Seoul Semiconductor Co., Ltd., et al. v. Feit Electric Co., Inc Case No.: 2:22-cv-5097-AB-SHK United States District Court, C.D. California Filed December 04, 2024 Counsel Ashwin J. Ram, Steptoe and Johnson LLP, Los Angeles, CA, Andrew S. Brown, Pro Hac Vice, Bryon T. Wasserman, David Radulescu, Pro Hac Vice, Etai Lahav, Pro Hac Vice, Jonathan Auerbach, Pro Hac Vice, Michael D. Sadowitz, Pro Hac Vice, Radulescu LLP, New York, NY, Guy Ruttenberg, Ruttenberg IP Law APC, Los Angeles, CA, Jennifer L. Jonak, Jonak Law Group, P.C., Eugene, OR, Kevin S. Kudlac, Pro Hac Vice, Radulescu LLP, Austin, TX, Michael Bradley Eisenberg, Pro Hac Vice, Stevens and Lee, New York, NY, for Plaintiff Seoul Semiconductor Co., Ltd. Andrew S. Brown, Pro Hac Vice, Bryon T. Wasserman, David Radulescu, Pro Hac Vice, Etai Lahav, Pro Hac Vice, Jonathan Auerbach, Pro Hac Vice, Michael D. Sadowitz, Pro Hac Vice, Radulescu LLP, New York, NY, Guy Ruttenberg, Ruttenberg IP Law APC, Los Angeles, CA, Jennifer L. Jonak, Jonak Law Group, P.C., Eugene, OR, Kevin S. Kudlac, Pro Hac Vice, Radulescu LLP, Austin, TX, Michael Bradley Eisenberg, Pro Hac Vice, Stevens and Lee, New York, NY, Ashwin J. Ram, Steptoe and Johnson LLP, Los Angeles, CA, for Plaintiff Seoul Viosys Co., Ltd.Appearing Ziyong Li, Gregory Carl Proctor, Pro Hac Vice, Hayk Snkhchyan, Benesch Friedlander Copland and Aronoff LLP, San Francisco, CA, Douglas Quinton Hahn, Salil Bali, Stradling Yocca Carlson and Rauth LLP, Newport Beach, CA, Kalpesh K. Shah, Pro Hac Vice, Simeon G. Papacostas, Pro Hac Vice, Theresa L. Starck, Pro Hac Vice, Benesch Friedlander Copland and Aronoff LLP, Chicago, IL, for FEIT Electric Co., Inc. Birotte Jr., Andre, United States District Judge Proceedings: [In Chambers] Order Granting-In-Part and Denying-In-Part Defendant's Motion to Enforce the Court's Order and for Sanctions (Dkt. Nos. 278, 281 (sealed)) I. Introduction *1 Before the Court is Defendant Feit Electric's Motion to Enforce the Court's Order and for Sanctions against Plaintiffs Seoul Semiconductor and Seoul Viosys (“SSC”). See Dkt. Nos. 278 (Mot.), 281 (sealed); 282 (Opp.); 284 (Reply). The Court has conferred with the Special Master concerning this motion following the conference conducted with the parties on December 2, 2024, at which the Special Master provided a tentative and heard arguments from the parties. The Court has also conferred with the Special Master concerning the three other occasions on which the parties discussed this matter with the Special Master. The Court deems this matter appropriate for decision without additional oral argument. The Court VACATES the hearing previously scheduled for December 6, 2024. See Fed. R. Civ. P. 78; L.R. 7-15. For the reasons stated in this Order, the Court Grants-In-Part and Denies-In-Part Defendant's motion. II. Background This case has been pending since July 2022. Fact discovery is closed and the Court issued its Claim Construction Order. Dkt. 274. Expert discovery is underway and dispositive motions are quickly approaching. See Dkt. 275 (Scheduling Order). Defendant's pending motion relates to a motion to strike the Court resolved in August 2024. See Dkt. 265 (“Strike Order”). Both the pending motion and the underlying motion to strike relate to identifying what documents are in (or out of) the case. In the Strike Order, the Court considered whether to strike three categories of documents: (1) spreadsheets, (2) 2024 declarations, and (3) the “June Production” of documents. See generally id. The Court further separated the June Production into three categories: (1) “documents relating to products other than the 51 accused products remaining in the case” following the case narrowing order (id. at 12); (2) “re-produced documents relating to the 51 accused products remaining in the case, i.e., ... duplicates” (id. at 13); and (3) “newly produced documents, including testing and authentication documents relating to the 51 accused products that were produced for the first time on June 5, 2024, including 19 declarations” (id. at 13). As to the first sub-category, documents relating to no-longer-asserted products, the Court concluded that the motion to strike “appears to be moot as to these documents because infringement is no longer asserted for those products.” Id. at 12. To save resources in culling these documents, Plaintiffs agreed to “provide a list of Bates ranges to Feit Electric so Feit Electric can quickly identify the non-relevant documents on which SSC agreed it does not intend to rely given the case narrowing order.” Id. at 13. Accordingly, the Court ordered Plaintiffs “to provide a list of Bates ranges for documents in the June Production relating to products other than the 51 accused products,” the disclosure of which would “render this portion of the motion moot.” Id. As to the second sub-category, duplicate documents, Plaintiffs offered to “quickly identify the duplicates based on metadata” so Defendant would know which documents are duplicates and do not need to be re-reviewed. Id. at 13. Accordingly, the Court ordered Plaintiffs “to provide a list of Bates ranges for documents in the June Production that are duplicative of documents previously produced, along with cross-reference Bates numbers to the original production Bates numbers,” the disclosure of which would “render this portion of the motion moot.” Id. *2 Plaintiffs filed a notice of compliance with these directives. Dkt. 269. Defendant filed objections to the notice, disputing Plaintiffs' compliance. Dkt. 273. The parties have discussed this issue with the Special Master formally and informally on three separate occasions. Pursuant to those discussions, Plaintiffs provided an amended notice of compliance, which included Exhibit 4. See generally Dkts. 278-3 (Notice), 278-12 (Amended Disclosure), 278-13 (Exhibit 1), 278-14 (Exhibit 2), 278-15 (Exhibit 3), 278-16 (Exhibit 4) (collectively, “Strike Order Disclosures”). Defendant's motion to enforce challenges the propriety of Plaintiffs' Strike Order Disclosures, contending that, instead of adhering to the Strike Order and identifying which documents relate to no-longer-accused products (and thus are no longer relevant to the case), and which documents are duplicates (and thus do not need to be re-reviewed), Plaintiffs disclosures attempt to insert previously stricken information back into the case and disclose new information. See generally Mot. Defendant also seeks sanctions to reimburse it for fees incurred in bringing this motion and the underlying motion to strike. III. Legal Standards A. Order Enforcement “Courts have inherent authority to monitor and enforce their prior orders.” Fraihat v. U.S. Immigr. & Customs Enf't, No. ED CV 19-1546 JGB (SHKX), 2020 WL 2758553, at *3 (C.D. Cal. May 15, 2020) (citing Shillitani v. United States, 384 U.S. 364, 370 (1966)). B. Sanctions Under Federal Rule of Civil Procedure 37(c), in addition to precluding use of undisclosed information, the Court “may order payment of the reasonable expenses, including attorney's fees, caused by the failure” to disclose the required information, and “may impose other appropriate sanctions, including any of the orders listed in Rule 37(b)(2)(A)(i)—(vi)” relating to violation of a discovery order. Fed. R. Civ. P. 37(c)(1). The Court may also require any attorney “who so multiplies the proceedings in any case unreasonably and vexatiously” to pay “the excess costs, expenses, and attorneys' fees reasonably incurred because of such conduct.” 28 U.S.C. § 1927. IV. Discussion A. Strike Order Disclosures Defendant argues that Plaintiffs' Strike Order Disclosures violate that order because, rather than provide the information required by the order (identify irrelevant and duplicate documents that need not be reviewed), Plaintiffs instead seek to reintroduce stricken information. First, Defendant challenges the column in Exhibit 1 containing the “SSCxxxx” nomenclature, which is derived from the stricken spreadsheets discussed in the Strike Order and relates to product testing chain of custody data that was not timely produced. See Dkt. 278-13 at 1; see also Dkt. 251 at 10 (“[T]he test/analysis documents and files are organized in SSC's files by folders bearing an identifier in the form of SSCxxxx (where xxxx is a serial number used to identify a particular accused product).”). Second, Defendant challenges new metadata information found in the “duplicate” files (i.e., metadata identifying the same SSCxxxx file path structure relating to testing chain of custody, which was not in the metadata of the original production). See Dkt. 277-2 at 2. Defendant argues that, based on these deviations from the Strike Order, Exhibit 1 to Plaintiffs' Strike Order Disclosures and the rest of the June Production should be stricken. See Mot. at 18-21. Defendant contends that the SSCxxxx information was already stricken and thus should not be reintroduced into the case. Id. Plaintiffs respond that Defendant's request to strike the entire June Production should be denied because Defendant does not meet the standards for reconsideration. Opp. at 1, 9. Plaintiffs also contend that the relief requested is not “enforcement” of the Court's order, and in any event it's premature and more properly raised as a motion in limine. Id. at 8. First, regarding the new metadata, Plaintiffs explain that “[b]ecause SSC utilized a different vendor for its collection of documents for the June Production, the separate metadata file included different file metadata information (such as originating file path) not present in its earlier production of the same documents.” Id. at 3. Thus, “SSC's production included a standard separate metadata file in .DAT form including the file folders from which its duplicative documents were extracted, but the files that were produced are duplicates.” Id. at 6. Plaintiffs offered a stipulation that they “would not rely on any metadata produced in the June Production not previously produced.” Id. (citing Dkt. 282-5) Second, regarding Exhibit 1, Plaintiffs explain that “counsel misunderstood the Court's order and mistakenly understood it to require an identification of bates ranges for the 51 then-accused products.” Id. at 6. But since SSC has “already agreed it will not rely on Exhibit 1 to authenticate any document,” Plaintiffs argue no relief is warranted. Id. at 1. As Defendant observes, the parties do not really dispute the operative facts. Reply at 5. Rather, they dispute whether any relief is warranted. For the reasons explained below, the Court finds that limited relief is warranted for the sake of clarifying the record. Exhibit 1 In the Strike Order, the Court ordered Plaintiffs to identify (by Bates) documents produced in the June Production relating to products other than the 51 accused products still in the case (i.e., identify the now-irrelevant documents that Defendant need not review). When Plaintiffs provided Exhibit 1 as part of their Strike Order Disclosures, they identified documents relating to the 51 accused products still in the case. The Court credits Plaintiffs' counsel's representation to the Special Master that he misread the order. It appears to the Court that counsel believed he was supposed to identify what was still in the case, as opposed to what was no longer in the case due to narrowing. After Defendant raised this oversight and the parties discussed a possible resolution with the Special Master, Plaintiffs were given the opportunity to provide a corrected exhibit, at which time they provided Exhibit 4. Thus, Plaintiffs have complied with this aspect of the Strike Order. *4 The crux of this dispute then is what, if anything, is the ongoing significance of Exhibit 1, and more particularly the SSCxxxx column that shows the folder name relating to each accused product. Defendant is concerned that allowing Exhibit 1 to remain would allow data that was stricken to be reintroduced into the case. To be sure, the Court struck the tracking spreadsheets that included the SSCxxxx data where Plaintiffs did not timely produce the requested testing and authentication information contained therein. See Dkt. 265 at 7-10. But including a folder reference in a Court-ordered disclosure of Bates numbers does not substantively reintroduce that folder data from the spreadsheets into the case. It appears to the Court that Plaintiffs used the folder information to keep organized as they prepared their Bates disclosures. Further, through their proposed stipulation, Plaintiffs made clear that they agree not to rely on the SSCxxxx data to authenticate any document. Plaintiffs will not use Exhibit 1 to their October 1, 2024 Amended Disclosure of Duplicative Bates Ranges Pursuant to Dkt. 265 (“the Amended Disclosure,” attached hereto as Exhibit A) in this litigation to authenticate any documents Plaintiffs timely produced in discovery. Dkt. 282-5 ¶ 1.[1] Nonetheless, to avoid potential future disputes over what the Court views as arguments concerning a technicality, because Exhibit 1 was not responsive to the directives of the Strike Order, the Court will STRIKE it and neither party may rely on it as evidence, whether in motion practice or at trial. New Metadata In the Strike Order, the Court ordered Plaintiffs to identify duplicates in the June Production that had been produced in one of the previous productions. In their Strike Order Disclosures, Plaintiffs provided Exhibit 2 (relating to the August 2023 production) and Exhibit 3 (relating to the April 2024 production). Defendant argues the identified “duplicates” are not true duplicates because the June Production included different metadata fields, namely a file path field showing the same SSCxxxx file path location from which each document was derived. The Court credits Plaintiffs explanation that, at the time of the June Production, using a different eDiscovery vendor resulted in different metadata fields in the .DAT file. The Court does not find that Plaintiffs made a misrepresentation to the Court about whether the files were “duplicates.” The Court rejects Plaintiffs' suggestion that Defendant should have raised the metadata issue in the underlying motion to strike. That motion sought to strike the entirety of the June Production to avoid the need to review thousands of pages of untimely produced information. Requiring Defendant to scrutinize each document, up to and including the metadata fields, would have defeated the purpose of the relief sought, relief on which Defendant largely succeeded. The Court also rejects Plaintiffs' suggestion that this dispute need not be considered until motions in limine are due. See Dkt. 265 at 5-6. Thus, the crux of the remaining dispute is what to do about the new metadata. As noted above, including the SSCxxxx information in some other format cannot operate to substantively reintroduce that folder data from the stricken spreadsheets into the case. Defendant argues there is no need for the duplicates if they are truly duplicates, and they should be stricken so there is no ambiguity. But Plaintiffs make clear that they want to retain the duplicates in the case “[b]ecause these documents were produced with authentication declarations[,] [so] it was necessary to re-produce them under new bates numbers as they were organized by/for the declarants.” Opp. at 3. That is, if Plaintiffs seek to meet the narrow authentication carveout set forth in the Strike Order, Dkt. 265 at 11 n.4, they need to use the June Production version of the duplicates because they track the witnesses' understanding. To resolve this dispute, through their proposed stipulation, Plaintiffs have offered not to use any new metadata. *5 Plaintiffs will not use any metadata in the June 4, 2024 Production to the extent that metadata differs from the metadata provided with the August 9, 2023 or April 4, 2024 productions for a previously produced duplicate. Plaintiffs may otherwise rely or use any document in the June 4, Production that appears in Exhibit 2 and/or Exhibit 3 to the Amended Disclosure. Dkt. 282-5 ¶ 3.[2] Nonetheless, to avoid potential further disputes over the metadata, because the production process for the June Production was run in a way that included new metadata, to maintain the documents as functional duplicates of the previously produced copies, the Court STRIKES the new metadata in the sense that neither party may rely on it as evidence, whether in motion practice or at trial. B. Sanctions Defendant seeks reimbursement of “the reasonable expenses incurred in preparing and filing both the instant motion and the original Motion to Strike on this issue.” Mot. at 22. Defendant contends that sanctions under Rule 37(b)(2)(C), 28 U.S.C. § 1927, and the Court's inherent powers are appropriate because Plaintiffs misrepresented to the Court that certain documents were “duplicates” when they contained new metadata information that had previously been excluded, and Plaintiffs did not comply with the Strike Order's disclosure requirements but instead tried to reintroduce stricken information. Id. at 22-23. Plaintiffs respond that Defendant should not be able to obtain monetary compensation where the motion was unnecessary in view of Plaintiffs' proposed stipulation not to use Exhibit 1 or new metadata. Opp. at 13. In any event, Plaintiffs argue that Defendant has not met its burden to show that sanctions are warranted because no discovery order was violated (Rule 37(b)(2)(C)); Plaintiffs did not make any misrepresentations to the Court; and there is no fraud or subjective bad faith (§ 1927 / inherent powers). Id. at 13-15. Further, Plaintiffs argue that Defendant's decision to rush to file the motion instead of continuing to negotiate concerning the stipulation undermines the request for sanctions. Id. at 14. The Court adopts its factual findings set forth above in the discussion concerning Exhibit 1 and the new metadata. The Court finds no violation of an order, misrepresentations by counsel, or bad faith conduct in how these issues were discussed and negotiated. Accordingly, the Court finds no basis on which sanctions are warranted. The Court encourages the parties to continue to work together to find solutions that may obviate the need for future motion practice. V. Conclusion For the foregoing reasons, the Court rules on Feit Electric's Motion to Enforce the Court's Order and for Sanctions as follows: The Motion is GRANTED-IN-PART as to Exhibit 1; Exhibit 1 is STRICKEN and neither party may rely on it as evidence; The Motion is GRANTED-IN-PART as to the new metadata; that information is STRICKEN in the sense that neither party may rely on it as evidence; The Motion is DENIED-IN-PART as to the request for sanctions IT IS SO ORDERED. Footnotes [1] The Court is not adopting this proposed language, but instead includes it to show Plaintiffs' proposal. [2] Footnote 1 applies.