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Fleming v. Escort


October 19, 2010


The opinion of the court was delivered by: Honorable B. Lynn Winmill Chief U. S. District Judge



Plaintiff Fleming alleges that defendants Escort and Beltronics (hereinafter collectively referred to as Escort) are infringing its patents on radar detectors. The parties have discovery disputes that the Court's staff attempted unsuccessfully to mediate. The Court will resolve the disputes below.


Protective Order

The parties have raised -- in a formal motion and by informal discovery mediation conference -- a question about the Protective Order. Specifically, the plaintiff Fleming asks to modify the Protective Order to allow him to view information the defendants have designated "attorneys eyes only." The defendants object, claiming Fleming has no need to see the documents and that he could use the information to obtain a competitive advantage over defendants.

The Court's analysis begins with the undisputed fact that the material Fleming wants to view is sensitive proprietary and trade secret material. Originally, Fleming agreed to screen himself from viewing confidential material because he was pursuing a radar detector patent application in the United States Patent Office. But Fleming has now represented that all his patent prosecution activities came to a complete and permanent close on July 20, 2010. See Fleming Declaration Dkt. 70-2 at ¶ 8. Due to this change of events, Fleming seeks to modify the Protective Order so that he is no longer subject to that ban.

The standard the Court must use to resolve this dispute is set out in Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). The Court must "balance the risk to [defendants] of inadvertent disclosure of trade secrets to competitors against the risk to [Fleming] that protection of [defendants'] trade secrets [will] impair[] prosecution of [Fleming's] claims."

Defendants argue that Fleming does not need to see this information because he has technical experts who can review the material for him. But this is not the typical case where the plaintiff is an assignee of the inventor; here, the plaintiff claims to be the inventor and to have more technical expertise than even his own experts. See Fleming Declaration at ¶ 10. In this case, more than most, the plaintiff would have special insight into infringement and prior art issues that would make it meaningful for him to examine the confidential information on these issues.

The defendants' argument picks up more strength when applied to financial documents. Here Fleming has no special expertise to bring to bear. As Fleming's counsel conceded at the informal conference, his client does not have the same critical need to see financial documents as he had to see infringement and prior art related documents.

This discussion establishes that Fleming has a real need to see documents related to infringement and prior art. The question under Brown Bag is whether that need outweighs the risk to defendants that trade secrets will be disclosed to competitors.

Whatever risk existed when Fleming was pursuing a radar detection patent is now over since it is undisputed that Fleming has closed that pursuit. Moreover, after viewing the confidential information, Fleming cannot "prepare, prosecute, supervise, or assist in the prosecution of any patent application claiming radar detector technology within two (2) years from the disclosure of such technical information.." See Protective Order Dkt. 35.

Defendants argue that Fleming has a business relationship with defendants' competitor K40. But that relationship involves nothing more than Fleming licensing his patent to K40. While defendants point to a Non-Disclosure Agreement (NDA) whereby Fleming and K40 agree to exchange confidential information, the NDA relates entirely to the license agreement, and there is no other relationship between K40 and Fleming. See Finley Declaration Dkt. 75-1.

The Court cannot find that Fleming has business interests in competition with defendants that might preclude him from viewing this information. Under Brown Bag, the Court must also consider whether Fleming might inadvertently disclose the secrets to defendants' competitors. Brown Bag, 960 F.2d at 1470. The Court can find nothing in the record to support such a risk.

In balancing the Brown Bag factors, the Court finds that Fleming has a real need to see infringement and prior art related documents because his technical expertise could give him a unique insight into the meaning of the material. The record shows no danger of inadvertent disclosure and no connection with competitors that would suggest the material might be transferred.

After balancing these factors, the Court finds good cause for modifying the Protective Order to allow Fleming to view information the defendants have designated "attorneys eyes only" regarding infringement and prior art.

Interrogatory 16

The parties agreed that defendants shall provide on or before October 27, 2010, a supplemental response to Interrogatory 16 that focuses on Orr's alleged prior invention.

Interrogatory 17

The parties have agreed that defendants will supplement their answer to Interrogatory 17 on or before October 27, 2010. To guide the defendant in its supplementation, the Court will discuss its view of the dispute.

Interrogatory 17 seeks financial information from the defendants such as (1) the cost of the accused products, (2) their sales price, (3) the gross and net profit figures, and (4) fixed and variable costs. In their answer, the defendants did not specifically respond to each request but instead cited to more than 1,300 documents as containing the answers.

The Court finds the answer objectionable. For the most part, the question seeks basic financial information that every company could easily provide. Indeed, some of the information seems so basic and easily ascertainable (like sales price) that it should be answered directly, referring to documents only as corroboration.

Other parts of the request may seek information contained in a large number of documents. Federal Rule of Civil Procedure 33(d) authorizes a party to answer an interrogatory by providing business records from which the answer may be "derived or ascertained." To comply with Rule 33(d), the "responding party must affirm that the information sought by the interrogatory in fact is available in the specified records." 8A Wright, Miller and Marcus, Federal Practice & Procedure, § 2178 at p. 330 (1994).

If some of the information sought has not been calculated or tracked by defendants, they can appropriately point that out in their answer and provide documents from which the plaintiff may calculate the figures. See Rule 33(d) Advisory Committee Notes ("this subdivision gives the party an option to make the records available and place the burden of research on the party who seeks the information"). But if the defense has calculated the figures asked for -- or has exclusive knowledge on how to calculate those figures from the documents provided -- it is not proper to simply point to hundreds of documents and say that the figures can be found somewhere in those documents, or derived from them. Id. ("a respondent may not impose on an interrogating party a mass of records as to which research is feasible only for one familiar with the records"). If the burden is too great for the respondent to produce the figures or identify the precise documents, the respondent needs to explain that in their answer. Id. (noting that the respondent retains his protection "against oppressive or unduly burdensome or expensive interrogatories"). The Court has the authority to order cost-sharing or some other creative solution. Id. ("the Court is not deprived of its usual power, in appropriate cases, to require that the interrogating party reimburse the respondent for the expense of assembling his records and making them intelligible).

This discussion should guide the defendants in providing their supplementation.

Meet and Confer Standards

The parties agreed that it would helpful to set standards for responses when discovery issues arise so long as some flexibility is built in to accommodate busy schedules. Accordingly, the Court will direct counsel to respond within 3 days when one party raises a discovery issue by e-mail or letter. In addition, once the meet and confer session has occurred, any party producing discovery shall do so within 3 days from that meeting. Again, the parties are free to work out other deadlines, but these shall be the standard deadlines in the absence of any other agreement.


In accordance with the Memorandum Decision set forth above,

NOW THEREFORE IT IS HEREBY ORDERED, that the motion to amend protective order (docket no. 70) is GRANTED, and that the Protective Order (docket no. 35) is modified to allow Plaintiff Hoyt Fleming to view information the defendants have designated "attorneys eyes only" regarding infringement and prior art.

IT IS FURTHER ORDERED, that on or before October 27, 2010, the defendants shall supplement their answers to Interrogatories 16 and 17 in accordance with the discussion above.


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