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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`Civil Action No. 2:12-cv-02112
`
`JURY DEMAND
`
`)))))))))))
`
`MULTILAYER STRETCH CLING FILM
`HOLDINGS, INC.,
`
`Plaintiff,
`
`v.
`
`MSC MARKETING AND TECHNOLOGY,
`INC., D/B/A SIGMA STRETCH FILM, and
`ALPHA INDUSTRIES, INC.,
`
`Defendants.
`
`RESPONSE IN OPPOSITION TO SIGMA’S MOTION TO COMPEL
`SUPPLEMENTATION OF MULTILAYER’S INFRINGEMENT CONTENTIONS
`
`Plaintiff Multilayer Stretch Cling Film Holdings, Inc. (“Multilayer”) submits this
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`response in opposition to the Motion to Compel Supplementation of Multilayer’s Infringement
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`Contentions (DE # 75) filed by Defendants MSC Marketing and Technology, Inc., d/b/a Sigma
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`Stretch Film, and Alpha Industries, Inc. (collectively “Sigma”).
`
`I.
`
`INTRODUCTION
`
`Misery loves company. This Court recently granted a motion to compel filed by
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`Multilayer and ordered Sigma to reconfigure its stretch film line to obtain samples of the
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`allegedly infringing film, which Sigma had failed to preserve. See DE # 73. One week later,
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`Sigma filed this baseless motion to compel in a transparent attempt to cast Multilayer in the same
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`light as Sigma—as an obstructionist to discovery. Nevertheless, Multilayer’s Initial
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`Infringement Contentions are not deficient, as there is no requirement that Multilayer include
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`information from its privileged pre-filing investigation in such contentions. Further, Sigma’s
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`suggestions that Multilayer may not have conducted an adequate pre-filing investigation are
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`

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`undermined by Sigma’s own actions—it reconfigured its Tulsa stretch film line mere months
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`after Multilayer filed suit. Sigma’s motion, which is nothing more than a diversionary tactic,
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`should be denied.
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`II.
`
`RELEVANT FACTS
`
`A.
`
`Multilayer’s Pre-Filing Investigation
`
`Multilayer conducted a thorough pre-filing investigation in advance of bringing suit
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`against Sigma. Multilayer’s Privilege Log reveals that Multilayer engaged in an in-depth
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`investigation that took place over the course of several months leading up to the filing of the
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`Complaint in this action on February 10, 2012. See Ex. A, Multilayer’s Privilege Log.
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`Multilayer’s pre-filing investigation is privileged, and it does not intend to waive privilege over
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`these analyses or utilize the analyses to prove infringement in this case. Multilayer is willing,
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`however, to make the portions of its pre-filing testing that relate to Sigma’s stretch films
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`available to the Court for an in camera inspection.
`
`B.
`
`Multilayer’s Initial Infringement Contentions
`
`Multilayer served its Initial Infringement Contentions on Sigma on April 27, 2012 in
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`accordance with the deadlines contained in the Local Patent Rules. Multilayer’s Initial
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`Infringement Contentions are in full compliance with the requirements set forth in the Local
`
`Patent Rules. This inescapable conclusion is illustrated by the fact that Sigma did not complain
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`about the substance of Multilayer’s contentions for a full year after receipt of them. Indeed,
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`Sigma was able to prepare and serve its Initial Non-Infringement Contentions on June 29, 20121
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`based on the information contained in Multilayer’s Initial Infringement Contentions. As further
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`evidence of the insincerity of Sigma’s motion, Sigma recently alleged that it cannot supplement
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`1 The parties mutually agreed to extend this deadline from May 29, 2012 to June 29, 2012, pending settlement
`negotiations.
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`2
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`

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`its Initial Non-Infringement Contentions, which Multilayer has accused of being deficient since
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`September 27, 2012 (see DE # 67-6 at pp. 6-7), because Multilayer’s Initial Infringement
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`Contentions are deficient. Ex. B, June 5, 2013 Letter, p. 3. Sigma’s newly articulated theory is
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`undermined by its own ability to prepare Initial Non-Infringement Contentions without a single
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`complaint about Multilayer’s contentions for an entire year.
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`Multilayer’s Initial Infringement Contentions readily admit that the disclosure is as
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`specific as possible given the early stage of the case. See, e.g., DE # 78, p. 2; id. at p. 10. The
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`Local Patent Rules provide that these initial contentions are due within seven (7) days after the
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`Responsive Pleading is filed. LPR 3.1. While Multilayer served discovery requests on the first
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`day permitted under the Local Patent Rules—the day Sigma filed its Responsive Pleading—
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`Multilayer had not yet received any documents or responses from Sigma as of the date
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`Multilayer served its Initial Infringement Contentions. The contentions plainly state, “The
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`asserted claims include elements that relate specifically to the formulations of the Accused Film
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`and the processing conditions used to manufacture the Accused Film, which is confidential
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`information and not publicly available.” DE # 78 at p. 10. Although Multilayer had specifically
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`requested this confidential information from Sigma, it had not yet received it. Thus, Multilayer’s
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`Initial Infringement Contentions are based on non-privileged information that is publicly
`
`available. Again, these contentions were perfectly suitable to Sigma until recently.
`
`C.
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`Sigma’s Quest to Pry Into Multilayer’s Privileged Information
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`At the Rule 30(b)(6) deposition of Multilayer, Sigma asked question upon question about
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`Multilayer’s pre-filing investigation. Each such improper question was met with an objection
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`relating to privilege and an instruction that the corporate representative not answer to the extent
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`doing so would reveal privileged information. Similarly, Sigma asked questions about the basis
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`for Multilayer’s Initial Infringement Contentions. Multilayer’s counsel objected on the grounds
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`3
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`of privilege and instructed the corporate representative not to answer to the extent it would reveal
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`privileged information. Multilayer’s counsel made it clear that Multilayer was available to
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`testify to non-privileged information relating to the Initial Infringement Contentions. Ex. C,
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`Multilayer Deposition Transcript, p. 22:1-6. Moreover, Multilayer’s counsel emphasized that the
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`non-privileged information supporting Multilayer’s contentions includes the exhibits to the
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`Initial Infringement Contentions, which had not been shown to Multilayer’s representative until
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`Multilayer’s counsel requested that they be utilized.
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`Once Sigma finally gave Multilayer’s representative the exhibits to the Initial
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`Infringement Contentions, Multilayer testified at length to the non-privileged bases for
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`Multilayer’s contentions. For instance, with respect to Exhibit B to Multilayer’s Initial
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`Infringement Contentions, Multilayer testified as follows:
`
`Okay. Then on page 4 near the bottom before the bold print, non-
`stop, the one paragraph before that, “Sigma focuses on less-
`expensive commodity films with its nine-layer line. It’s [sic]
`Battenfeld Gloucester system uses four extruders and a Cloeren die
`and feedblock. The subskin B, core C, and subskin D are split into
`alternating layers, A/B/C/B/C/D/C/D/A.”
`
`In my opinion, if you use butene in every one of those layers and
`configure it this way, it’s a violating film.
`
`Q So, based on the portions of Exhibit 61 that you just identified,
`is it your understanding that those -- that information contained in
`what you just identified, forms the factual basis for Multilayer’'s
`claim of infringement against Sigma?
`
`MS. SMITH: Object to the form. And to the extent it requires you
`to reveal attorneys -- conversations that you’ve had -- information
`that you’ve gleaned from your attorneys, I caution you not to
`answer or disclose that information.
`
`THE WITNESS: This could, at the very least, be the basis. Further
`information, I can't speak to, but this -- this is enough, in my
`opinion, to say I’m of the opinion that they are violating.
`
`4
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`Ex. C, Multilayer Deposition, pp. 38:4-39:3. When asked if there were any other facts that
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`support Multilayer’s claim of infringement, Multilayer discussed a subpoena served on Sigma
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`prior to commencement of the litigation referencing the patent-in-suit (id. at p. 39:15-22), a
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`February 2003 article discussing a nine-layer stretch film line installed in Belleville, Ontario in
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`2000 (id. at pp. 61:24-64:10; id. at pp. 69:12-71:14; id. at p. 73:4-18), and a March 11, 2008
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`Sigma press release discussing a new nine-layer stretch film line that Sigma purchased and
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`installed in its Tulsa, Oklahoma facility (id. at pp. 39:25-45:9). Multilayer also discussed
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`Sigma’s stretch film brochures and explained how they establish the requisite amount of cling in
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`the outer layer or layers of the accused films. Id. at pp. 59:18-61:12; id. at pp. 75:4-76:8.
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`Furthermore, Multilayer’s corporate representative, Terry Jones, summarized a discussion he had
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`with Peter Cloeren, owner of Cloeren Incorporated, regarding Cloeren’s sale of a nine-layer
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`selector plug to Sigma. Id. at pp. 138:3-139:20. Thus, Sigma’s assertion that Multilayer “could
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`not identify or explain what facts supported Multilayer’s allegations of patent infringement” (DE
`
`# 76, p. 2) is demonstrably false.
`
`Multilayer’s corporate representative was also prepared to discuss information produced
`
`by Sigma in connection with its patent disclosures and discovery obligations, which support
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`Multilayer’s allegations of infringement. In particular, Sigma’s interrogatory responses provide
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`additional evidence that Sigma is infringing the patent-in-suit. Although Sigma designated the
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`interrogatory responses as “Attorney’s Eyes Only” under the Stipulated Protective Order, Sigma
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`authorized Mr. Jones, Multilayer’s corporate representative, to review such documents. As such,
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`Mr. Jones was prepared to discuss Sigma’s interrogatory responses and how they provide further
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`evidence of infringement. See Ex. C, pp. 17:5-18:25, p. 22:1-6, and p. 26:1-10. Nevertheless,
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`Sigma refused to ask any questions relating to Sigma’s interrogatory responses. Id. at pp. 19:18-
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`5
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`24 and p. 26:11-15. It is therefore evident that Sigma did not truly want to learn the bases of
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`Multilayer’s allegations of infringement in this case; rather, Sigma’s sole focus was prying into
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`Multilayer’s privileged pre-filing investigation.
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`In sum, although Sigma repeatedly attempted to prod into the privileged pre-filing
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`investigation, Multilayer did not waive privilege as to those matters. Multilayer’s testimony
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`regarding the facts that support its allegations of infringement was based solely on publicly
`
`available information along with a conversation Multilayer’s representative had with a
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`manufacturer who had supplied Sigma with stretch film line equipment. Moreover, Multilayer’s
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`testimony regarding these non-privileged matters was thorough and fully supported. Multilayer
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`was also prepared to testify as to the information produced by Sigma that supports the allegations
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`of infringement—a topic Sigma had “no intention” of exploring. Ex. C, p. 19:18-24 and p.
`
`26:11-15. Thus, it is evident that Sigma’s sole goal is not to explore the evidence Multilayer
`
`may use to support its infringement contentions but rather to pry into Multilayer’s privileged pre-
`
`filing investigation.
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`D.
`
`Sigma’s New-Found Complaints About Multilayer’s Initial Infringement
`Contentions
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`As this Court is aware, after many months of empty promises that Sigma would produce
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`samples of the accused films, Multilayer was forced to file a motion to compel Sigma to produce
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`the film samples. DE # 67. In Sigma’s response brief, it raised the unrelated issue of alleged
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`“serious deficiencies in Multilayer’s infringement contentions.” DE # 69, p. 1. Sigma also
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`argued that Multilayer should disclose information and analyses relating to its privileged pre-
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`filing investigation. Id. Sigma manufactured these arguments only after it was placed on notice
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`of Multilayer’s intent to file a motion to compel relating to the film samples.
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`6
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`Sigma’s newly contrived argument is as follows: because Multilayer’s Initial
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`Infringement Contentions do not include information relating to its pre-filing investigation,
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`Multilayer should be compelled to produce such information. Implicit in Sigma’s argument is
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`the acknowledgement that Multilayer conducted an investigation prior to initiating this action
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`against Sigma for patent infringement—a point which both parties do not dispute. Nevertheless,
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`Multilayer maintains, and has maintained, privilege over the analyses conducted prior to the
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`filing of the Complaint against Sigma. Multilayer has not relied on the information gleaned
`
`through its pre-filing investigation in any way throughout the course of this litigation. To that
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`end, Multilayer did not cite or rely upon its pre-filing investigation in Multilayer’s Initial
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`Infringement Contentions. Sigma is thus not entitled to discover information relating to
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`Multilayer’s privileged pre-filing investigation because Multilayer has not waived privilege.
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`III.
`
`ARGUMENT
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`Sigma asks this Court to compel Multilayer to supplement its Initial Infringement
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`Contentions to reveal privileged information relating to Multilayer’s pre-filing investigation.
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`There are multiple problems with Sigma’s request. First, Multilayer’s Initial Infringement
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`Contentions are in full compliance with this Court’s Local Patent Rules, as evidenced by
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`Sigma’s lack of complaint for a year after receipt of them. Second, the investigation undertaken
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`by Multilayer prior to filing suit against Sigma is privileged, Multilayer has not waived privilege
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`over such matters, and Sigma has not established why it should nevertheless be entitled to invade
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`the privilege and discover the information it seeks. Third, the Local Patent Rules do not require
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`a patentee to set forth privileged information relating to its pre-filing investigation in its initial
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`infringement contentions. Sigma’s request for a stay of discovery is also baseless. For these
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`reasons, Sigma’s motion to compel should be denied, and Multilayer should be awarded
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`7
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`reasonable expenses, including attorney’s fees, incurred in responding to Sigma’s groundless
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`motion.
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`A.
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`Multilayer’s Initial Infringement Contentions Comply with the Local Patent
`Rules.
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`As illustrated by Sigma’s year-long silence on the sufficiency of Multilayer’s Initial
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`Infringement Contentions, they are in full compliance with this Court’s Local Patent Rules.
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`Local Patent Rule 3.1 requires, in relevant part, “[a] chart identifying specifically where each
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`limitation of each asserted claim is found within each Accused Instrumentality.” LPR 3.1(c).
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`Multilayer’s Initial Infringement Contentions are in compliance with this requirement. Contrary
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`to Sigma’s contentions that Multilayer’s Initial Infringement Contentions lack support, they do
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`indeed cite to publicly available facts and information that support Multilayer’s infringement
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`contentions. For example, Multilayer’s chart states as follows with respect to the preamble of
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`claim 1:
`
`Limitation
`
`Magnum Stretch 300 Film
`
`A multi-layer, thermoplastic stretch wrap film
`containing seven separately identifiable
`polymeric layers, comprising:
`
`Magnum Stretch 300 Film is a thermoplastic
`film having properties designed specifically for
`use as a stretch wrap film. (See Ex. A.)
`Moreover, Defendants have announced their
`capability to manufacture stretch films of seven
`or more layers. (See Ex. B.) Indeed,
`Defendants have advertised the addition of
`several nine-layer stretch film lines. (See Ex.
`C & Ex. D.) Furthermore, Defendants
`publicized that at least one of their nine-layer
`lines has the following layer configuration: A-
`B-C-B-C-D-C-D-A. (Ex. B.) Thus, the
`Accused Film is a multi-layer, thermoplastic
`stretch wrap film containing seven or more
`separately identifiable polymeric layers.
`
`DE # 78, p. 11. The exhibits to Multilayer’s Initial Infringement Contentions include Sigma
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`stretch film brochures, news articles regarding Sigma’s stretch films, and press releases relating
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`8
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`to Sigma’s stretch film technology. See id. at pp. 48-71. Multilayer’s Initial Infringement
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`Contentions thus go beyond what is required under the Local Patent Rules. Notably, there is no
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`requirement that a patentee cite to exhibits or supporting materials but Multilayer’s contentions
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`do so.
`
`As noted above, there is certain confidential information relating to infringement that was
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`not available to Multilayer at the time its Initial Infringement Contentions were due, which was
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`the same day that parties were permitted to commence fact discovery. At the time, such
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`confidential information was solely within the possession of Sigma. District courts with similar
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`patent disclosure requirements have held, “At the outset of a case, infringement contentions need
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`only be based on information that is publicly available.” Whipstock Servs. v. Schlumberger
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`Oilfield Servs., 2010 U.S. Dist. LEXIS 1395, *7, 2010 WL 143720 (E.D. Tex. Jan. 8, 2010)
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`(citing Orion IP, LLC v. Staples, Inc., 407 F. Supp. 2d 815, 817 (E.D. Tex. 2006)). Likewise,
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`courts have denied similar motions on the basis that the identification in the initial infringement
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`contentions was as specific as possible except where the relevant information needed to identify
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`claim limitations in the Accused Instrumentalities is solely within the possession of the accused
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`infringer, as in this case. See STMicroelectronics, Inc. v. Motorola, Inc., 308 F. Supp. 2d 754,
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`755 (E.D. Tex. 2004); Am. Video Graphics, L.P. v. Elec. Arts, Inc., 359 F. Supp. 2d 558, 560
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`(E.D. Tex. 2005). Moreover, courts have refused to require disclosure of testing sufficient to
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`support the initial infringement contentions. See, e.g., Creagri, Inc. v. Pinnaclife Inc., LLC,
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`2012 U.S. Dist. LEXIS 158540,* 9 (N.D. Cal. Nov. 2, 2012) (rejecting the accused infringer’s
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`assertion that the patentee’s preliminary infringement contentions must provide testing data or
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`other facts).
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`9
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`Upon entry of the Court’s Claim Construction Ruling, Multilayer will prepare and serve
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`its Final Infringement Contentions in accordance with this Court’s Scheduling Order and the
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`Local Patent Rules. Multilayer’s Final Infringement Contentions will include a chart that
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`identifies specifically where each claim limitation, as construed by the Court, is found within
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`each Accused Instrumentality. Multilayer anticipates that its Final Infringement Contentions will
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`be supported by documents it obtained from Sigma during discovery relating to the formulations
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`of each accused film and the processing conditions used to manufacture the accused film.
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`To the extent that Sigma’s motion to compel can be construed to seek service of such
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`final contentions now, the request is premature for at least three reasons. First, this Court has not
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`entered its Claim Construction Ruling. Consequently, it would be inefficient for Multilayer to
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`produce a chart identifying where each claim limitation is present in the accused films, supported
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`by Sigma’s documents relating to the formulations and processing conditions used to make the
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`accused films, when the scope and meaning of the claim limitations has yet to be determined by
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`the Court. Second, such a request would be premature because Multilayer has not received all
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`the documents it has requested from Sigma relating to the manner in which Sigma manufactures
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`the accused films. Indeed, Sigma has recently engaged in a document dump, producing 7765
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`pages of documents (a whopping 84.5% of its total document production to date) within the past
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`12 business days. It is unclear how many additional documents Sigma intends to dump on
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`Multilayer at the eleventh hour in response to requests served in April 2012. Nevertheless, it is
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`premature for Sigma to demand that Multilayer serve fully supported contentions prior to the
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`entry of a Claim Construction Ruling and prior to the completion of fact discovery in this case.
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`Third, Sigma only reconfigured its Tulsa stretch film line last week, on June 12, 2012, to
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`reproduce the stretch film as Sigma manufactured during the period of infringement in
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`10
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`accordance with this Court’s May 23, 2013 Order. DE# 73. As such, it is premature for
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`Multilayer to be compelled to serve final contentions now when it just received the stretch film
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`samples in question.
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`In sum, Multilayer’s Initial Infringement Contentions are in compliance with all
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`requirements set forth in this Court’s Local Patent Rules. Indeed, Multilayer’s contentions
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`include more information than what is required by LPR 3.1 through Multilayer’s citation to
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`publicly available documents that support its contentions. Though Multilayer intends to provide
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`Final Infringement Contentions in accordance with the deadlines contained in the Local Patent
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`Rules once fact discovery is complete in this matter, it is premature for Sigma to demand that
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`Multilayer serve final contentions now.
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`B.
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`Multilayer’s Pre-Filing Investigation is Privileged.
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`The facts, evidence, and analyses compiled in connection with Multilayer’s pre-filing
`
`investigation are privileged. The Federal Rules of Civil Procedure could not be more clear on
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`this issue. Indeed, Rule 26 states that a party ordinarily may not “discover documents and
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`tangible things that are prepared in anticipation of litigation or for trial by or for another party or
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`its representative (including the other party’s attorney, consultant, surety, indemnitor, insurer, or
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`agent).” Fed. R. Civ. P. 26(b)(3)(A). Moreover, as explained above, Multilayer has not waived
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`privilege as to the pre-filing investigation. Multilayer maintained objections based on privilege
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`and instructed its corporate representative not to provide testimony regarding privileged matters
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`during the deposition. Furthermore, Multilayer has made it clear that it has no intention of
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`relying on the privileged pre-filing investigation to prove its allegations of infringement in this
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`case. As such, Sigma may only discover this privileged information if it can provide proof that it
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`is entitled to an exception to the well-established rule that documents and things prepared in
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`anticipation of litigation are not discoverable.
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`11
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`Sigma is not entitled to discover any information relating to the privileged pre-filing
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`investigation because it has failed to make the showing of substantial need coupled with undue
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`hardship. Pursuant to Rule 26(b)(3)(A) of the Federal Rules of Civil Procedure, documents and
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`things prepared in anticipation of litigation may be subject to discovery if:
`
`(i) they are otherwise discoverable under Rule 26(b)(1); and
`
`(ii) the party shows that it has substantial need for the materials to
`prepare its case and cannot, without undue hardship, obtain their
`substantial equivalent by other means.
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`Fed. R. Civ. P. 26(b)(3)(A)(i)-(ii). Even if one assumes that analyses and information relating to
`
`Multilayer’s privileged pre-filing investigation is otherwise discoverable under Rule 26(b)(1),
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`Sigma has shown neither a substantial need for such materials nor undue hardship in obtaining
`
`the substantial equivalent elsewhere. There is no need, and certainly not a “substantial need,” for
`
`such materials because Multilayer does not intend to rely on them to prove infringement in this
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`case. Because Sigma has failed to make the requisite showing that it is entitled to discover
`
`information relating to Multilayer’s privileged pre-filing investigation, its motion should be
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`denied.
`
`C.
`
`The Local Patent Rules Do Not Require Disclosure of Information Relating
`to a Privileged Pre-Filing Investigation
`
`Contrary to Sigma’s contentions, the Local Patent Rules simply do not require the initial
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`infringement contentions to contain any “citation to facts or evidence” that support the
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`infringement allegations. Indeed, Local Patent Rule 3.1 does not even require the patentee to
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`produce evidence of infringement concurrently with such contentions. The Local Patent Rules
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`certainly do not require disclosure of privileged facts and evidence gathered in connection with a
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`pre-filing investigation.
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`Other district courts that have adopted local patent rules similar to those in effect in this
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`Court have denied requests similar to that made by Sigma’s motion to compel. For example, the
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`U.S. District Court for the Eastern District of Texas, which has very similar requirements for
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`preliminary disclosures relating to infringement, has noted that such disclosure requirements are
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`to “provide a defendant with notice of a plaintiff’s infringement theories” and they do not require
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`“a plaintiff to prove its infringement case.” Whipstock Servs., 2010 U.S. Dist. LEXIS 1395, 3-4,
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`2010 WL 143720; see also Realtime Data, LLC v. Packeteer, Inc., 2009 U.S. Dist. LEXIS
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`73217, 27, 2009 WL 2590101 (E.D. Tex. Aug. 18, 2009) (“Infringement contentions are not
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`intended to require a party to set forth a prima facie case of infringement and evidence in support
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`thereof.”). In one case, after the accused infringer complained about the content of the patentee’s
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`preliminary infringement contentions, the patentee responded that its disclosures adequately
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`identified the infringement “except where the relevant information to identify said products is
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`solely within [the accused infringer’s] possession.” STMicroelectronics, 308 F. Supp. 2d at 755.
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`The court denied the accused infringer’s motion, specifically refusing to “pre-try the case at this
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`procedural stage by conducting a highly detailed and rigorous analysis of the preliminary claim
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`infringement contentions.” Id. at 756. Likewise, the U.S. District Court for the Northern District
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`of California has emphasized that its preliminary infringement contentions “are not meant to
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`provide a forum for litigation of the substantive issues; they are merely designed to streamline
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`the discovery process.” Network Caching Tech., LLC v. Novell, Inc., 2003 U.S. Dist. LEXIS
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`9881, *13, 2003 WL 21699799 (N.D. Cal. Mar. 21, 2003) (“Network Caching Tech. II”).2
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`2 Note that Sigma cited an earlier order in that case, which was subsequently superseded by the case cited by
`Multilayer. In Network Caching Tech II, the accused infringer moved for sanctions and dismissal of the case based
`on the patentee’s allegedly inadequate preliminary infringement contentions. The court in Network Caching Tech II
`denied the motions for sanctions and to dismiss and held the at the preliminary infringement contentions were
`sufficient, noting that the court’s local patent rules do not require the patentee “to produce evidence of infringement
`or to set forth ironclad and irrefutable claim constructions.” Networking Caching Tech II, 2003 U.S. Dist. LEXIS
`9881, at *12.
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`Case 2:12-cv-02112-JPM-tmp Document 79 Filed 06/17/13 Page 14 of 18 PageID 3213Case 2:12-cv-02825-JPM-tmp Document 62-3 Filed 08/19/13 Page 14 of 18 PageID 759
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`Similar to the local patent rules of the Eastern District of Texas and the Northern District
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`of California, this Court’s local patent rules governing initial infringement contentions do not
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`require the disclosure of specific evidence nor do they require a plaintiff to prove its
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`infringement case. The Local Patent Rules also do not require Multilayer to disclose privileged
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`information from its pre-filing investigation, as Sigma incorrectly contends. Sigma’s demand
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`that Multilayer be compelled to produce such privileged information, evidence, and analyses in
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`connection with supplemental contentions thus is devoid of support.
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`D.
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`A Stay of Discovery is Not Warranted.
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`Likewise, there is absolutely no support for Sigma’s request to stay discovery. The Local
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`Patent Rules simply do not include any provision that contemplates a stay of discovery until
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`initial infringement contentions are provided and subjectively deemed “acceptable” to the
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`accused infringer. On the contrary, discovery is specifically contemplated to occur concurrently
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`with these disclosures. Moreover, the Local Rules explicitly require the accused infringer to
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`serve both “[d]ocuments sufficient to support the statement(s) made in the chart” that is
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`responsive to that contained in the initial infringement contentions and “[d]ocuments sufficient to
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`describe the structure, composition, and/or operation of the Accused Instrumentality” along with
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`the accused infringer’s initial non-infringement contentions. LPR 3.4(a) & (c). Therefore, the
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`Local Patent Rules specifically reject the notion of a stay of discovery in favor of a requirement
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`for a thorough and early disclosure of facts relating to infringement.
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`This Court denied a similar motion to stay discovery in connection with Multilayer’s
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`dispute with Berry Plastics Corporation (“Berry”). See Multilayer Stretch Cling Film Holdings,
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`Inc. v. Berry Plastics Corporation, 2:12-cv-02108-WGY-cgc, DE # 53 (W.D. Tenn. Sept. 28,
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`2012). In that case, Berry sought a stay of discovery pending resolution of its motion for
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`summary judgment based on Berry’s allegation that Multilayer lacked evidence sufficient to
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`prove infringement, which was denied as moot when the Court denied Berry’s summary
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`judgment motion. Id. When Berry refused to produce documents or otherwise respond to
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`discovery, Multilayer was forced to file a motion to compel. Id. at DE # 63. Berry responded
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`and filed its own cross-motion for entry of protective order. Id. at DE # 66. This Court granted
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`in part Multilayer’s motion to compel, denied Berry’s motion for protective order, and Berry was
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`ordered to produce documents responsive to Multilayer’s discovery requests within thirty (30)
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`days. Id. at DE # 83 and 86.
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`Sigma’s request for a stay appears to be nothing more than a delay tactic, designed to
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`postpone completion of fact discovery in this case. Sigma has already p