Deckers Outdoor Corporation v. Next Step Group, Inc.

Background

The court held a conference on June 25, 2025, to address discovery disputes. The order resolves disputes that were not resolved during that conference. The opinion concerns Deckers Outdoor Corporation as plaintiff and Next Step Group, Inc. and other defendants.

Discovery of agreements

The court granted the defendant’s request for agreements—whether called settlement, license, consent, or something else—concerning claim construction, validity, infringement, ownership, enforceability, valuation, and the market makeup and size related to the intellectual property and products at issue. The court specifically addressed settlement agreements and stated that prior settlements can be relevant to determining the value of a patent.

Sur-reply and discovery schedule

The court granted the defendant’s request at ECF No. 128 for permission to file a sur-reply in its claim-construction briefing. The sur-reply is limited to the issue of functionality. After meeting and conferring, the parties were directed to propose a revised discovery schedule.

Attorney-client privilege

Deckers argued that the defendants had refused to provide a privilege log and had therefore waived attorney-client privilege, which protects certain confidential communications between a client and its lawyer. Defense counsel stated that the defendants did not believe they had privileged communications from before the lawsuit began, but would confirm whether any responsive documents were being withheld on that basis.

The court directed the defendants to tell Deckers by July 31, 2025, whether they were withholding responsive documents based on attorney-client privilege for communications from before the lawsuit began. For documents created after the lawsuit began, defense counsel confirmed that those documents had not been listed on a privilege log, consistent with Deckers’s position that it also would not list privileged communications with litigation counsel from after the lawsuit began. The court found no basis on this record to conclude that the defendants had failed to assert privilege properly or had waived it.

Depositions and sanctions

Deckers sought sanctions under Federal Rule of Civil Procedure 37, arguing that the defendants’ witnesses had failed to appear for properly noticed depositions. The defendants agreed to produce Mr. Dushey for a deposition on a date to be agreed upon after document discovery was completed, so that he would be deposed only once.

The court denied Deckers’s request for sanctions. It stated that the record did not show that the defendants had refused to produce either witness. Instead, the defendants had been trying to meet and confer about alternate deposition dates and discovery issues that needed to be resolved first. The court concluded that the defendants’ conduct was substantially justified.

Disposition

The court granted the request for production of the specified agreements, granted permission to file the limited sur-reply, directed the defendants to provide the privilege-related confirmation by July 31, 2025, denied Deckers’s request for sanctions, and directed the Clerk of Court to terminate letter motions at ECF Nos. 115, 122, 126, 127, and 129.