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Judge Gorenstein Rules Either Use Objections or Lose Them in Discovery Responses

On May 20, 2022, Magistrate Judge Gabriel Gorenstein (S.D.N.Y.) ruled on several discovery disputes inSure Fit Home Prods., LLC v. Maytex Mills Inc.

In a case involving shower curtains, Plaintiff Sure Fit Home Prods. moved to compel production of several categories of documents. As to some categories, Defendant Maytex Mills stated that it would produce additional documents, but failed to make any objection to Plaintiff’s requests or to its related requests for relief. As such, the Court ruled that all objections to the production of those documents except as to privilege were overruled or deemed waived, and ordered Defendant to produce the responsive documents. Plaintiff also sought documents relating to shower curtain liners, arguing that the documents are relevant to infringement and damages caused by the sale of the infringing shower curtain products. However, Plaintiff had not included the liners within the definition of “Accused Products” in its requests. Thus, the Court denied Plaintiff’s motion to compel.

Plaintiffs also sought to preclude Defendant from raising an advice of counsel defense for failure to comply with Local Patent Rule 10. The Rule requires a party to produce the opinion and related documents relied upon by no later than thirty days after the court issues an order on claim construction. Defendant had produced the opinion by the deadline, but continued to produce related documents three to four months after the deadline. The Court noted that a showing of prejudice is required before imposing a severe sanction such as preclusion. And, Plaintiff had not clearly identified any such prejudice. Plaintiff had not explained why the three months remaining in the discovery period after it received the documents would not have been sufficient time to conduct discovery on the advice of counsel defense. The Court further noted that it is amenable to extending the discovery deadline if Plaintiff is able to show good cause. Thus, the Court denied Plaintiff’s motion for sanctions.

Defendant, for its part, moved to compel production of documents responsive to certain of its requests. Defendant argued that Plaintiff’s objections to those requests did not indicate whether documents have been or will be withheld on the basis of the objections. The Court deemed this to be a violation of the specificity requirement of Federal Rule of Civil Procedure 34(b)(2). Thus, the Court ruled that all objections to the production of those documents except as to privilege were overruled or deemed waived, and ordered Plaintiff to produce the responsive documents.

Case: Sure Fit Home Prods., LLC v. Maytex Mills Inc., No. 21-cv-02169, Dkt. No. 189 (S.D.N.Y. May 20, 2022)