Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA493145
`ESTTA Tracking number:
`09/07/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054585
`Defendant
`Anna S. Dvornikova
`JEFFREY E FAUCETTE
`SKAGGS FAUCETTE LLP
`ONE EMBARCADERO CENTER, SUITE 500
`SAN FRANCISCO, CA 94111
`UNITED STATES
`jeff@skaggsfaucette.com
`Opposition/Response to Motion
`Jeffrey E Faucette
`jeff@skaggsfaucette.com
`/Jeffrey E. Faucette/
`09/07/2012
`Opposition to 2nd Motion to Compel.pdf ( 5 pages )(540212 bytes )
`Westlaw_Document_18_36_05.pdf ( 7 pages )(148646 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`AMBAR, INC.,
`
`Petitioner,
`
`V"
`ANNA DVORNIKOVA,
`
`Registrant.
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Cancellation No. 92,054,585
`Registration No. 4,018,246
`Mark: SILICON VALLEY OPEN DOORS
`
`REGISTRANT ANNA DVORNIKOVA’S OPPOSITION
`
`TO PETITIONER’S SECOND MOTION TO COMPEL
`
`Petitioner AMBAR, Inc. (“AMBAR”) filed a motion to compel Registrant Arma
`
`Dvornikova (“Dvornikova” or “Registrant”) to answer Interrogatories No. 4, 11, 26, 32
`
`and 37 in Petitioner’s Amended First Set of Interrogatories. Registrant objects these
`
`interrogatories on the ground that they seek to force Registrant to produce dociunents in
`
`lieu of answering questions. Federal Rule of Civil Procedure 33 does not permit this, and
`
`Petitioner has not cited to a single authority to the contrary. Instead, Petitioner has
`
`submitted twelve pages of empty rhetoric and ad hominem attacks on Registrant and
`
`Registrant’s counsel. Petitioner has also admitted that this motion is a complete waste of
`
`the Board’s time and Registrant’s because Petitioner has now served new Requests for
`
`Production that are identical to these supposed interrogatories. These “interrogatories”
`
`REGISTRANT’S OPP. TO 2ND MOTION TO COMPEL
`
`CANC. NO. 92054585
`
`1
`
`

`
`should have been served as Rule 34 requests in the first place, and this motion must be
`
`denied.
`
`In support of this motion, Petitioner goes on at length about its version of the
`
`history of discovery in this case and Registrant’s responses to Petitioner’s first set of
`
`requests for production (which were served on Registrant on April 18, 2012). None of
`
`this is relevant to the motion to compel. The only issue for the Board is the question of
`
`whether Interrogatories No. 4, 11, 26, 32 and 37 are proper interrogatories under Rule 33.
`
`The answer to that question is no.
`
`Registrant objects to each of these interrogatories on the ground that it is not
`
`permissible to demand production of documents in an interrogatory propounded pursuant
`
`to Rule 33. Rule 33 and TBMP 405 govern interrogatories and responses to them. By
`
`contrast, Rule 34 and TBMP 406 govern requests for production of documents and
`
`things. Fundamentally, interrogatories are questions to be answered. They cannot be
`
`used to require another party to take some action other than answering the question in
`
`writing. Here, none ofthese interrogatories asks a question ofRegistrant. Each of them
`
`demands that Registrant take the action of providing documents to Petitioner. These are
`
`requests for the production of documents, and they cannot be served pursuant to Rule 33.
`
`In Lee v. Electric Products Co., 37 F.R.D. 42 (N .D. Ohio 1963), the court reached
`
`this result and stated as follows “Interrogatory 7(b) inquires if a particular notice was in
`
`writing, and requests a photocopy thereof. Insofar as the request for a copy is concerned,
`
`it has consistently been held that Rule 33 is not to be utilized to obtain production of
`
`documents .
`
`.
`
`. .” Id. at 45 (citing Foundry Equip. Co. v. Carl—Meyer Corp., 11 F.R.D.
`
`108 (N.D. Ohio 1950)). Petitioner argues that this case is not good authority because it is
`
`a district court opinion, it is from 1963 (and allegedly cannot even be found on Westlaw)
`
`and that Rule 33 has been amended since 1963. None of these arguments undermine the
`
`authority in Lee.
`
`REGISTRANT’S OPP. TO 2ND MOTION TO COMPEL
`
`CANC. NO. 92054585
`
`2
`
`

`
`To begin with, most decisions regarding the interpretation of the Federal Rules of
`
`Civil Procedure come in district court opinions that are reported in the Federal Rules
`
`Decision (“F.R.D.”) database as was this case. It would be very unusual for an issue such
`
`as this one to get raised at the appellate level. Moreover, this is a simple and
`
`straightforward proposition, it is unlikely that anyone has bothered litigating over
`
`it. Anyone who wants the production of documents has a ready remedy avai1ab1e—serve
`
`a request pursuant to Rule 34 (as Registrant has now belatedly done).
`
`With respect to Petitioner’s argument regarding the age of the Lee case, it is true
`
`that the decision was reached in 1963, but Petitioner has failed to identify a single
`
`contrary decision in the nearly 50 years since this decision was reached.‘ Similarly,
`
`while Rule 33 has been amended on a few occasions since 1963, Petitioner does not
`
`identify any amendment that would have made the Lee decision come out differently in
`
`1963. None of the amendments to Rule 33 have changed the fact that Rule 33 allows
`
`parties to ask questions of other parties while Rule 34 allows parties to demand
`
`production of documents fiom other parties.
`
`Finally, the fact that Rule 33(d) provides a responding party with the option to
`
`identify particular business records under certain circumstances does not mean that the
`
`converse is true and that a demanding party can require a responding party to produce
`
`documents in response to an interrogatory.
`
`As a last gasp tactic, Petitioner tries to change the issue by ignoring the wording
`
`of the interrogatories as propounded. The interrogatories at issue do not ask Registrant to
`
`“identify,” “describe” or any other sort of question. They clearly and unequivocally
`
`demand that Respondent “provide” the documents (as Petitioner notes, other
`
`interrogatories in this set ask Registrant to identify documents and Registrant has not
`
`1 Since Petitioner claims to have been unable to find the decision on Westlaw, a pdf of
`the case (received from Westlaw) is submitted with this opposition.
`
`REGISTRANT’S OPP. TO 2ND MOTION TO COMPEL
`
`CANC. NO. 92054585
`
`3
`
`

`
`objected to those). The interrogatories at issue are demands for production that can only
`
`be made in requests propounded under Rule 34.
`
`For all of the foregoing reasons, the motion to compel should be denied.
`
`DATED: September 7, 2012.
`
`JEFFREY E. FAUCETTE
`
`SKAGGS FAUCETTE LLP
`
`One Embarcadero Center, Suite 500
`
`San Francisco, California 94111
`
`
`
`
`Y . FAUCETTE
`
`
`
`omeys for Registrant
`ANNA DVORNIKOVA
`
`REGISTRANT’S OPP. TO 2ND MOTION TO COMPEL
`
`CANC. NO. 92054585
`
`4
`
`

`
`PROOF OF SERVICE BY EMAIL
`
`The undersigned declares and says as follows: my business address is One
`
`Embarcadero Center, Suite 500, San Francisco, CA 94111.
`
`I am over the age of 18 years,
`
`and I am not a party to this cause.
`
`On September 7, 2012, I served the documents described as Registrant Anna
`
`Dvornikova’s Opposition to Petitioner’s Motion to Compel by email to Petitioner care of
`
`its attorney of record:
`
`Eugene Mazo
`mazo@ambargroup.org
`
`I declare under penalty of perjury, under the laws of the State of California, that the
`
`foregoing is true and correct, and that this Declaration is executed in Oakland, California,
`
`this 7th day of September, 2012.
`
`
`
`

`
`
`
`
`
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`(Cite as: 37 F.R.D. 42)
`
`
`
`
`
`United States District Court, N.D. Ohio, Eastern Di-
`vision.
`William H. LEE, Plaintiff,
`v.
`The ELECTRIC PRODUCTS COMPANY, Defend-
`ant.
`
`
`
`
`
`Civ. A. No. C 63-404.
`Sept. 30, 1963.
`
`Action for patent infringement, wherein plaintiff
`filed objections to interrogatory propounded by de-
`fendant. The District Court, Green, J., held that de-
`fendant's interrogatory as to date of conception of
`patent allegedly infringed was proper, but that de-
`fendant's interrogatory concerning contact of defend-
`ant's customers by plaintiff suing for patent infringe-
`ment was objectionable prior to pleadings putting in
`issue any defense of misuse of patent, even though
`defendant asserted that interrogatory might provide
`facts to support defense of misuse and possibly pro-
`vide basis for counterclaim based on unfair competi-
`tion.
`
`
`Objections sustained in part and overruled in
`part.
`
`
`West Headnotes
`
`735
`
`
`[1] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AVII Pleadings and Motions
` 170AVII(C) Answer
` 170AVII(C)1 In General
` 170Ak734 Time for Pleading
` 170Ak735 k. Extension. Most Cited
`Cases
` (Formerly 291k292)
`
`
`Defendant in patent infringement action was not
`entitled to extension of time within which to answer
`complaint until 10 days after plaintiff had answered
`defendant's interrogatories, where it appeared that,
`should answers to interrogatories and subsequent
`
`
`
`Page 1
`
`292.1(2.1)
`
`discovery proceedings elicit facts upon which de-
`fense could be predicated, an amended answer could
`be filed. Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`[2] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`292.1(1)
`
`Defendant's interrogatory as to date of concep-
`tion of patent allegedly
`infringed was proper.
`Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`[3] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(1) k. In general. Most
`Cited Cases
` (Formerly 291k292)
`
`
`292.1(2.1)
`
`Objection, to which no response was filed, to de-
`fendant's interrogatory inquiring in what respect al-
`leged infringing devices came within claim or claims
`of plaintiff's patent must be sustained. Fed.Rules
`Civ.Proc. rule 33, 28 U.S.C.A.
`
`[4] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`(Cite as: 37 F.R.D. 42)
`
` (Formerly 291k292.1(2), 291k292)
`
`
`Defendant's interrogatories relating to history of
`patent before patent office was tantamount to motion
`for production and must be denied. Fed.Rules
`Civ.Proc. rules 33, 34, 28 U.S.C.A.
`
`[5] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AX Depositions and Discovery
` 170AX(G) Admissions on Request
` 170Ak1672 k. Nature and purpose. Most
`Cited Cases
`
`
`1672
`
`292.4
`
`Defendant could properly achieve its avowed
`purpose of gaining admission of facts by resort to
`federal rule relating to admission of facts. Fed.Rules
`Civ.Proc. rule 36, 28 U.S.C.A.
`
`[6] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.4 k. Other matters. Most Cited
`Cases
` (Formerly 291k292)
`
`
`292.1(2.1)
`
`Generally, in patent actions, discovery on dam-
`ages will be deferred until liability is established.
`
`[7] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`Objection to defendant's interrogatory directed at
`issue of damages in patent infringement case would
`be sustained inasmuch as liability had not been estab-
`lished. Fed.Rules Civ.Proc. rule 36, 28 U.S.C.A.
`
`Page 2
`
`1477
`
`
`[8] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AX Depositions and Discovery
` 170AX(D) Written Interrogatories to Parties
` 170AX(D)1 In General
` 170Ak1474 Other Remedy, Availabil-
`ity or Prior Use of
` 170Ak1477 k. Documents, discovery
`and production of. Most Cited Cases
`
`
`1477
`
`Interrogatory requesting photocopy of certain no-
`tice was objectionable as a request for production.
`Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`[9] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AX Depositions and Discovery
` 170AX(D) Written Interrogatories to Parties
` 170AX(D)1 In General
` 170Ak1474 Other Remedy, Availabil-
`ity or Prior Use of
` 170Ak1477 k. Documents, discovery
`and production of. Most Cited Cases
`
`
`292.1(2.1)
`
`Federal Rule of Civil Procedure relating to inter-
`rogatories is not to be utilized to obtain production of
`documents. Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`[10] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`Plaintiff suing for patent infringement should an-
`swer interrogatory inquiring as to whether particular
`notice had been in writing. Fed.Rules Civ.Proc. rule
`33, 28 U.S.C.A.
`
`[11] Patents 291
`
`292.1(2.1)
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`(Cite as: 37 F.R.D. 42)
`
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`292.1(2.1)
`
`Defendant's interrogatory concerning contact of
`defendant's customers by plaintiff suing for patent
`infringement was objectionable prior to pleadings
`putting in issue any defense of misuse of patent, even
`though defendant asserted that interrogatory might
`provide facts to support defense of misuse and possi-
`bly provide basis for counterclaim based on unfair
`rule 33, 28
`competition. Fed.Rules Civ.Proc.
`U.S.C.A.
`
`[12] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
` Privileged Communications and Confidentiality
`13
`311H
`
`311H Privileged Communications and Confidentiali-
`ty
` 311HI In General
` 311Hk13 k. Mode or form of communica-
`tions; documents in general. Most Cited Cases
` (Formerly 291k292.1(2))
`
`
`Interrogatories of defendant in patent infringe-
`ment case were not objectionable on basis of privi-
`lege insofar as they asked only of existence and not
`of content of documents, but were objectionable as to
`portion calling
`for production of documents.
`Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`
`Page 3
`
`1508
`
`[13] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AX Depositions and Discovery
` 170AX(D) Written Interrogatories to Parties
` 170AX(D)2 Scope
` 170Ak1508 k. Documents, examination
`involving. Most Cited Cases
`
`
`292.1(2.1)
`
`Where interrogatories ask only of existence and
`not of content of documents there is no privilege in-
`volved. Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`[14] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`Where complaint in patent infringement proceed-
`ing was clearly notice pleading only, plaintiff should
`answer defendant's interrogatories to extent of stating
`whether described devices would be considered an
`infringement of subject patent and what claim or
`claims thereof, but plaintiff was not required to an-
`swer portion of interrogatories inquiring as to and in
`what respect devices described would be considered
`infringements. Fed.Rules Civ.Proc. rule 33, 28
`U.S.C.A.
`
`[15] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(3) k. Opinions, con-
`clusions, and interpretation of patents. Most Cited
`Cases
` (Formerly 291k292)
`
`
`292.1(3)
`
`Interrogatories of defendant in patent infringe-
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`(Cite as: 37 F.R.D. 42)
`
`292.1(2.1)
`
`ment case inquiring whether plaintiff made certain
`contentions with regard to language and disclosures
`of the subject patent had primary function of elucida-
`tion, although interpretation might be collaterally
`involved, and interrogatories were not objectionable
`as requiring an interpretation of patent. Fed.Rules
`Civ.Proc. rule 33, 28 U.S.C.A.
`
`[16] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`292.1(2.1)
`
`Interrogatories inquiring of work in field, which
`was subject of patent in infringement case, prior to
`date several years before were not objectionable as
`irrelevant. Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`[17] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`Defendant's interrogatory inquiring if plaintiff
`had offered any licenses under subject patent or any
`other patent owned or controlled by plaintiff was not
`relevant to issues framed and could not lead to any
`relevant evidence and was objectionable. Fed.Rules
`Civ.Proc. rule 33, 28 U.S.C.A.
`
`[18] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k292 Discovery
`
`292.1(2.1)
`
`Page 4
`
` 291k292.1 Interrogatories
` 291k292.1(2) Scope
` 291k292.1(2.1) k. In general.
`Most Cited Cases
` (Formerly 291k292.1(2), 291k292)
`
`
`Plaintiff suing for patent infringement would not
`be required to answer interrogatory relating to any
`patent applications plaintiff might have pending,
`where evidence going to question of other patents
`had not been sufficiently shown to bear on litigation.
`Fed.Rules Civ.Proc. rule 33, 28 U.S.C.A.
`
`*44 H. F. McNenny and R. H. Dickinson, Jr., Cleve-
`land, Ohio, for plaintiff.
`
`Alfred C. Body, Cleveland, Ohio, for defendant.
`
`GREEN, District Judge.
`This is an action for patent infringement. The pa-
`tent in suit is for an invention in ‘Alternating Current
`Drive and Control.’
`
`
`Plaintiff has filed objections to twenty-nine of
`the interrogatories propounded by defendant.
`
`
`Defendant, in turn, has filed a motion for exten-
`sion of time within which to answer the complaint
`until ten days after plaintiff has answered the inter-
`rogatories.
`
`
`[1] As to the motion for extension, the Court
`does not believe that such an extension is necessary.
`If the answers to the interrogatories and subsequent
`discovery proceedings elicit facts not now known to
`defendant, upon which a defense could be predicated,
`an amended answer can be filed. See, Ideal Pictures
`Incorporated v. Films Incorporated, 190 F.Supp. 433
`(D.C.S.D.N.Y., 1961).
`
`
`[2] Interrogatory 1(b) goes to the date of concep-
`tion of the subject patent. The Court is of the opinion
`that the interrogatory is proper.
`
`
`[3] Interrogatory 2(b) inquires in what respect
`the alleged infringing devices come within a claim or
`claims of the subject patent. Defendant has not filed a
`response to the objection to interrogatory 2(b), and, it
`appearing to the Court that the objection is well tak-
`en, it will be sustained.
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`(Cite as: 37 F.R.D. 42)
`
`
`
`[4][5] Interrogatories 3, 4, 5 and 23 relate to the
`history of the patent before the Patent Office. Objec-
`tion is made on the basis that the information sought
`is a matter of public record. In answer defendant
`states:
`
`
`‘The purpose of the interrogatory is to obtain
`admissions from the adverse party, thereby limiting
`matters in dispute. * * * The intent of this rule is that
`when both parties have the same information, why
`compel formal proof to be made of this joint
`knowledge?’
`
`
`In the recent decision in Harvey v. Levine, 25
`F.R.D. 15 (D.C.N.D.Ohio, 1960) it was held that a
`request for a complete recital of the contents of doc-
`uments, under Rule 33, Federal Rules of Civil Proce-
`dure, was tantamount to motion for production under
`Rule 34, and would be denied. The Court is of the
`opinion that the collective import of these four inter-
`rogatories brings this within the rationale of Harvey
`v. Levine, supra, although not foursquare on the
`facts. Defendant can more properly achieve its
`avowed purpose of gaining admission of facts known
`to it by resort to Rule 36, which is designed for that
`purpose.
`
`
`[6][7] Interrogatory 6 is directed at the issue of
`damages. Subsection 6(b) is repetitious of interroga-
`tories 1(a) and 2(a). Defendant, apparently recogniz-
`ing the general rule that in patent actions discovery
`on damages will be deferred *45 until liability is es-
`tablished, has not responded to this item. The objec-
`tion will be sustained.
`
`
`[8][9][10] Interrogatory 7(b) inquires if a par-
`ticular notice was in writing, and requests a photo-
`copy thereof. Insofar as the request for a copy is con-
`cerned, it has consistently been held that Rule 33 is
`not to be utilized to obtain production of documents,
`Foundry Equipment Co. v. Carl-Mayer Corp., 11
`F.R.D. 108 (D.C.N.D.Ohio, 1950). The objection will
`be sustained as to the request for production. Plaintiff
`shall answer whether the notice was in writing.
`
`
`[11] Interrogatory 12 concerns contact of de-
`fendant's customers by plaintiff. Defendant asserts
`that the interrogatory should be answered, in that it
`may provide facts to support a defense of misuse of
`the patent, and possibly provide a basis for a counter-
`
`Page 5
`
`claim based on unfair competition. A similar situa-
`tion was recently before the Court in General Indus-
`tries Co. v. Birmingham Sound Reproducers, Ltd.,
`194 F.Supp. 693 (D.C.E.D.N.Y., 1961). Objections to
`the interrogatories were there sustained, on the basis
`that until the pleadings put in issue the defense of
`‘unclean hands' discovery aimed at that subject was
`improper. The Court will follow the philosophy of
`that ruling, and sustain the objection to interrogatory
`12.
`
`
`[12][13] Interrogatories 13 and 14 are objected
`to on the basis of privilege. Any privilege which
`might properly be asserted is against disclosure of the
`contents of the documents. Where the interrogatories
`ask only of the existence and not of the content there
`is no privilege involved. Halpern v. United States,
`151 F.Supp. 183, 184 (D.C.S.D.N.Y., 1957). The
`objection will be sustained only as to those portions
`of interrogatories 13 and 14 which call for production
`of the documents.
`
`
`Interrogatory 15 calls for production of a docu-
`ment, and the objection will be sustained.
`
`
`Interrogatories 16, 17, 18, 19, 20, 21, 22 and 24
`are of a similar nature. All describe a different hoist
`drive, inquire if the described device would constitute
`an infringement of the subject patent, and if so, what
`claim or claims and in what respect. Objection is
`made on the basis that the answers require plaintiff to
`make a legal conclusion by construction of the sub-
`ject patent, citing Hoak v. Empire Steel Corp., 5
`F.R.D. 330, 331 (D.C.N.D.Ohio, 1946). However, in
`Drake
`v. Pycopé,
`Inc.,
`96 F.Supp.
`331
`(D.C.N.D.Ohio, 1951), it was stated:
`
`
`‘Plaintiff objects to interrogatories 8, 9, and 10
`on the ground that they call for an opinion, or inter-
`pretation of a patent. It is apparent that plaintiff in
`filing his complaint took full advantage of Rule 8(a)
`and merely stated that he is the owner of a certain
`patent, and that a device of defendant's infringes
`claims of his patent. Such a complaint, of course, is
`proper but as respects information, it merely gives
`defendant notice that he is being sued, and little else.
`Some procedure should be made available by which
`defendant may obtain information necessary to de-
`fend properly the lawsuit. Two methods are open to
`defendant, a motion for more definite statement or
`the discovery procedure. This court has many times
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`(Cite as: 37 F.R.D. 42)
`
`in the past indicated that the proper method is the use
`of the discovery procedures, and cannot allow dis-
`covery by interrogatories to become entangled in a
`mass of objections, else the defendant will be wholly
`unable to obtain the necessary information. This is
`especially true where plaintiff does nothing more in
`his complaint than give notice of the lawsuit. Objec-
`tions going to opinion or interpretation of claims
`therefore must be brushed aside where, as here, the
`interrogatories are directed to discovery of the exact
`nature of plaintiff's claim.’ *46 Similarly, in Harvey
`v. Levine, 25 F.R.D. 15 (D.C.N.D.Ohio, 1960), an-
`swer was required to an interrogatory which inquired
`if a device not alleged to be an infringement would
`be considered by plaintiff to infringe the patent in
`suit. In Gagen v. Northam Warren Corp., 15 F.R.D.
`44 (D.C.S.D.N.Y., 1953), the Court observed:
`
`
`‘It may be acknowledged that to a degree the in-
`terrogatories in question call for expression of judg-
`ment or opinion. However, this in and of itself does
`not condemn them if the basic purposes of deposi-
`tion-discovery procedure-obtaining relevant infor-
`mation and narrowing the issues-are to be served. In
`determining whether the interrogatories serve such
`purposes, account will be taken of the burden placed
`upon the party answering.’
`
`
`[14] The Court is of the opinion that in this ac-
`tion, where the complaint is clearly a notice pleading
`only, plaintiff should answer interrogatories 16, 17,
`18, 19, 20, 21, 22 and 24, to the extent of stating
`whether the described devices would be considered
`and infringement of the subject patent and what claim
`or claims thereof. Plaintiff's objections will be sus-
`tained as to that portion of the interrogatories which
`inquire in what respect the devices described would
`be considered infringements, as those answers would
`require a detailed technical comparison of the patent
`and the described devices. It is the Court's opinion
`that this procedure strikes a balance between the tra-
`ditional view regarding discovery of construction of
`patent claims and the rationale of the decisions here-
`inabove considered.
`
`
`[15] Interrogatories 27, 28, 29 and 30 are like-
`wise objected to as requiring an interpretation of the
`patent. These interrogatories differ from those just
`considered, in that they inquire whether plaintiff
`makes certain contentions with regard to the language
`and disclosures of the subject patent. It is the Court's
`
`Page 6
`
`opinion that while it may be said that interpretation is
`here involved, it is only collaterally so, and the pri-
`mary function of these interrogatories is elucidation.
`In considering this problem, Professor Moore has
`observed:
`
`
`‘The correct approach to the problem, it is sub-
`mitted, requires the discarding of any dogmatic ideas
`that matters of opinion may never be called for by
`interrogatory. There is nothing in the language of the
`rules to require such a holding. * * * In passing upon
`objections to interrogatories the question before the
`court should not be whether, as a theoretical matter,
`the interrogatory calls for an expression of opinion,
`but whether an answer would serve any substantial
`purpose. * * * If the answer might serve some legiti-
`mate purpose, either in leading to evidence or in nar-
`rowing the issues, and to require it would not unduly
`burden or prejudice the interrogated party, the court
`should require answer. The considerations in favor of
`allowing interrogatories as to the contentions of the
`parties are even stronger.’ 4 Moore's Federal Practice
`(2d ed.) pp. 2310-2311.
`
`
`Reflective of this philosophy is the ruling in
`DuPont v. Byrnes, 1 F.R.D. 34, 39 (D.C.S.D.N.Y.,
`1939) wherein the plaintiff was ordered to answer
`interrogatories as to what construction would be
`urged as to certain language in the patent in suit. The
`objections to interrogatories 27, 28, 29 and 30 will be
`overruled.
`
`
`[16] Interrogatories 31 and 32 inquire of defend-
`ant's work in the field which is the subject of the pa-
`tent in suit prior to 1956. They are objected to on the
`basis of relevancy. Although this appears to be on the
`periphery of propriety for discovery, the Court will
`overrule the objections, except that production of
`documents as requested in 32(b) will be denied.
`
`
`Interrogatory 33(b) calls for production of doc-
`uments, and the objection thereto will be sustained.
`
`
`*47 [17] Interrogatory 34 inquires if plaintiff has
`offered any licenses under the subject patent or any
`other patent owned or controlled by plaintiff. The
`Court is unable to ascertain how this information is
`relevant to the issues now framed, or could lead to
`any relevant evidence. The objection will be sus-
`tained.
`
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`Page 7
`
`
`
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`(Cite as: 37 F.R.D. 42)
`
`[18] Interrogatory 36, relating to any patent ap-
`plications plaintiff may now have pending, is object-
`ed to as attempting to discover privileged material
`and as irrelevant. Defendant alleges that ‘this materi-
`al can possibly have some bearing on the issues,’ but
`does not state in what manner. The Court does not
`believe that evidence going to the question of other
`patents has been sufficiently shown to bear on this
`litigation to warrant requiring plaintiff to answer this
`interrogatory.
`
`
`Plaintiff's objections to defendant's interrogato-
`ries sustained as to items 2(b), 3, 4, 5, 6, 12, 15, 23,
`33(b), 34 and 36; sustained in part and overruled in
`part as to items 7(b), 13, 14, 16, 17, 18, 19, 20, 21,
`22, 24 and 32; overruled as to items 1(b), 27, 28, 29,
`30 and 31.
`
`N.D. Ohio, 1963
`Lee v. Electric Products Co.
`37 F.R.D. 42, 9 Fed.R.Serv.2d 33.319, 3
`
`END OF DOCUMENT
`
`
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.