BECTON, DICKINSON AND COMPANY; SIRIGEN, INC; and SIRIGEN II LIMITED, Plaintiffs, v. BECKMAN COULTER, INC., Defendant Case No.: 21cv1173-CAB (NLS) United States District Court, S.D. California Signed October 13, 2022 Counsel Barbara A. Fiacco, Pro Hac Vice, Jeremy Younkin, Pro Hac Vice, Joanna McDonough, Pro Hac Vice, Stuart Knight, Pro Hac Vice, Foley Hoag LLP, Boston, MA, Donald Ross Ware, Pro Hac Vice, Intelletual Property Department, Boston, MA, Lucas Paul Watkins, Pro Hac Vice, Foley Hoag LLP, New York, NY, Thomas Jesse Hindman, Edleson, Rezzo & Hindman, San Diego, CA, for Plaintiffs. Anthony Sheh, Pro Hac Vice, Arthur John Argall, III, Pro Hac Vice, David M. Krinsky, Pro Hac Vice, Teagan James Gregory, Pro Hac Vice, Thomas H.L. Selby, Pro Hac Vice, Debmallo Shayon Ghosh, Williams & Connolly LLP, Washington, DC, Timothy Scott Blackford, Behmer & Blackford, LLP, San Diego, CA, for Defendant. Stormes, Nita L., United States Magistrate Judge ORDER: (1) DENYING MOTION TO ENFORCE; and (2) DENYING EX PARTE MOTION TO FILE SUR-REPLY *1 Before the Court is Defendant's motion to enforce the Court's previous order regarding Discovery Dispute No. 4. ECF No. 177. Plaintiffs filed an opposition, and Defendant filed a reply. ECF Nos. 189, 194. Plaintiffs then filed an ex parte motion for leave to file a sur-reply, and Defendant opposed this request. ECF Nos. 197, 198. For the reasons discussed below, the Court DENIES the motion to enforce and DENIES the motion for leave to file a sur-reply. I. BACKGROUND This is an action for patent infringement where Plaintiffs accuse Defendant Beckman of infringing several of their patents. The asserted patents all relate to chemical structures of fluorescent polymer dyes that are used in flow cytometry. The dyes allow scientists to label and detect biological materials of interest in a sample, including small populations of difficult to detect proteins and cells. ECF No. 1 at ¶ 2. The accused products are Beckman's polymer dye products, its SuperNova Fluorescent Polymer Dyes. Id. at ¶ 4. On April 29, 2022, the parties filed a joint motion for determination of Discovery Dispute No. 4. ECF No. 123. The dispute involved one single Request for Production, No. 18, recited below: Request for Production No. 18: A copy of any document produced by Plaintiffs or The Regents of the University of California in The Regents of the University of California, et al. v. Affymetrix, Inc., et al., Case No. 17-cv-1394 (S.D. Cal.). ECF No. 123 at 2. The Court granted the request to compel production on this request in part and ordered that Plaintiffs produce the following: (1) (i) documents in the “materials considered” sections of the Affymetrix expert reports produced in this case; (ii) documents marked as deposition exhibits in the Affymetrix deposition transcripts produced in this case; or (iii) cited in unredacted portions of Plaintiffs' Affymetrix interrogatory responses produced in this case; (2) documents (other than custodial ESI) that are within the scope of documents Plaintiffs have agreed to produce in this case and were produced in Affymetrix but were not captured by the document collection conducted in response to Defendant's document requests; and (3) documents from the Affymetrix production regarding the one patent that is in common with this instant litigation. ECF No. 147 at 11-12. Defendant then brought this instant motion, arguing that Plaintiffs failed to produce adequately in accordance with the Court's discovery order. II. DISCUSSION Defendant advances two primary arguments for why it believes Plaintiffs are withholding documents and have not adhered to the Court's prior discovery order. First, Defendant argues that Plaintiffs have misinterpreted the Court's order that they produce documents from the Affymetrix production “regarding” the one patent common between Affymetrix and the instant case, U.S. Patent No. 8,575,303 (“the '303 patent”). ECF No. 177 at 10. Specifically, Defendant argues that “regarding” cannot mean only documents that mention the '303 patent, but must at least also include research and development that lead to the inventions disclosed or claimed in the patent. Id. Under this interpretation, Defendant argues that Plaintiffs have only produced “a handful” of documents regarding the research and development of the inventions. Id. at 5. Plaintiffs disagree with this characterization of its production. While they admit that the specific searches they ran on the Affymetrix production were for the '303 patent and the patent application that issued as that patent, they state that they have produced many other documents related to the research and development including: 100 laboratory notebooks, dozens of monthly reports covering research and development work, 200 Life Sciences Research Reagents team updates, and inventor testimony from Affymetrix. ECF No. 189 at 12, 15-16. *2 On this first issue, the Court finds that Plaintiffs have sufficiently produced as to the scope of “regarding” the '303 patent. They have searched for the patent and its application in the Affymetrix production, as well as produced many other documents related to the common inventions at the core of the family of patents. Moreover, the '303 patent is a patent-in-suit in this instant case. Thus, the Court expects that Defendant has separately issued many requests for production and other discovery seeking all relevant information on the '303 patent in this case separate from the Request for Production for discovery regarding the Affymetrix production that was at issue in Discovery Dispute No. 4. Thus, the previous order that Plaintiffs produce documents related to the '303 patent from the Affymetrix production was meant to cover information that was somehow in that production that would not have turned up in any current search for any reason. In addition to the searches Plaintiffs have run and the documents they have already produced, the Court reminds both parties that Plaintiffs were also ordered to produce “documents (other than custodial ESI) that are within the scope of documents Plaintiffs have agreed to produce in this case and were produced in Affymetrix but were not captured by the document collection conducted in response to Defendant's document requests.” Thus, if Defendant propounded discovery requests in this litigation targeting research, development, and other relevant topics on the patents-in-suit—which include the '303 patent—Plaintiffs are under obligation from this part of the Order to find responsive documents in the Affymetrix production that were somehow not captured in the production in this litigation. Second, apart from the dispute above about the scope of “regarding,” Defendant also argues that the search regarding the '303 patent must include ESI documents, including from three inventors of the patent, Ds. Brent Gaylord, Glenn Bartholomew, and Janice Hong. ECF No. 177 at 15. Each of these individuals have also been listed as ESI custodians in this case. Plaintiffs object to this request, arguing that the parties carefully crafted the ESI agreement in this case, intending it to be reciprocal in terms of obligations for both parties, and that this request would require them to search more ESI than intended by the parties agreement. ECF No. 189 at 6-8. On this issue, the Court agrees with Plaintiffs. The three inventors are custodians in the instant litigation and if Defendant wanted information related to the '303 patent, a patent-in-suit, as to research, development, or any other issue, it could have chosen search terms to target that information. Given the documents that have already been produced by Plaintiffs regarding the '303 patent, the Court will not order further search of the Affymetrix ESI in response to Discovery Dispute No. 4. Related to this motion, the parties also filed a reply, a motion for leave to file a sur-reply, and an opposition to the motion for leave. ECF Nos. 194, 197, 198. Because the Court finds it sufficient to resolve the motion on the opening brief and opposition, the Court DENIES the motion for leave to file the sur-reply. III. CONCLUSION After due consideration and for the reasons stated above, the Court DENIES Defendant's motion to enforce the Court's previous discovery order and DENIES Plaintiffs' motion to file a sur-reply. IT IS SO ORDERED.