Abbott Laboratories v. Revitalyte LLC

Background

Abbott brought state and federal claims against Revitalyte involving alleged trade dress infringement, trademark infringement, unfair competition, false designation of origin, false advertising, and trademark and trade dress dilution by tarnishment. Revitalyte served Abbott with interrogatories and requests for production, and moved to compel fuller responses to nine interrogatories and twenty requests for production.

Magistrate Judge David T. Schultz granted in part and denied in part Revitalyte’s motion to compel. Revitalyte objected to the ruling on Interrogatory Nos. 1, 3, 4, 6, 7, and 20. Under the governing standard, the district court could change the magistrate judge’s discovery ruling only if it was clearly erroneous or contrary to law. A finding is clearly erroneous when the reviewing court is firmly convinced that a mistake was made; a ruling is contrary to law when it fails to apply or misapplies a relevant statute, case law, or procedural rule.

Interrogatory Nos. 1, 3, and 4

Interrogatory No. 1 asked Abbott to identify each element of the Pedialyte trade dress. The magistrate judge had required Abbott to amend its response to remove wording that left open the possibility of unnamed elements, but denied Revitalyte’s request for additional supplementation. Judge Frank affirmed that ruling and overruled Revitalyte’s objection. He explained that trade dress concerns the product’s overall impression, rather than only its individual features, and noted that Abbott had already plausibly pleaded a trade dress infringement claim.

Interrogatory No. 3 asked whether each claimed trade-dress element affected product cost or quality. Interrogatory No. 4 sought the facts supporting Abbott’s responses. The magistrate judge required Abbott to answer how the trade dress as a whole affected cost or quality but did not require an analysis of each individual element. Judge Frank affirmed that ruling and overruled Revitalyte’s objections. He concluded that the ultimate functionality decision concerns the trade dress as a whole and that the cited precedent did not require examining the effect of each element separately.

Interrogatory Nos. 6 and 7

Interrogatory No. 6 sought information about persons who had manufactured, advertised, or sold oral electrolyte products using “Compare to Pedialyte” or similar wording, including when Abbott learned of the conduct and communications about it. Interrogatory No. 7 sought similar information about products in bottles or containers with a similar shape and design.

The magistrate judge had required Abbott to identify the persons involved but denied the request for the dates Abbott learned of the conduct and descriptions of communications, reasoning that business records produced under Federal Rule of Civil Procedure 33(d) would cover those matters. Judge Frank found that ruling clearly erroneous and contrary to law. He sustained Revitalyte’s objections and modified the magistrate judge’s order, requiring Abbott to supplement its responses to Interrogatory Nos. 6 and 7 with information not otherwise captured by the documents produced to Revitalyte. The required information included relevant oral communications.

Interrogatory No. 20

Interrogatory No. 20 sought monthly unit sales, revenue, gross profits, and net profits for each Pedialyte product, separately by product code, from 2013 through the present. Abbott agreed to produce nonprivileged documents sufficient to show total retail unit sales in the United States since 2013. The magistrate judge denied Revitalyte’s request for more information, reasoning that total unit sales were sufficient and that detailed revenue and product-by-product sales information was unnecessary because Abbott was no longer seeking monetary damages.

Judge Frank affirmed that ruling and overruled Revitalyte’s objection. He concluded that Abbott’s trade dress claims covered the Pedialyte brand as a whole, rather than separate trade dresses for each product line, and that total unit sales gave Revitalyte information about Abbott’s commercial success sufficient for its purposes.

Disposition

Judge Donovan W. Frank sustained in part and overruled in part Revitalyte’s objections. The court sustained the objections concerning Interrogatory Nos. 6 and 7 and modified the magistrate judge’s order as to those interrogatories. It overruled the objections concerning Interrogatory Nos. 1, 3, 4, and 20 and affirmed the magistrate judge’s order as to those interrogatories. This order concerned discovery; it did not decide the underlying infringement and unfair-competition claims.