4:12-cv-11758-GAD-MKM Doc # 147 Filed 09/05/13 Pg 1 of 5 Pg ID 7541
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`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.,
`
`Defendants.
`_________________________________/
`
`ORDER GRANTING IN PART EVERLIGHT’S MOTION TO COMPEL
`SUPPLEMENTAL RESPONSES TO EVERLIGHT’S INTERROGATORY NO. 8 AND
`REQUESTS FOR ADMISSION NOS. 1-16, OR ALTERNATIVELY TO DEEM THE
`REQUESTS FOR ADMISSION NOS. 1-16 ADMITTED
`
`I.
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`INTRODUCTION
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`On July 9, 2013, Everlight filed a Motion to Compel Supplemental Responses to Everlight’s
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`Interrogatory No. 8 and Requests for Admission Nos. 1-16, or Alternatively to Deem the Requests
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`for Admission Nos. 1-16 Admitted. The Court has ordered submission and determination of this
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`motion without oral argument. This matter is fully briefed and for the reasons that follow, the Court
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`grants in part Everlight’s Motion to Compel Supplemental Responses to Everlight’s Interrogatory
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`No. 8 and Requests for Admission Nos. 1-16, or Alternatively to Deem the Requests for Admission
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`Nos. 1-16 Admitted.
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`II.
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`LAW & ANALYSIS
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`In the present motion, Everlight seeks an Order compelling Nichia to supplement its
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`responses to Everlight’s Interrogatory No. 8 and RFA Nos. 1-16, or alternatively to deem them
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`admitted.
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`As an initial matter, it appears that the dispute concerning Interrogatory No. 8 has been
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`resolved as Nichia indicates in its response brief that it has agreed to supplement its response to this
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`interrogatory request. Thus, this aspect of Everlight’s present motion is moot.
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`Everlight served RFA Nos. 1-16 on October 8, 2012. Everlight argues that Nichia has
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`provided insufficient responses by its refusal to either admit or deny simple facts related to
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`Everlight’s inequitable conduct claim, nor provide the facts uncovered through Nichia’s
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`investigation of these issues. For example, RFA No. 1 states:
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`REQUEST FOR ADMISSION NO. 1:
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`Admit that the Named Inventors did not manufacture as of July 29, 1997 the
`referenced “100 pieces” of light emitting diodes disclosed in Example 8 of the ‘925
`Patent.
`
`See Everlight’s Mot. to Compel, Ex. B. On November 12, 2012, Nichia served its responses and
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`responded to RFA No. 1 as follows:
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`Nichia is not able to admit or deny this specific Request. Nichia has made
`a reasonable inquiry and the information it knows or can readily obtain is insufficient
`to enable it to admit or deny this specific Request. Fundamentally, this Request asks
`for a “negative” to be admitted, which is an inherently difficult type of Request to
`Respond to. Also, the passage of time significantly influences any inquiry to try to
`prove that the specified action never took place. Further, this Request of Admission
`is clearly related to the allegations of “inequitable conduct” that Everlight originally
`pled
`in
`its Amended Complaint.
` However,
`the
`issue of “inequitable
`conduct”/”enforceability” is not part of this action, so this Request for Admission is
`objected to as irrelevant. Nonetheless. based on a good faith belief, Nichia states
`that the referenced “100 pieces” of light emitting diodes disclosed in Example 8 of
`the ‘925 Patent could have been made as of July 29, 1997
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`Id. Everlight argues that Nichia has had ten months to investigate whether the inventors actually
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`did what is represented in Examples 8 and 12 of the ‘925 Patent. Three of the named inventors
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`currently work for Nichia. Everlight argues that “[i]f Nichia uncovered evidence,[it] most certainly
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`would have denied the RFAs and produced that evidence. And if [it] uncovered no such evidence,
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`[it] should have admitted the RFAs.” Mot. at 9.
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`In response, Nichia first argues that Everlight’s failure to abide by this Court’s local rules
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`concerning meeting and conferring in good faith to resolve discovery dispute requires that
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`Everlight’s motion be denied. Nichia also argues that its discovery responses are supported by Rule
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`36(a)(4), relying on the case of Khami v. Ortho-McNeil-Janseen Pharmaceutical, Inc., No. 09-cv-
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`11464, 2011 U.S. Dist. LEXIS 27876 (E.D. Mich. Mar. 17, 2011).
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`In Khami, the defendants responded to an RFA by stating that “after making reasonable
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`inquiry they are unable to admit or deny the remainder of Plaintiff’s request because they lack
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`knowledge or information sufficient to form a belief as to whether Plaintiffs complained about her
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`FMLA leave.” Khami, 2011 U.S. Dist. LEXIS 27876, at *5-6. The Khami court found that the
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`plaintiff’s answer was sufficient, concluding:
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`Federal Rule of Civil Procedure 36 provides that an answer to a proper Request for
`Admission must deny the request or state in detail why the answering party cannot
`truthfully admit or deny it. The answering party may assert lack of knowledge or
`information as a reason for failing to admit or deny only if the party state that it has
`made a reasonable inquiry and that the information it knows or can readily obtain is
`insufficient to enable it to admit or deny. The Court is satisfied that Defendants’
`response conforms with Rule 36(a)(4). No further response will be ordered.
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`Id. (internal quotations and citations omitted). Nichia maintains that it did conduct a reasonable
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`investigation; Everlight ignores the fact that the RFAs seek information concerning events that
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`occurred seventeen years ago, the samples assembled in 1996 no longer exist, memories have faded,
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`remaining documents are incomplete and some of those with knowledge are no longer with the
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`company. Nichia further argues that Everlight’s RFAs are vague and ambitious, and not “crafted
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`with specificity,” as required by law. Alli v. Savit, 2008 U.S. Dist. LEXIS 63571, *14-15 (E.D.
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`Aug. 20, 2008). Finally, Everlight’s RFA Nos. 5,7, 12 and 14 ask that Nichia confirm its inventors
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`declared to the PTO that they read and understood the application for the ‘925 Patent. The inventors
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`will be deposed and the topics raised by these RFAs concern the inventors’ state of mind and are
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`properly addressed through deposition questioning.
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`Everlight replies that Khami is distinguishable from the present matter because the defendant
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`in Khami admitted most of the RFA at issue before stating it could not admit or deny the remainder.
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`Khami, 2011 U.S. Dist. LEXIS 27876, at *5-6. Further, Nichia’s responsive brief demonstrates
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`that it has possession of the necessary information for an admission or denial of at least RFAs 3 and
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`10, which ask that Nichia confirm that it does not have records in its possession relating to
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`manufacturing LEDs in Examples 8 and 12. Thus, Nichia’s reliance on Rule 36(a)(4) is entirely
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`improper.
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`Moreover, Everlight refutes Nichia’s contention that its RFAs are vague and complains that
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`Nichia’s assertion that is has “produced many documents concerning the many samples prepared
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`in the 1996-97 time frame, all of which may be considered to be ‘records relating’ to the various
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`examples in the patent, including Examples 8 and 12" is disingenuous since Nichia knows that
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`Examples 8 and 12 are the only examples to disclose a full substitution of an element of a phosphor
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`described as an yttrium-aluminum-garnet fluorescent material and that Everlight’s inequitable
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`conduct claim is dependent on the purported allegations that Nichia did not manufacture the LEDs
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`in Examples 8 and 12 as of July 29, 1997. Finally, Everlight argues that producing witnesses for
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`deposition does not excuse a party from its Rule 36 obligations, and that allowing Nichia to respond
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`in this manner contravenes the very purpose of Rule 36.
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`Here, the Court agrees with Everlight concerning Nichia’s responses to Everlight’s RFA
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`Nos. 1-16. Nichia has failed to establish good cause for its failure to provide any substantive
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`answers to Everlight’s RFA Nos. 1-16. Accordingly, the Court hereby orders Nichia to provide
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`supplemental answers to RFA Nos. 1-16 within seven (7) days from the date of this Order or RFA
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`Nos. 1-16 will be deemed admitted.
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`III.
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`CONCLUSION
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`For the above stated reasons, Everlight’s Motion to Compel Supplemental Responses to
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`Everlight’s Interrogatory No. 8 and Requests for Admission Nos. 1-16, or Alternatively to Deem
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`the Requests for Admission Nos. 1-16 Admitted [#107] is GRANTED IN PART.
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`SO ORDERED.
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`Dated: September 5, 2013
`
`/s/Gershwin A Drain
`GERSHWIN A. DRAIN
`UNITED STATES DISTRICT JUDGE
`
`-5-