`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`Civil Action No.12-cv-11758
`HONORABLE GERSHWIN A. DRAIN
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`and EMCORE CORPORATION,
`
`Plaintiffs and
`Counter-Defendants,
`
`v.
`
`NICHIA CORPORATION, and
`NICHIA AMERICA CORPORATION,
`
`Defendants and
`Counter-Plaintiffs,
`
`v.
`
`EVERLIGHT AMERICAS, INC.,
`
`Defendant.
`_________________________________/
`
`ORDER DENYING EVERLIGHT’S EMERGENCY MOTION TO COMPEL
`DEPOSITIONS OF THE INVENTORS OF THE PATENTS-IN-SUIT [#121] AND
`DENYING NICHIA CORPORATION’S FIRST MOTION TO COMPEL (ACCUSED
`PRODUCTS) [#119]
`
`I.
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`INTRODUCTION
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`Presently before the Court is Everlight’s Motion to Compel Depositions of the Inventors of
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`the Patents-In-Suit, filed on August 5, 2013 and Nichia’s First Motion to Compel (Accused
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`Products), filed on August 2, 2013. These matters are fully briefed and a hearing was held on
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`August 27, 2013. For the reasons that follow, the Court denies Everlight’s Motion to Compel
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`Depositions of Inventors and denies Nichia’s Motion to Compel (Accused Products).
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`II.
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`LAW & ANALYSIS
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`A.
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`Everlight’s Motion to Compel Depositions of Inventors
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`Here, Everlight seeks an Order compelling Nichia to produce all four named inventors of
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`Nichia’s patents-in-suit for depositions no later than September 1, 2013, and commissioning such
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`depositions at the U.S. Embassy in Japan. The majority of Everlight’s motion appears to be moot
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`because the Court entered a Stipulation and Order on Japan Depositions, providing that the
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`depositions of six Nichia witnesses noticed by Everlight would commence the week of September
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`9, 2013. As to Everlight’s request that the Court order Nichia to produce for deposition Yoshinori
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`Shimizu, a retired Nichia employee, Nichia maintains it has no control over Shimizu and cannot be
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`compelled to produce him for deposition.
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`Everlight counters that Nichia has maintained throughout this litigation that Shimizu was
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`related to Nichia and to be contacted only through Nichia’s counsel. Now, near the eve of the close
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`of fact discovery, Nichia claims it has no control over Shimizu. Everlight suggests Nichia is
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`engaging in gamesmanship and argues that this will severely prejudice Everlight if tolerated.
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`A corporation has neither a duty, nor power to produce former employees for deposition in
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`response to a deposition notice. See Severstal N. Am. Inc. v. N. Am. Refractories Co., No. 06-
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`10202, 2008 U.S. Dist. LEXIS 107254, at *5 (E.D. Mich. Dec. 15, 2008); In re Honda Am.
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`MotorCo., 168 F.R.D. 535, 541-42 (D. Md. 1996); EEOC v. Honda of Am. Mfg., Inc., No. 2:06-
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`cv-02333, 2007 U.S. Dist. LEXIS 14496, at *9-10 (S.D. Ohio Feb. 28, 2007) (generally, former
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`employees are not officers, directors or managing agents, therefore they are not subject to deposition
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`by notice); Murata Mfg. Co. v. Bel Fuse, Inc., 242 F.R.D. 470, 476-77 (N.D. Ill. 2007) (holding
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`that retired inventor, a Japanese citizen, was not subject to notice for deposition ). In Murata, the
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`court noted that “the assertion that one of Murata’s long-retired inventors is for present purposes
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`Murata’s ‘managing agent’ appears to be a stretch from the very first glance.” Id. at 476. Under
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`Article 17(1)(e)(ii) of the U.S. Japan Consular Convention, “depositions of Japanese citizens
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`residing in Japan for use in U.S. litigation are only permitted if ‘voluntarily given . . ..;” and
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`compulsion of testimony from a Japanese witness can only be achieved pursuant to a foreign letter
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`rogatory process. See J.C. Renfroe & Sons, Inc. v. Renfroe Japan Co., Ltd., 515 F.Supp. 2d 1258,
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`1271 (M.D. Fla. 2007). Nichia claims it has no control over Shimizu, nor is he a current officer,
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`director or managing agent, therefore Everlight’s Motion to Compel should be denied.
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`Everlight argues Nichia’s conduct with respect to Shimizu mandates an order compelling his
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`deposition. Everlight points to Nichia’s “belatedly produced” re-employment agreement and argues
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`that this confirms that Nichia employed Shimizu as late as September of 2012. Further, in
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`September of 2012, Nichia’s counsel met with all of the inventors of the ‘925 and ‘960 Patents,
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`including Shimizu.
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`Everlight argues that based on these facts, Shimizu was clearly a “managing agent.”
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`Whether an individual is a “managing agent,” courts look to the following factors: “(1) whether he
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`has general powers allowing him to exercise judgment and discretion in corporate matters; (2)
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`whether he can be relied on to testify, at the corporation’s request, in response to the discovery
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`proponent’s demands; (3) whether there are any other employees who have more authority than the
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`individual in regard to information concerning the subject matter at issue in this case; (4) his general
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`responsibilities respecting the matters involved in this litigation; and (5) whether he can be expected
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`to identify with the interests of the corporation.” Murata Mfg. Co., 242 F.R.D. at 476.
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`Here, while Everlight contends that Shimizu is a “managing agent,” the evidence presented
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`does not support this argument. The Re-Employment Agreement, extended each year until
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`September of 2012, shows that Shimizu’s job description was that of an Engineering Consultant for
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`Nichia’s LED Technology Headquarters, Division No. 2. This job position does not suggest that
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`Shimizu had any general powers permitting him to exercise his judgment with respect to corporate
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`matters. However, Everlight maintains that this Court should find that Shimizu is a “managing
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`agent” because his separation from employment occurred under suspicious circumstances.
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`Specifically, Shimizu’s Re-Employment Agreement was not extended in September of 2012, where
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`it had been extended each year for the previous five years, and roughly three months after Everlight
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`filed its First Amended Complaint raising allegations of inequitable conduct before the Patent and
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`Trademark Office.
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`“Ordinarily, managing agent status is determined as of the time of the deposition, not as of
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`the time when the activities disputed in the litigation occurred.” E.I. DuPont de Nemours & Co.
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`v. Kolon Indus., 268 F.R.D. 45, 49 (E.D. Va. 2010). Thus, former employees cannot be managing
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`agents of a corporation. Id. However, there is an exception to this general rule, “[w]hen a managing
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`agent is fired to ‘avoid disclosure in pending or potential litigation,’ or when ‘the managing agent
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`has been or might be reappointed to another position in the corporation,’ managing agent status that
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`exists at the time of the events at issue does not magically disappear with the person’s termination
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`or reassignment.” Id. (citing In re Honda Am. Motor Co., 168 F.R.D. at 540).
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`Courts that have applied the exception to the general rule for managing agents have done so
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`where there is glaring evidence of either ongoing management responsibilities or where resignations
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`or terminations had occurred for the very purpose of avoiding depositions. See Independent Prods.
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`Corp. v. Loew’s Inc., 24 F.R.D. 19, 26 (S.D.N.Y. 1959) (finding “managing agent” status applied
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`for former employees, who were corporate officers before their resignations, and resigned from their
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`positions to avoid their depositions); see also In re Meta Systems, No. 501, 1997 U.S. App. LEXIS
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`7683 (Fed.Cir. Mar. 20, 1997); E.I. DuPont de Nemours & Co. v. Kolon Indus., 268 F.R.D. at 50-
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`51 (concluding that the exception applied based on “[t]he timing and circumstances of [the
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`employer]’s reassignment or termination of its employees render[s] the true status of the proposed
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`deponents highly suspect, and allow[s] for a strong inference that [the employer] is moving its
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`employees around like chessman, conveniently shielding them from [the examining party].”) The
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`Court is not convinced that something as sinister is at play here. Thus, the Court is without authority
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`to order Nichia to produce Shimizu for deposition as he is not a current officer, director or managing
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`agent of Nichia. In the event that Everlight cannot depose Shimizu by the deadline for fact
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`discovery, the Court will permit his deposition to occur after the close of discovery, currently set for
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`November 15, 2013.
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`B.
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`Nichia’s Motion to Compel (Accused Products)
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`Here, Nichia seeks an Order compelling Everlight to make a full production of documents
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`responsive to Nichia’s Requests for Production (“RFP”) Nos. 25, 47-49, 53-54, 57, 77, 79-81, 83-
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`84. Nichia argues that it has been trying for ten months to obtain the most fundamental discovery
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`from Everlight concerning the products that Nichia accuses of infringing its patents-in-suit. Nichia
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`maintains that Everlight is improperly hiding behind an objection to the definition of “Everlight’s
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`Accused LEDs” and “Everlight Accused Products” and Rule 33(d), even though their production
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`does not completely respond to the information sought by the interrogatory. Nichia also seeks an
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`Order overruling Everlight’s general objection No. 7 concerning the definition of “Everlight’s
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`Accused LEDs” and “Everlight Accused Products” and requiring Everlight to make a full production
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`of documents concerning its accused products.
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`Lastly, Nichia seeks an Order compelling Everlight to further supplement its First
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`Supplemental Response to Interrogatory No. 1 to provide more specific model and part identifying
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`information for Everlight’s LED products, with corresponding description of the phosphors used,
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`their chemical composition and the supplier of the phosphors. Interrogatory No. 1 seeks the
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`following information:
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`Identify, by model number, version number, or any other designation, each model,
`version, or type of Everlight Accused LED and Everlight Accused Product directly
`or indirectly sold, leased, transferred, shipped, or offered for sale by Everlight, or
`Everlight’s distributors, wholesalers, retailers, or other downstream customers into
`the United States at any time starting six years before the filing of the Complaint
`(filed on or about April 19, 2012) in this action, and for each product, identify and
`describe in detail the chemical composition of the phosphor.
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`See Mot. to Compel, Ex. B. Nichia maintains that the only adequate response to Interrogatory No.
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`1 is if Everlight produces a narrative response providing the following information: all of the
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`model/part numbers for products Everlight markets as “white” LEDs going back six years before
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`Everlight filed the complaint, the supplier of the phosphor used in the products, the part number and
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`a detailed description of the chemical composition of the phosphor.
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`Everlight responds that Nichia falsely represents the nature of the discovery process in the
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`instant action. Everlight made its first production of documents on January 25, 2013, and has since
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`made rolling productions on three other occasions. Everlight has produced over 285,000 pages of
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`information responsive to Nichia’s discovery requests. Everlight produced technical and
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`commercial information relating to Everlight’s phosphor-based LEDs that are the subject of the
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`present motion, as well as information relating to the phosphor components manufactured by third
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`parties. Everlight disputes Nichia’s assertion that Everlight has acted in bad faith. Everlight claims
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`it has identified 464 part numbers for phosphor-based LED products, however Nichia believes there
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`are an additional 654 part numbers that should have been identified. Everlight claims it has also
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`produced documents concerning characteristics of the third-party phosphor components used in
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`Everlight’s LED products, including (1) bills of materials which identify part number and supplier
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`of the third-party phosphor components and (2) material data sheets providing technical information
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`relating to the characteristics of the phosphor components supplied by third parties. Everlight
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`claims it has diligently tried to resolve the parties’ issues. Everlight also asserts that it has agreed
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`to produce the requested information. For all of these reasons, Everlight argues that Nichia’s
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`Motion to Compel should be denied.
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`As an initial matter, the Court declines to overrule Everlight’s general objection No. 7
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`regarding the definition of “Everlight’s Accused LEDs” and “Everlight Accused Products” as Nichia
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`fails to set forth any basis for this Court to overrule Everlight’s objection. Further, Everlight has
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`advised Nichia it will produce documents responsive to Nichia’s discovery requests notwithstanding
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`its objection. Further, an order compelling Everlight to supplement its document production
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`responsive to Nichia’s RFPs Nos. 25, 47-49, 53-54, 57, 77, 79-81, 83-84 is not warranted under
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`the circumstances. Everlight has represented to the Court that it has provided Nichia with all
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`responsive documents and any documents containing phosphor composition information are not in
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`Everlight’s possession, custody or control. Everlight further represents that it will abide by its
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`ongoing discovery obligations and will supplement its document production if additional responsive
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`documents are discovered. However, the Court will require Everlight’s counsel to prepare an
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`affidavit declaring that Everlight has produced all responsive documents in its possession and
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`identify what it has not produced because such documentary evidence is in the control of third
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`parties.
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`Lastly, the Court declines to require a narrative response to Interrogatory No. 1 because
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`Everlight’s reliance on Rule 33(d) is proper under the circumstances. Rule 33(d) is available “where
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`the answers to interrogatories may be found in the business records of the party upon whom the
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`interrogatories have been served.” Calhoun v. Liberty Northwest Ins. Corp., 789 F.Supp. 1540,
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`1549-50 (W.D. Wash. 1992). “An interrogatory answer merely referencing documents is
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`appropriate for requests requiring compilation or analysis, accomplished as easily by one party as
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`another, or where neither side has clear superiority of knowledge or familiarity with the documents.”
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`Ayers v. Cont’l Cas. Co., 240 F.R.D. 216, 226 (N.D. W. Va. 2007) (internal quotation omitted).
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`Here, because the characteristics of the phosphors used in Everlight’s white LED products are
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`contained in the bills of materials documents and material data sheets that Everlight has already
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`produced and the compilation and analysis requested by Nichia would be accomplished as easily
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`by Nichia or Everlight, reliance on Rule 33(d) is appropriate. Accordingly, for the foregoing
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`reasons, Nichia’s Motion to Compel is denied.
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`III.
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`CONCLUSION
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`For the reasons stated above, Everlight’s Motion to Compel Inventors of the Patents-In-Suit
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`[#121] is DENIED.
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`Nichia’s Motion to Compel (Accused Products) [#119] is DENIED.
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`/s/ Gershwin A. Drain
`GERSHWIN A. DRAIN
`UNITED STATES DISTRICT JUDGE
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`Dated: August 29, 2013
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`CERTIFICATE OF SERVICE
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`Copies of this Order were served upon attorneys of record on
`August 29, 2013, by electronic and/or ordinary mail.
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`/s/ Tanya Bankston
`Deputy Clerk
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