United States District Court, M.D. Pennsylvania
the Court is Plaintiff ABT Systems, LLC's
(“ABT”) motion to compel Defendant Research
Products Corporation (“RPC”) to identify and
provide sections of Defendant's source code as well as to
respond to ABT Interrogatory No. 4. (See Doc. Nos.
67, 75 at 7.) Also before the Court is Plaintiff's motion
for a status conference. (Doc. No. 84.) For the following
reasons, the Court will grant in part and deny in part
Plaintiff's motion to compel and will grant
Plaintiff's motion for a status conference.
dispute concerns Patent No. 5, 547, 017 (“the '017
Patent”). (Doc. No. 1 ¶¶ 5-7.) The '017
Patent protects Armin Rudd's invention related to air
conditioning and heating systems. (Id.) On August
20, 2003, Defendant allegedly licensed the ‘017 Patent
from inventor Armin Rudd, and agreed to pay a royalty on
products falling within the scope of the ‘017 Patent
claims and to mark those products with the ‘017 Patent
number (the “License Agreement”). (Doc. No. 1
¶¶ 8-9.) On February 14, 2005, Armin Rudd
purportedly assigned the License Agreement to Plaintiff.
(Id. ¶ 8.)
October 16, 2014, Plaintiff filed a complaint against
Defendant for breach of contract. (Doc. No. 1 ¶¶
15-17.) Plaintiff alleges that Defendant violated the
contract by selling products that fell within the scope of
the ‘017 Patent without paying royalty fees or marking
the products with the ‘017 Patent number. (Id.
¶¶ 11-17.) Plaintiff's complaint lists
“Model Nos. 8444, 8446, 8448, 8463, 8465, 8466, 8476,
8600, 8620, 8800, 8910 and 4838” as examples of
Defendant's products that fall within the scope of the
claims of the ‘017 Patent (together, the “Accused
Products”). (Doc. No. 1 ¶ 11.) The Accused
Products are thermostats and other products using thermostats
that employ “a fan recycling control.” (Doc. Nos.
1 ¶ 11; 63 ¶ 11.)
filed an answer on November 7, 2014 (Doc. No. 6), and filed
an amended answer on June 8, 2016 with leave of Court (Doc.
Nos. 61-63). In its amended answer, Defendant admits to
selling the Accused Products, not paying royalties on the
Accused Products, and not marking the Accused Products with
the ‘017 Patent number. (Doc. Nos. 1 ¶¶ 11,
13-14; 63 ¶¶ 11, 13-14.) However, Defendant denies
that the Accused Products fall within the scope of the
‘017 Patent's claims. (Doc. Nos. 1 ¶ 12; 63
¶ 12.) Defendant denies it breached the License
Agreement. (Doc. Nos. 1 ¶ 15; 63 ¶ 15.)
September 6, 2016, Plaintiff filed the pending motion to
compel together with a brief in support thereto. (Doc. Nos.
67, 68.) Defendant filed a brief in opposition on September
20, 2016 (Doc. No. 71), and Plaintiff filed a reply brief on
October 7, 2016 (Doc. No. 75). On April 12, 2017, Plaintiff
filed a motion requesting a status conference. (Doc. No. 84
at 2.) The pending motions are now ripe for disposition.
Rule of Civil Procedure 37 addresses the matter of failure to
cooperate in discovery or to make disclosures.
“Specifically, if a party served with discovery fails
to respond adequately, the serving party may file a motion to
compel under Rule 37(a).” Hall v. Rhoades, No.
09-1907, 2013 WL 5488747, at *2 (M.D. Pa. Oct. 1, 2013);
Fed.R.Civ.P. 37(a)(1), (a)(3). The scope of discovery is
defined by Federal Rule of Civil Procedure 26, which provides
Unless otherwise limited by court order, the scope of
discovery is as follows: Parties may obtain discovery
regarding any nonprivileged matter that is relevant to any
party's claim or defense and proportional to the needs of
the case, considering the importance of the issues at stake
in the action, the amount in controversy, the parties'
relative access to relevant information, the parties'
resources, the importance of the discovery in resolving the
issues, and whether the burden or expense of the proposed
discovery outweighs its likely benefit. Information within
this scope of discovery need not be admissible in evidence to
Fed. R. Civ. P. 26(b)(1). “Rulings regarding the proper
scope of discovery, and the extent to which discovery may be
compelled, are matters consigned to the court's
discretion and judgment. Thus, it has long been held that
decisions regarding Rule 37 motions are ‘committed to
the sound discretion of the district court.'”
Pilchesky v. Deputy U.S. Marshal Barone, No. 14-381,
2016 WL 7118147, at *2 (M.D. Pa. Dec. 7, 2016) (quoting
DiGregorio v. First Rediscount Corp., 506 F.2d 781,
788 (3d Cir. 1974)).
Defendant's Source Code - ABT Interrogatories Nos. 11,
moves the Court to compel Defendant to provide and identify
the code that reveals whether the Accused Products engage in
a “fan recycle-control function with a predetermined
off-time.” (Doc. No. 67; see Doc. No. 68 at
10.) Defendant maintains that it provided Plaintiff with