Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 1 of 8 Page ID #:2107
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`Christopher S. Marchese (SBN 170239),
`marchese@fr.com
`FISH & RICHARDSON P.C.
`555 West Fifth Street, 26th Floor
`Los Angeles, CA 90013
`Telephone: (213) 533-4240
`Facsimile: (877) 417-2378
`Thad C. Kodish (pro hac vice)
`tkodish@fr.com
`Jacqueline Tio (pro hac vice)
`tio@fr.com
`FISH & RICHARDSON P.C.
`1180 Peachtree Street, N.E., 21st Floor
`Atlanta, GA 30309
`Telephone: (404) 892-5005
`Facsimile: (404) 892-5002
`Bailey Benedict (pro hac vice)
`benedict@fr.com
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, TX 77010
`Telephone: (713) 654-5300
`Facsimile: (713) 652-0109
`
`DAVID K. WILLINGHAM (SBN 198874)
`dwillingham@bsfllp.com
`JEANNE A. FUGATE (SBN 236341)
`jfugate@bsfllp.com
`ZI WEI HU (SBN 293840)
`zhu@bsfllp.com
`BOIES SCHILLER FLEXNER LLP
`725 S. Figueroa Street, 31st Floor
`Los Angeles, California 90017-5524
`Telephone: (213) 629-9040
`Parmanand K. Sharma (pro hac vice)
`parmanand.sharma@finnegan.com
`Rajeev Gupta (pro hac vice)
`raj.gupta@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: (202) 408-4000
`Maximilienne Giannelli (SBN 241361)
`max.giannelli@finnegan.com
`Two Freedom Square
`11955 Freedom Drive
`Telephone: (571) 203-2700
`Jeffrey D. Smyth (SBN 280665)
`jeffrey.smyth@finnegan.com
`3300 Hillview Avenue
`Palo Alto, California, 94304
`Telephone: (650) 849-6600
`Attorneys for Plaintiff UPL NA Inc.
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA, SOUTHERN DIVISION
`
`Attorneys for Defendants
`TIDE INTERNATIONAL (USA), INC.,
`ZHEJIANG TIDE CROPSCIENCE CO.,
`LTD., and NINGBO TIDE IMP. & EXP.
`CO., LTD.
`
`UPL NA INC.,
`Plaintiff,
`
` Case No. 8:19-CV-1201-RSWL-KS
`JOINT STATUS REPORT
`
`v.
`TIDE INTERNATIONAL (USA), INC.,
`ZHEJIANG TIDE CROPSCIENCE
`CO., LTD., and NINGBO TIDE IMP. &
`EXP. CO., LTD.,
`Defendants.
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`TIDE 1027
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`Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 2 of 8 Page ID #:2108
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`Pursuant to the March 6, 2020 Order (ECF No. 77), Plaintiff UPL NA Inc.
`(“UPL NA”) and Defendants Tide International (USA), Inc., Zhejiang Tide
`CropScience Co., Ltd., and Ningbo Tide Imp. & Exp. Co., Ltd. (collectively,
`“Tide”) jointly submit this status report.
`As noted in the parties’ joint request for stay (ECF No. 76), the parties’
`discovery efforts had been significantly impacted by the outbreak of coronavirus.
`The Court previously granted the parties’ joint request, finding good cause to vacate
`all case deadlines (other than the Markman hearing). (ECF No. 77.)
`The parties currently disagree as to whether a stay continues to be necessary.
`UPL NA’s Position
`UPL NA proposes a short, thirty (30) day extension of the present stay to
`allow the parties to discuss and submit a proposal for appropriate case deadlines
`when the stay is lifted.
`As noted in the parties’ joint request for stay (ECF No. 76), the parties’
`discovery efforts have been significantly impacted by the outbreak of coronavirus.
`Indeed, it was Tide’s counsel who approached UPL NA in March to suggest that a
`stay of discovery might be prudent. Tide’s counsel explained that certain materials
`requested by UPL NA were located in China and could not be obtained or provided
`as a result of local restrictions related to the coronavirus outbreak. Tide’s counsel
`also noted that the noticed depositions would be impractical, if not impossible,
`given travel restrictions and quarantine rules. For those reasons, UPL NA agreed to
`jointly approach the Court and seek a stay of the proceedings. The Court granted the
`parties’ joint request, finding good cause to vacate all case deadlines (other than the
`Markman hearing). (ECF No. 77.) The circumstances underlying the parties’
`original request for stay have not changed, and indeed restrictions in the United
`States have since significantly increased.
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`Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 3 of 8 Page ID #:2109
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`Last Thursday, Tide’s counsel reiterated that: “depositions, even by video, of
`mainland China residents, Ms. Dong and Mr. Kui, cannot [] be conducted at present
`given restrictions in China, and travel restrictions in and out of China. Ms. Dong is
`expected to be both a designated witness on several 30(b)(6) topics, as well as a
`witness at any trial that may occur in this case.” Counsel for the parties conferred
`on Friday morning and agreed to jointly request a forty-five (45) day extension of
`the present stay. UPL NA prepared a draft joint statement in accordance with that
`agreement and shared it with Tide’s counsel on April 17, 2020.
`In a significant shift, this morning, Tide’s counsel changed course on its own
`recommendation, and indicated that Tide is no longer interested in seeking a joint
`stay. Instead, Tide presented a proposal for the limited discovery that it would be
`willing to provide. Tide’s proposed course of action will significantly prejudice
`UPL NA. To make matters worse, Tide waited until moments before midnight
`Eastern time tonight (UPL NA’s lead trial counsel resides on the east coast), to
`provide a proposed case schedule extending the previous deadlines by sixty days.
`That tactic eliminated any opportunity to consult with UPL NA or for the parties to
`meet and confer before Tide’s provision of that schedule to the Court in the parties’
`Joint Status Report.
`Tide’s proposal will seemingly have UPL NA wait until the close of fact
`discovery (or even after the close of fact discovery) to take the depositions and
`discovery that it needs before taking corporate depositions of each Defendant. For
`example, UPL NA is seeking Rule 30(b)(1) depositions of Defendants’
`manufacturing and financial/sales personnel, including Amber Dong and Yang Kui.
`These witnesses were excluded from Tide’s discovery proposal and these
`depositions appear impossible to conduct now or in the foreseeable future based on
`representations from Tide’s own counsel. These witnesses are needed at least in part
`because Tide’s document production to date has been limited in ways material to
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`Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 4 of 8 Page ID #:2110
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`the resolution of key issues in this dispute, and these witnesses have been identified
`as most knowledgeable concerning related subject matter. Understandably, UPL
`NA wants these personal depositions and any additional discovery that follows
`therefrom before taking the corporate depositions of Defendants Tide International
`(USA), Inc., Zhejiang Tide CropScience Co., Ltd., and Ningbo Tide Imp. & Exp.
`Co., Ltd. Tide’s proposal appears to contemplate cancelling these critical personal
`depositions altogether if the travel restrictions continue, while Tide simultaneously
`expressly reserves the right to rely on these witnesses at trial. When the case
`resumes, it must be on a schedule that allows for the personal depositions of these
`individuals to occur, and their Rule 30(b)(1) depositions should be held well before
`the close of fact discovery as they will likely lead to follow-on discovery.
`UPL NA has also sought important physical samples and other materials
`related to the accused products. While Tide now represents that some of those
`materials may be provided when the stay is lifted, UPL NA still awaits other
`physical samples. For example, Tide has only provided one of several requested
`samples of the accused products and it provides no guidance as to when the
`remaining samples will be provided. Analysis of all samples to be produced by Tide
`is an important aspect of UPL NA proving infringement in this case. That analysis
`should occur during fact discovery and before fact depositions. Given Tide’s
`surprising, last-minute change of position, the parties have not had any discussions
`regarding the case schedule going forward or reasonable timelines for the
`completion of fact discovery in view of the above issues and limitations.
`UPL NA respectfully submits that rather than immediately lift the stay on
`discovery, the stay should be extended for a short period of time, during which the
`parties can discuss an appropriate schedule in view of the present, highly unusual
`circumstances caused by the coronavirus. UPL NA suggests that a thirty (30) day
`extension—which is even shorter than what Tide’s counsel suggested last Friday—
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`Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 5 of 8 Page ID #:2111
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`would allow the parties time to assess the circumstances and discuss an appropriate
`case schedule. UPL NA suggests that the parties submit a joint status report by May
`20, 2020.
`Tide’s Position
`Tide proposes that the temporary stay be lifted at the end of the 60-day period
`enacted by the Court’s stay order. ECF Nos. 76, 77. Tide’s proposal is to apply the
`schedule that the Court had originally set, prior to the stay, and extend it by
`approximately 60 days to account for the stay. Under Tide’s proposal, the trial
`would start on December 8, 2020.
`Responding to UPL’s suggestion above that the original stay was mainly
`Tide’s doing, while it is true that Tide first broached the subject of a stay with UPL,
`UPL quickly agreed to Tide’s proposal and additionally sought to stay the Markman
`hearing. Tide’s original proposal did not seek to stay that hearing.
`Since the stay commenced, the circumstances underlying the parties’ original
`stay request have changed, and Tide’s request to lift the stay is based on these
`changed circumstances. Tide believes the parties can resume discovery by using
`remote technology, where applicable, and reaching compromises on discovery
`issues that may arise. Tide is now able to obtain and produce the requested product
`sample to UPL that it was previously unable to produce. Tide also believes the
`local rules and procedures governing this case are the proper vehicle for addressing
`any discovery disputes that may arise. For example, UPL’s alleged disputes with
`the sufficiency of Tide’s production of samples or document production is not one
`that should be resolved by granting another stay. Rather, any such dispute can be
`addressed in a discovery motion. Moreover, most of the work the parties will need
`to do for fact discovery, expert discovery, and pretrial will be handled electronically
`with little impact from COVID-19. And as discussed below, Tide offers a solution
`for depositions that would avoid the need for personal interaction and travel. Of
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`Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 6 of 8 Page ID #:2112
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`course, the COVID-19 situation is fluid, and the parties and the Court can revisit the
`schedule should the circumstances prove unworkable this coming fall.
`Tide’s rationale for the current stay depended on concerns that now have
`workable solutions. Notably, since the imposition of the stay on March 6, 2020,
`UPL made no effort to negotiate a new schedule. Tide initiated communications
`with UPL on April 15 requesting a teleconference to discuss the joint status report
`and informing UPL of the difficulties of deposing Tide’s China witnesses and
`UPL’s India witness. UPL did not provide its position on the joint status report
`until Friday, April 17. It is true that, on the teleconference, the parties discussed the
`possibility of an additional forty-five (45) day stay. However, Tide considered
`UPL’s position over the weekend and formulated an alternative proposal. This
`morning, at approximately 7 a.m. PST, Tide provided its position and alternative
`proposal with respect to the handling of the parties’ forthcoming depositions. UPL
`complains above that “Tide waited until moments before midnight Eastern time
`tonight … to provide a proposed case schedule extending the previous deadlines by
`sixty days,” but that was neither a tactic nor dilatory. In the 7 a.m. email, Tide’s
`counsel informed UPL’s counsel that “Tide prefers to proceed with the case with
`the stay lifting on May 5 as previously proposed to the Court in the Parties’ March
`5 Joint Request for Stay,” and it should come as no surprise, nor should it be
`considered tactical, that Tide simply proposed a schedule, should the stay be lifted,
`that adheres to the prior schedule set by the Court with the dates shifted back by
`approximately 60 days. UPL’s approach is simply to stay the case by another 30
`days without proposing any kind of schedule thereafter.
`No doubt, the parties will need to work together reasonably to address
`technology issues and challenges that may arise with video depositions, but Tide is
`committed to working constructively in that regard. To that end, Tide has
`committed to UPL to reasonably prepare Tide’s two U.S.-based witnesses to give
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`Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 7 of 8 Page ID #:2113
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`testimony on all topics for all three Tide defendants that UPL has noticed for Rule
`30(b)(6) deposition (subject to Tide’s objections), which would include gathering
`information from China-based witnesses who are prevented from giving testimony
`for an unknown period of time due to (i) China’s restrictions on depositions
`occurring in China; and (ii) the requirement of significant quarantine periods for
`travel out of and back into China (if such travel can occur at all). UPL objects to
`Tide’s proposal, arguing that it will lose out on “depositions and discovery that it
`needs before taking corporate depositions of each Defendant.” In response, UPL
`offers nothing but an indefinite “wait and see” approach: “When the case resumes,
`it must be on a schedule that allows for the personal depositions of these individuals
`to occur, and their Rule 30(b)(1) depositions should be held well before the close of
`fact discovery as they will likely lead to follow-on discovery.” (Emphasis added.)
`These are extraordinary times with COVID-19, and Tide is proposing
`accommodations and solutions to drive the case forward, while UPL simply wants
`to wait. Moreover, Tide respectfully submits that future hearings, though not trial,
`may be conducted by telephone or video until the COVID-19 threat sufficiently
`subsides for in-person appearances.
`The Court’s Order, with the exception of the Markman hearing, granted a
`temporary sixty (60) day stay of all due dates, including discovery. ECF Nos. 76,
`77. The calculation of the remaining dates is therefore no surprise to any party, and
`are included as an option in the proposed order submitted herewith.
`Tide therefore seeks to resume the present case by lifting the present stay on
`May 5, 2020 and extending all due dates by approximately sixty (60) days from
`their original due dates prior to the stay—dates that are consistent with the Court’s
`order granting the parties’ request to temporarily stay all deadlines for sixty (60)
`days. See ECF No. 77.
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`Case 8:19-cv-01201-RSWL-KS Document 84 Filed 04/20/20 Page 8 of 8 Page ID #:2114
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`Dated: April 20, 2020
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`Dated: April 20, 2020
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`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
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`By: /s/Jeffrey D. Smyth
`Jeffrey D. Smyth
`Attorneys for Plaintiff
`UPL NA Inc.
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`FISH & RICHARDSON P.C.
`
`
`
`By: /s/ Christopher S. Marchese
`Christopher S. Marchese
`Attorneys for Defendants
`TIDE INTERNATIONAL (USA), INC.,
`ZHEJIANG TIDE CROPSCIENCE CO.,
`LTD., and NINGBO TIDE IMP. & EXP.
`CO., LTD.
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`ATTESTATION
`Counsel for Plaintiff UPL NA, Inc. hereby attests by the signature below that
`concurrence in the filing of this document was obtained from counsel for
`Defendants Tide International (USA), Inc., Zhejiang Tide CropScience Co., Ltd.
`and Ningbo Tide Imp. & Exp. Co., Ltd.
`
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`Dated: April 20, 2020
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`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`By: /s/ Jeffrey D. Smyth
`Jeffrey D. Smyth
`Attorneys for Plaintiff
`UPL NA Inc.
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