Jacob's Jewelry Co. Ltd v. Tiffany and Company

Background

Jacob’s Jewelry Co. Ltd. filed a letter motion asking the court to compel Tiffany and Company, Tiffany and Company U.S. Sales, LLC, and Tiffany (NJ) LLC to produce their prior art before the deadline for serving invalidity contentions. The parties submitted additional letters and exhibits, so the court resolved the dispute based on the written submissions without holding a pre-motion conference.

The court limited its analysis to whether the defendants had to produce prior art at that time. The parties had agreed on a production schedule for documents other than prior art. Under their Civil Case Management Plan, the relevant party’s invalidity contentions had to identify each item of prior art allegedly anticipating or making an asserted patent claim obvious. The plan did not expressly state when the defendants had to produce the prior art itself.

Motion to Compel

Jacob’s Jewelry argued that no patent rule or case law allowed the defendants to delay producing requested prior art until they served their invalidity contentions. It also argued that early production would avoid forcing it to prepare infringement contentions without knowing whether the defendants’ later-identified prior art would undermine them.

The defendants argued that the plaintiff’s position conflicted with the Southern District of New York’s local patent rules and relevant decisions. The court held that the case-management plan’s reference to prior art in connection with the defendants’ invalidity contentions indicated that the defendants could produce their prior art simultaneously with those contentions. The court therefore denied Jacob’s Jewelry’s motion to compel the defendants to produce their prior art earlier.

Request for Fees

The defendants also sought reimbursement of the fees and expenses they incurred opposing the motion. Federal Rule of Civil Procedure 37 generally requires a court to award the opposing party reasonable expenses when a motion to compel is denied, unless the motion was substantially justified or another circumstance would make an award unjust.

The court found that a fee award was not appropriate. It recognized that the defendants would eventually have to produce their prior art, that the case-management plan did not clearly establish the production deadline, and that the defendants had not identified clear, controlling law resolving the timing issue. The court also found insufficient evidence that Jacob’s Jewelry had filed the motion in bad faith. Accordingly, the court denied the defendants’ motion for fees.

Disposition

The court denied both parties’ motions: it denied Jacob’s Jewelry’s motion to compel earlier prior-art production and denied the defendants’ motion for fees. Judge Katherine Polk Failla directed the Clerk of Court to terminate the motion at docket entry 44.