4:12-cv-11758-GAD-MKM Doc # 402 Filed 01/30/15 Pg 1 of 5 Pg ID 33452
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`Civil Action No.12-cv-11758
`HON. GERSHWIN A. DRAIN
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`EVERLIGHT ELECTRONICS CO., LTD.,
`and EMCORE CORPORATION,
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`Plaintiffs/Counter-Defendants,
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`v.
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`NICHIA CORPORATION, and
`NICHIA AMERICA CORPORATION,
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`Defendants/Counter-Plaintiffs,
`
`v.
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`EVERLIGHT AMERICAS, INC.,
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`Defendant.
`____________________________________/
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`ORDER GRANTING IN PART AND DENYING IN PART NICHIA’S MOTION TO
`COMPEL SUPPLEMENTATION OF EVERLIGHT’S RESPONSES TO CERTAIN
`DISCOVERY REQUESTS [#394]
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`I. Introduction
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`Presently before the Court is Nichia’s Motion to Compel Supplementation of Everlight’s
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`Responses to Certain Discovery Requests, filed on November 24, 2014. This matter is fully briefed
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`and upon review of the parties’ filings, the Court will grant in part and deny in part Nichia’s Motion
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`to Compel Supplementation of Everlight’s Responses to Certain Discovery Requests. In its present
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`motion, Nichia seeks an order from the Court requiring Everlight to supplement its production of
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`documents in three areas encompassed within Nichia’s original discovery requests. Specifically,
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`Nichia seeks the following supplemental information: (1) sales information for Everlight’s
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`phosphor-based LED products relevant to damages and infringement; (2) supplemental accused
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`products information relevant to infringement and damages; and (3) supplemental competition
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`information relevant to injunctive relief.
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`II. Law & Analysis
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`Trial in this matter is scheduled to commence on April 7, 2015. Fact discovery closed in
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`November of 2013. Everlight argues that it has no duty to supplement its discovery disclosures
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`because the information sought by Nichia did not exist at the time fact discovery closed in
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`November of 2013.
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`Federal Rule of Civil Procedure 26(e) requires that:
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`(e) Supplementing Disclosures and Responses.
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`(1) In General. A party who has made a disclosure under Rule 26(a)–or who has
`responded to an interrogatory, request for production, or request for admission–must
`supplement or correct its disclosure or response:
`(A) in a timely manner if the party learns that in some material respect the
`disclosure or response is incomplete or incorrect, and if the additional or corrective
`information has not otherwise been made known to the other parties during the discovery
`process or in writing; or
`(B) as ordered by the court.
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`Fed. R. Civ. P. 26(e)(1). The duty to supplement discovery does not cease upon the close of the
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`applicable discovery period. Gorzynski v. JetBlue Airways Corp., 03CV774A, 2012 U.S. Dist.
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`LEXIS 28932, *7 (W.D.N.Y. Mar. 5, 2012). Courts have held that discovery is “‘incomplete or
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`incorrect’ in some material respect if there is an objectively reasonable likelihood that the additional
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`or corrective information could substantially affect or alter the opposing party’s discovery plan or
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`trial preparation.” Id. at *10.
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`As to Everlight’s sales information, Nichia argues that Everlight’s phosphor-based LED
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`product sales from September 2013 through the present should be updated as responsive to at least
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`Nichia’s Requests for Production (“RFP”) Nos. 68, 95, 99 and 130. Nichia argues this information
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`is directly relevant to its infringement case, as well as the amount of damages owed to Nichia if
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`Nichia proves its infringement case. Nichia maintains that the supplementation is necessary due to
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`Everlight’s ongoing sales activities. The sales data Everlight has produced only includes
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`information up to September of 2013, some sixteen months before the April 2015 trial.
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`Everlight argues there are more appropriate ways to address damages accrued after the close
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`of discovery such as seeking an accounting. Synqor, Inc. v. Artesyn Techs., Inc., No. 2:07-CV-497,
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`2011 U.S. Dist. LEXIS 74337 (E.D. Mich. Jul. 11, 2011). However, in Synqor the defendant
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`updated its sales information a month before trial in addition to the post-trial accounting suggested
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`by Everlight. Id. at *11. Moreover, Everlight is incorrect in suggesting any blanket prohibition in
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`Rule 26(e) regarding supplementation of new information that arose after the close of fact discovery.
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`See Sky Techs. LLC v. Sap AG, No. 2:06-CV-440, 2010 U.S. Dist. LEXIS 143204, *5-6 (E.D. Tex.
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`Aug. 3, 2010). Additionally, Everlight ignores the fact that the extent of its purported infringement
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`is an important factor for the jury’s consideration in fashioning a damages award rendering
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`Everlight’s failure to provide complete sales information prejudicial to Nichia. See Synqor, Inc.,
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`2011 U.S. Dist. LEXIS 74337, *22-23 (finding prejudice because additional sales were not in the
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`damages model presented to the jury).
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`Additionally, Everlight’s reliance on MSC.Software Corp. v. Altair Eng’g, Inc., No. 07-
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`12807, 2012 WL 1340445 (E.D. Mich. Apr. 18, 2012) is misplaced as the MSC.Software court
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`denied the plaintiff’s request for supplemental discovery for a variety of reasons that are factually
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`dissimilar to those present here. In MSC.Software, a prior court order precluded the plaintiff’s
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`requested relief. Id. at *2. Additionally, the plaintiff had access to some of the requested
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`supplemental information because the defendant released some of the information to the public. Id.
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`at *2-3. As such, the MSC.Software court found the plaintiff had sufficient information “to monitor
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`for misappropriation, ‘albeit not in the form it desires.’” Id. at *3. Here, Everlight does not deny that
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`Nichia has no sales information beyond September of 2013. Nor does Everlight even attempt to
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`explain how this incomplete factual record is inconsequential to Nichia’s trial preparation.
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`The other cases relied on by Everlight actually support Nichia’s request for updated sales
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`information based on the circumstances present here. See Coquina Invs. v. Rothstein, No. 10-60786,
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`2012 WL 3202273, at *11 (S.D. Fla. Aug. 3, 2012) (noting that at least one other court had required
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`supplementation of its discovery responses where the later-created materials make any prior
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`responses incomplete or incorrect in some material respect); Pharmacy, Inc. v. Am. Pharm. Partners,
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`Inc., No. 05-776, 2008 WL 4415263, at *4-7 (E.D.N.Y. Sept. 24, 2008) (ordering the accused
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`infringer to supplement with updates sales information). Accordingly, Everlight shall supplement
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`its sales information for its phosphor-based LED products with sales from September of 2013
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`through the date of the instant order relative to RFP Nos. 68, 95, 99 and 130 no later than February
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`23, 2015.
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`However, the Court is not inclined to order Everlight to supplement its response to
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`Interrogatory No. 1 concerning what Nichia refers to as “new versions of accused products.” While
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`the updated sales information pertains to products that were in existence during the discovery period,
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`Nichia seeks discovery on products that were not in existence at the time fact discovery closed. The
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`Court rejects Nichia’s contention that the experts’ existing infringement analyses can easily be
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`applied to the “new versions of accused products.” Rather, this type of discovery supplementation
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`will ultimately result in the need to move the trial date to provide the experts adequate time to
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`supplement their infringement opinions and for the parties to digest the revised opinions. See Fastek,
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`LLC v. Steco, No. 10-cv-0972, 2011 WL 4499101, *2 (S.D. Cal. Sept. 27, 2011).
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`Therefore, Nichia’s request for discovery related to “new versions of accused products” is
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`denied. Similarly, the Court will also deny Nichia’s request for an order compelling Everlight to
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`supplement its production of documents and communications relating to competition in the white
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`LED market. Id. (“Parties would be unable to provide expert reports, or prepare for trial if they were
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`obligated up to and during trial, to produce documents created and disclose communications made,
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`after the close of fact discovery even if they would be responsive to requests made during the
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`discovery period.”)
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`III. Conclusion
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`Accordingly, Nichia’s Motion to Compel Supplementation of Everlight’s Responses to
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`Certain Discovery Requests [#394] is GRANTED IN PART and DENIED IN PART. Everlight shall
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`supplement its sales information for its phosphor-based LED products with sales from September
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`of 2013 through the date of the instant order relative to RFP Nos. 68, 95, 99 and 130 no later than
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`February 23, 2015.
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`SO ORDERED.
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`Dated: January 30, 2015
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`/s/Gershwin A Drain
`GERSHWIN A. DRAIN
`UNITED STATES DISTRICT JUDGE
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