The opinion of the court was delivered by: Honorable B. Lynn Winmill Chief U. S. District Judge
MEMORANDUM DECISION AND ORDER
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 on February 3, 2011. The parties agreed that the issues could be presented to this Court by letter brief for resolution, as time is of the essence. The Court will resolve the disputes below.
Interrogatories 21 and 22
Plaintiff Fleming propounded these two interrogatories to inquire into defendant Escort's prior invention defense, which asserts that Escort was the first to conceive of the patented device and was diligent in reducing it to practice. In these interrogatories, Fleming asks, as to both the conception and reduction to practice issues, the following questions: (1) The identity of each document showing prior conception and reduction to practice; (2) Where in each document each limitation of each claim is found; (3) The date of each document; and (4) Where in the document the evidence of its date can be found.
Escort answered question (1) listed above by producing the documents requested. The documents they produced relate to three persons that Escort claims were involved in the prior conception and reduction to practice: (1) Steve Orr; (2) John Kuhn; and (3) Greg Blair.
With regard to questions (3) and (4), Escort claims that the dates of the documents can be found in its responses to interrogatory 11 (at pages 3-8) and interrogatory 16 (at pages 7-9). Those responses are general in nature, however, and do not identify the dates of any particular documents. For example, in the response to interrogatory 11, Escort asserts that
Mr. Orr undertook field testing at least during April and May 1996. In approximately April or May 1996, Mr. Orr undertook the effort of acquiring a PCMCIA GPS card to further his efforts to improve and perfect his work and inventions. In approximately April or May 1996, Mr. Orr actually acquired a PCMCIA GPS card from Rockwell, although the PCMCIA GPS card did not have all of the capabilities contemplated by Mr. Orr.
Fleming asks for the dates of the documents because those dates are not apparent from the face of the documents. Obviously, the dates of the documents are critical to the prior invention defense, that depends on Escort having conceived of the patented claims prior in time to Fleming. The Court cannot find in the record provided by Escort any identification of the dates of the documents provided, where those dates are not apparent from the face of the document. Thus, the interrogatory clearly asks for discoverable material and has not been answered.
Escort argues, however, that the material is too burdensome to provide. But under Rule 26(b)(2)(C)(iii), the Court will limit otherwise allowable discovery only when that burden "outweighs its likely benefit." Here, the dates of the documents are critical to Escort's defense, as explained above. Escort will be required at trial -- or in response to a summary judgment motion -- to date each document that it offers in support of its prior invention defense. See Rule of Evidence 402 (stating in part that "[e]vidence which is not relevant is not admissible"). So the "burden" this interrogatory imposes is a mirage -- Escort's duty to date each document exists apart from the interrogatory. Consequently, there is no burden to "outweigh" the benefit, and Escort cannot use Rule 26(b)(2)(C)(iii) to avoid answering the questions listed in (3) and (4) above, regarding dates.
The remaining issue regarding these two interrogatories concerns the part inquiring about where in each document each limitation of each claim is found. Escort answers by asserting that "[t]he entirety of each of those documents is where each limitation of each asserted claim is found."
While Escort has not invoked Rule 33(d) expressly, it is doing so by implication. It is basically producing the documents and telling Fleming that the answer to your question lies within them, without being any more specific. That is a proper response under Rule 33(d) for data contained in business records where the burden of deriving the answer is substantially the same for either party. See Rule 33(d). Hence, Rule 33(d) applies to fact interrogatories, but courts have consistently held that it cannot be used with respect to contention interrogatories. Hypertherm, Inc. v. American Torch Tip Co., 2008 WL 5423833, *3--*4 (D.N.H. 2008); In re Savitt/Adler Litig., 176 F.R.D. 44, 49--50 (N.D.N.Y. 1997). That makes sense because the legal contentions of a party are not contained in old business records, and so must be explained by counsel in an answer to an interrogatory. That portion of interrogatories 21 and 22 that asks where in each document is each limitation for each claim is a contention interrogatory -- it is asking which portions of the document support Escort's legal contention of prior invention. And those legal contentions cannot be found in the documents but must be pointed out by counsel.
At trial -- or at summary judgment -- Escort cannot just submit a document and claim generally that each limitation of each claim is contained therein without specifically explaining what language supports what limitation. So the burden of answering this interrogatory ...