simplehuman, LLC v. iTouchless Housewares and Products, Inc.

Background

The parties submitted a joint discovery letter concerning two disputes. First, simplehuman sought an answer to Interrogatory No. 15, which asked iTouchless to explain, for each prior-art reference identified in response to an earlier interrogatory, why the reference allegedly invalidated claims of simplehuman’s asserted design patents. The requested explanation included how each reference allegedly anticipated the claims, how combinations of references allegedly made the claims obvious, and other asserted grounds of invalidity.

Second, the parties disputed the timing of iTouchless’s production of emails from four remaining custodians. At an August 21, 2020 discovery hearing, the court required iTouchless to provide a sworn declaration about its claimed inability to access and search those email files because of its COVID-19-related office closure. iTouchless’s chief executive officer later stated that software had been installed to permit remote searches and estimated that the files would be provided to its counsel for production by September 18, 2020.

Interrogatory No. 15

iTouchless objected that simplehuman had exceeded the 25-interrogatory limit under Federal Rule of Civil Procedure 33(a) and that Interrogatory No. 15 contained more than 100 discrete subparts because iTouchless had identified more than 100 prior-art references. iTouchless also argued that responding would be extremely and unduly burdensome. Simplehuman argued that its interrogatories did not contain multiple subparts and that, even if they did, the circumstances justified permission to serve Interrogatory No. 15 because the information would narrow the parties’ disputes.

The court agreed that requiring a response was warranted even if simplehuman had exceeded the numerical limit. It found that the interrogatory sought highly relevant information about iTouchless’s invalidity contentions and could limit the issues for trial. The court also found that simplehuman could not efficiently or adequately obtain the information through other fact-discovery methods, including depositions. The court was not persuaded by iTouchless’s undue-burden argument, noting that the breadth of the interrogatory was driven by the more than 100 references iTouchless had identified and that iTouchless could narrow the burden by withdrawing references it did not actually intend to rely on.

The court granted simplehuman’s request to compel a response to Interrogatory No. 15 and ordered iTouchless to answer within 30 days.

Remaining Custodian Emails

The court ordered that, to the extent iTouchless had not completed its production of the remaining custodian emails, it must do so by September 30, 2020.

Disposition

The order terminated ECF Nos. 59 and 75. The opinion is signed by Alex G. Tse, United States Magistrate Judge.