffs' damages claims. The Court previously indicated its disdain for such document requests in this matter, and while it appreciates that contention interrogatories or documents are not improper in and of themselves, the discovery being allowed in this matter is extensive, and expert discovery will provide even more insight into the parties' respective contentions and support for those contentions. (See D.E. 155 at 5-6.) The Court in its discretion in discovery management is denying the Motion as to Request Nos. 94-98, for the reasons it previously stated in its May 11, 2021 order. (D.E. 155); Jones, 737 F.3d at 1115. Interrogatory Nos. 5-12 *3 Several of these interrogatories also are contention discovery, but they are different in that they delve into the substantive questions of the '734 Patent's validity and enforceability. Not surprisingly, Plaintiffs object to providing responses identifying specific CCJM products and the manner in which they are contended to infringe the '734 Patent, or how particular claims of the '734 Patent are valid as novel or non-obvious. In their opposition memorandum, Plaintiffs assert that they are not owners of the patents and thus should not be required to address patent infringement or validity issues, and they repeat their objection that “this is not a patent matter” (as well as the Court's agreement with that general principle). Resp. at 9. Plaintiffs also suggest that being forced to address claim construction issues, through responses to these interrogatories, is inconsistent with the Court having declined to enter a Local Patent Rule schedule with a claim construction phase. Id. But the touchstone for the Court on the instant motion remains the scope of Rule 26(b)(1) discovery, not whether a Local Patent Rule schedule was set, and not whether Plaintiffs owned the patent, as they might still have contentions about enforceability or invalidity. Nonetheless, the relevance of this detailed contention discovery on patent claim construction, validity and enforceability, is marginal compared to the substantial burdens associated with responding to these interrogatories. Plaintiffs' contract-based allegations assert that the Section 3.3 of the 2011 License Agreement (filed under seal, see D.E. 23) governed disputes over “Licensed Products” and provided that Defendants could have notified Plaintiffs if Defendants believed any product was no longer a “Licensed Product” because claims of the '734 Patent or the '314 Patent were “found to be invalid or unenforceable in a Court of Law of have been amended or finally rejected in a Reexamination proceeding before the [USPTO].” Complaint (D.E. 1) ¶¶ 39-40. Plaintiffs then assert that no such dispute was ever raised and no such claims have ever been found invalid or unenforceable or were amended or rejected in a re-examination proceeding. Id. ¶ 41. Defendants in their counterclaim and affirmative defenses still attack enforceability and invalidity of the patents, but on the proportionality side of Rule 26(b)(1), the Court does not see the exhaustive patent-related contention discovery sought in Interrogatory Nos. 5-12 as proportional to the needs of the case. The Motion is denied as to those interrogatories. Requests for Admission The Motion seeks compelled responses or supplementation as to Request Nos. 1-3, 12, and 15-17. The Court previously has ordered (D.E. 155) some of these requests to be supplemented, as Plaintiffs did on May 28, 2021, when they served supplemental responses. (Motion, Exh. H, D.E. 175-8.) Defendants' brief in support of their Motion then blasts Plaintiffs' May 28 supplemental responses for insufficient supplementation as to Request Nos. 1-3 and 12. (CCJM Memorandum (“Mem.”); D.E. 175 at 1.) But it is apparent that no meet-and-confer was held to discuss the supplemental responses, because Defendant relies upon a May 24, 2021 telephone conference – four days before service of Plaintiffs' supplemental responses – for its certification of Local Rule 37.2 compliance. The supplemental answers this time state that Plaintiffs lack sufficient information to admit or deny the requests, because the requests call for legal conclusions. Plaintiffs' position is a clever way of seeming to have complied with Rule 36 by stating in detail why they cannot answer, but if their objection as to “legal conclusions” is overruled, their supplemental answers would be insufficient. The Court took a closer look, given the supplemental answers, at whether the type of patent law issues embedded in Request Nos. 1-3 and 12 truly call for an application of law to fact, as Defendant contends is the reason why they must be answered, or whether those patent issues are so purely legal that, aside from the questionable proposition that they are proportional under Rule 26(b)(1), the requests for admission should not be further enforced under Rule 36. The Court has determined that the weight of authority indicates that questions of patent validity and enforcement, such as those touched upon by Request Nos. 1-3 and 12, are closer to being purely legal than mere applications of law to fact for purposes of Rule 36(a)(1); several courts that have considered this issue have decided that such requests for admission call for a legal conclusion and need not be admitted or denied. See Tulip Computers Int'l B.V. v. Dell Computer Corp., 210 F.R.DE. 100, 108 (D. Del. 2002); Pittway Corp. v. Fyrnetics, Inc., No. 91 C 2978, 1992 WL 12564602, at *12-13 (N.D. Ill. June 26, 1992); Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co., Inc., 130 F.R.D. 92, 96 (N.D. Ind. 1990). Following those authorities, and considering the questionable Local Rule 37.2 compliance, the Motion is denied as to Request Nos. 1-3 and 12. *4 As to Request Nos. 15-17, there is no Rule 37.2 compliance issue, but the Motion fails because those requests similarly call for patent-related legal conclusions, as do Request Nos. 1-3 and 12. Accordingly, the Motion is denied as to all the Requests to Admit raised in the Motion. In sum, the Motion is denied in its entirety. So is the request for a further four-month discovery extension. Fact discovery remains set to close on November 5, 2021, a date that remains firm. SO ORDERED. ENTER: Footnotes [1] There are two defendants in this case: CCJM and Robert G. Connolly, who has a pending motion to be dismissed from the case for want of personal jurisdiction. The Court is fully aware that as of today's order, Connolly still is a defendant in this case, and the Court's use of “Defendant” to refer to movant CCJM is no comment on the merits or demerits of any party's position on personal jurisdiction over Connolly.