UrthTech LLC v. Gojo Industries, Inc.

Background

The case involves allegations of breach of contract, trade-secret misappropriation, and correction of inventorship concerning a patent for antimicrobial and antifungal cleaning products. UrthTech contends that portions of Gojo’s patent publications disclose UrthTech’s trade secrets, including chemical compositions, formulas, and test results.

On August 26, 2024, Gojo served 389 requests for admission. These requests asked UrthTech to admit or deny specific facts, including whether Gojo’s publications disclosed particular formulations, whether certain compositions were publicly known, and whether UrthTech currently sold products using identified trade secrets.

Discovery Dispute

UrthTech argued that the requests were not designed to narrow the issues for trial and were too burdensome and disproportionate to the needs of the case. The court held a conference with the parties and directed them to discuss possible stipulations and whether some requests could be eliminated.

After that conference, Gojo proposed 244 revised requests for admission and 16 proposed stipulations. UrthTech rejected the proposal because responding to 244 requests would still be too burdensome and asked Gojo to reduce the number to 50. Gojo offered to discuss particular requests or categories, but the parties did not reach an agreement.

Court’s Analysis

The court explained that requests for admission under Federal Rule of Civil Procedure 36 are meant to determine whether the responding party admits a matter or considers it a genuine issue for trial. They are intended to establish facts that can be treated like agreed facts at trial, not to obtain information that should instead be sought through document requests, written questions, or depositions.

The court recognized that the case involved complex chemical formulations and detailed issues concerning what information about the alleged trade secrets was publicly known before it was shared with Gojo. Although responding to 244 requests could take substantial time, the court found that the revised requests appeared consistent with the purpose of requests for admission, related to specific trade secrets, and were designed to narrow the trial issues.

Disposition

Judge Katharine H. Parker ordered UrthTech to provide responses to the narrowed set of 244 requests for admission. In light of the volume of the requests, the court allowed UrthTech until December 31, 2024, to respond.