Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`HONEYWELL INTERNATIONAL INC.,
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`Plaintiff,
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`v.
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`RESEARCH PRODUCTS
`CORPORATION,
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`Defendant.
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`Case No. 3:17-cv-00723-wmc
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`PLAINTIFF HONEYWELL INTERNATIONAL INC.’S MOTION TO COMPEL
`DISCOVERY FROM DEFENDANT RESEARCH PRODUCTS CORPORATION
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`Plaintiff Honeywell International Inc. (“Honeywell”) hereby moves the Court under Fed.
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`R. Civ. P. 37 for an order compelling relevant and important discovery from Defendant Research
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`Products Corporation (“RPC”). Beginning in the mid-2000s, Honeywell invested significant
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`resources redesigning its HVAC zoning products, including its zone control panels, zone dampers,
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`and bypass dampers. Am. Compl. ¶¶ 14-15. RPC responded by redesigning its products to
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`emulate the features pioneered and patented by Honeywell, launching its redesigns around 2016.
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`Id. ¶ 16. Much of the discovery sought herein pertains to RPC’s copying of Honeywell’s patents.
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`Honeywell has diligently made numerous good faith attempts to resolve these disputes, but
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`RPC has repeatedly refused the discovery or stalled these attempts by ignoring Honeywell’s
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`written correspondence, withholding any rationale for why RPC refuses to provide the discovery,
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`delaying and postponing meet and confers, asking Honeywell repeatedly to explain the discovery
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`requests, and claiming to be busy on other matters. This continued delay prejudices Honeywell,
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`especially in view of imminent expert report deadlines and depositions. Honeywell therefore has
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`no choice but to seek the Court’s relief.
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`Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 2 of 8
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`BACKGROUND
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`I.
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`Honeywell has diligently attempted, for months, to resolve discovery disputes raised in this
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`motion. In June, Honeywell wrote to RPC on multiple occasions, detailing various relevant and
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`pertinent discovery it needed from RPC, including that sought herein. Ex. 1, 6-4-18 Lauer Letter;
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`Ex. 2, 6-12-18 Fjellstedt Letter; Ex. 3, 6-26-18 Lauer Email. After RPC delayed its response for
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`nearly a month, RPC agreed to meet and confer on July 2 (although it could have simply responded
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`to Honeywell’s requests). RPC did not come prepared to the meet and confer, however, and
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`instead punted on nearly every subject, claiming that it would investigate the issues (despite plenty
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`of notice and time to prepare). Ex. 4, 7-3-2018 Lauer Letter. RPC’s follow-up did not resolve any
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`of the issues. See, e.g., Ex. 5, 7-12-18 Lauer Email.
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`Honeywell nevertheless made a final attempt to resolve the accumulated issues, Ex. 6, 7-
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`23-18 Lauer Email, but RPC claimed it could not confer because it was “a very busy week,” and
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`therefore delayed the discussion yet another week. Ex. 7, 7-26-18 Nickels Email. Honeywell was
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`forced to accommodate, but in so doing notified RPC that:
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`“If we must wait another week to discuss [these issues] (again), we
`will do so, but only on the condition that RPC will be able to
`affirmatively represent during our meet and confer whether it will
`provide the requested information or not. We don’t want to wait
`longer for a conversation, just to have RPC punt yet again.”
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`Ex. 7, 7-26-18 Lauer Email. A week later, just eleven minutes before the scheduled meet and
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`confer, RPC cancelled the call, stating that “something has come up last minute” and telling
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`Honeywell it could not reschedule for yet another week, while asking Honeywell to explain, all
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`over again, the numerous discovery issues. Ex. 8, 7-30-18 Nickels Email.
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`II.
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`LEGAL STANDARD
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` A party may seek an order to compel discovery if an opposing party fails to respond to
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`discovery requests or has provided incomplete responses. Fed. R. Civ. P. 37(a)(1)-(4). “Parties
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`2
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`Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 3 of 8
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`may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or
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`defense and proportional to the needs of the case . . . .” Fed. R. Civ. P. 26(b)(1). “When deciding
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`whether to grant a motion to compel discovery, the court must consider whether the requested
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`discovery is relevant, ‘proportional to the needs of the case,’ and nonprivileged.” Boehm v. Scheels
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`All Sports, Inc., No. 15-cv-379-JDP, 2016 WL 6811559, at *2 (W.D. Wis. Nov. 17, 2016).
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`III. ARGUMENT
`A.
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`RPC Should Be Ordered to Produce Relevant Documents and Things
`Responsive to Honeywell’s Discovery Requests
`1.
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`Documents and Things Related to Development and Marketing of the
`Accused Products
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`a.
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`RPC’s Prototypes for Accused Products
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`RPC refuses to produce any prototypes of its accused products, despite their relevance to
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`Honeywell’s claims of infringement (including inducement and willful infringement) as well as
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`objective indicia of nonobviousness related to RPC’s copying of Honeywell’s patents. Honeywell
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`propounded requests seeking prototypes as early as December 15, 2017. See e.g., Ex. 9 at 10,
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`Honeywell’s First Set of Requests for Production, No. 15 (requesting “prototypes”). RPC never
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`produced any prototypes, but one of its witnesses, Mr. Rimrodt, testified at his deposition in June
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`. Ex. 10, 6-27-18 M. Rimrodt Dep. Tr. at 107:6-10. Honeywell followed
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`up after the deposition, Ex. 11, 7-5-18 Lauer Letter, and RPC confirmed that
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`, Ex. 5, 7-12-18 Lauer
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` nor said it would. RPC should be ordered to
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`Email. RPC has neither
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`produce to Honeywell
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`b.
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`Installation Videos for Accused Products
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`Honeywell also learned during Mr. Rimrodt’s deposition that
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`3
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`. Ex. 12, 6-28-18 M. Rimrodt Dep. Tr.
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`Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 4 of 8
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`at 414:6-10. RPC never produced these videos to Honeywell, however, and they do not appear to
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`be publicly available. These videos are responsive to at least Honeywell’s RFP No. 14 (requesting
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`“all documents and things related to the installation . . . of any Accused Product”) and relevant to
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`at least Honeywell’s claim that RPC has actively induced others to infringe the claims of the
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`asserted patents. Ex. 9 at 10, Honeywell’s First Set of Requests for Production. Accordingly, RPC
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`should be ordered to produce these videos.
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`c.
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`Information from RPC’s Customer Communication Database
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`RPC uses an internal database called
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` that records interactions with RPC’s
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`customers, and it contains highly relevant feedback from customers. For example, RPC’s
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`customers
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`RPC-0645506 at 892, and frequently stated that
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` Ex. 13,
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` id. at 991.
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`The excerpts from
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` produced by RPC do not, unfortunately, have contextual information
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`such as the name of the person who submitted a particular note or comment. This blunts
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`Honeywell’s ability to use the material or seek further discovery related to it. But RPC’s Product
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`Manager for zoning products, Mr. Rimrodt, admitted that
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`. Ex. 12, 6-28-18 M. Rimrodt Dep. Tr. at 458:15-20; Ex. 11, 7-5-18 Lauer
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`Letter. Such contextual and identifying information is responsive to at least Honeywell’s RFP No.
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`19 (requesting “communications with Defendant’s customers”) and is relevant to at least induced
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`infringement, damages, and RPC’s copying of Honeywell’s products and other objective indicia.
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`Ex. 9 at 11, Honeywell’s First Set of Requests for Production. This information is also relevant to
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`Honeywell’s claim that RPC has infringed the asserted design patents because an ordinary observer
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`would be confused by the similarities between Honeywell’s patented design and the design of
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`RPC’s zone panels. RPC should be ordered to identify and produce this and any other pertinent
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`information from the
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` database.
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`Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 5 of 8
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`2.
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`Documents and Things Related to Honeywell’s Damages Claims
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`a.
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`RPC’s Inventory of Accused Zone Panels
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`RPC launched modifications of the accused products this spring in a purported attempt to
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`design around the asserted patents. It was revealed for the first time during the deposition of RPC’s
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`corporate witness John Bloemer that
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`. Ex. 14, 6-20-18 J. Bloemer Dep. Tr. at 141:6-19. That
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`means RPC’s modified zone boards infringe upon importation just the same as unmodified zone
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`boards infringe when sold to customers. 35 U.S.C. § 271(a). Since this revelation, Honeywell has
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`sought information about RPC’s domestic inventory of zone boards that have been imported and
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`are being modified, but RPC has so far refused. See Ex. 4, 7-3-18 Lauer Letter (citing Wisconsin
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`Alumni Research Found. v. Apple, Inc., 135 F. Supp. 3d 865, 868-69 (W.D. Wis. 2015)); see also
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`Ex. 15, D.I. 642, Special Verdict Form, Wisconsin Alumni Research Found. v. Apple, Inc., Case
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`No. 14-cv-062-wmc (W.D. Wis.). This information is responsive to Honeywell’s RFP No. 13
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`requesting “[d]ocuments and things sufficient to identify all of the Accused Products that were
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`made, used, sold, or offered for sale within the United States or imported into the United States.”
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`Ex. 9 at 10, Honeywell’s First Set of Requests for Production. RPC’s inventory information is
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`relevant to Honeywell’s calculation of the amount of damages it has suffered due to RPC’s
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`infringement. RPC should be ordered to produce it.
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`b.
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`RPC’s
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`RPC witnesses have revealed that
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` While RPC agreed that it would search for and produce documents relating to
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`, Ex. 4, 7-3-18 Lauer Letter, that was over a month ago. RPC has yet to
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`produce these documents and should be ordered to produce them. This information is responsive
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`Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 6 of 8
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`to at least
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`, Honeywell’s First Set of Requests for Production, and it
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`is relevant to at least Honeywell’s claim for reasonable royalty damages and the Georgia-Pacific
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`factor that considers the “extent to which the infringer has made use of the invention and the value
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`of such use,” Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1119-20
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`(S.D.N.Y. 1970).
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`B.
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`RPC Must Supplement Its Responses to Honeywell’s Contention
`Interrogatories
`1.
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`Honeywell’s Interrogatory Nos. 4 and 5 regarding RPC’s Non-
`Infringement and Invalidity Contentions
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`Honeywell identified numerous deficiencies and ambiguities in RPC’s responses to
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`Honeywell’s interrogatories regarding non-infringement and invalidity. RPC eventually
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`responded with some clarifications and more information, for example, agreeing to withdraw a
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`(baseless) non-infringement argument related to the ‘180 patent, Ex. 4, 7-3-18 Lauer Letter, and
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`also clarifying the bases for several of its indefiniteness and written description arguments under
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`35 U.S.C. § 112, id.; Ex. 16, 7-2-2018 Tsao Email. RPC’s informal assurances are a step in the
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`right direction, but RPC has so far refused to properly supplement its responses to Honeywell’s
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`interrogatories to reflect RPCs new positions, which prejudices Honeywell since the deadline for
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`expert reports approaches and Honeywell prepares to respond to RPC’s on-the-record positions.
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`RPC should be compelled to supplement its responses to Honeywell’s contention interrogatories.
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`Fed. R. Civ. P. 26(e); Mombourquette v. Wisconsin Ctys. Mut. Ins. Corp., No. 05-C-748-C, 2006
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`WL 3025708, at *2 (W.D. Wis. Aug. 14, 2006) (Parties “have an ongoing obligation timely to
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`supplement their responses to the contention interrogatories.”)
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`2.
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`Honeywell’s Interrogatory No. 13 Regarding RPC’s Damages
`Contentions
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`In response to Honeywell’s Interrogatory No. 13 seeking RPC’s damages contentions, RPC
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`Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 7 of 8
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`stated that Honeywell “has not suffered any damages”; that its modified zoning products are non-
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`infringing alternatives; and that RPC would “make its expert damages disclosure pursuant to the
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`court-ordered deadline.” Ex. 17, RPC’s Fourth Amended Responses to Honeywell’s First Set of
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`Interrogatories. RPC’s response reveals nothing about any damages theory or relevant underlying
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`facts regarding damages. If RPC did not intend to advance its own damages theory, that response
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`would be fine. But RPC does intend to advance its own damages theory. It just does not intend
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`to provide any information about that theory or underlying facts until it serves its expert damages
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`report. The parties met and conferred multiple times regarding RPC’s response and its failure to
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`state the factual and legal bases, Ex. 18, 4-6-18 Lauer Letter; Ex. 19, 5-15-18 Lauer Letter, but
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`RPC has refused to supplement its response, Ex. 20, 4-12-18 Tsao Email (“RPC has fully answered
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`Honeywell Interrogatory No. 13.”). RPC should be compelled to supplement its response to
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`Honeywell’s Interrogatory No. 13 to provide the factual and legal bases underlying any damages
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`contentions. See Ocean Atl. Woodland Corp. v. DRH Cambridge Homes, Inc., 262 F. Supp. 2d
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`923, 934 (N.D. Ill. 2003) (granting plaintiff copyright owner’s motion to compel interrogatories
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`seeking “why [defendant] believes [plaintiff] is not entitled to any damages”).
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`C.
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`RPC Should Be Ordered to Supplement Its Privilege Log
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`On May 30, RPC produced several redacted documents, but RPC has not yet served a
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`privilege log regarding its claims of privilege for the redacted material, despite Honeywell’s
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`request and RPC’s obligation to do so. Ex. 1, 6-4-18 Lauer Letter; Ex. 4, 7-3-18 Lauer Letter;
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`Fed. R. Civ. P. 26(b)(5). RPC should be compelled to serve a supplemental privilege log regarding
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`the redacted material in its May 30 production.
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`IV. CONCLUSION
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`For the aforementioned reasons, the Court should grant Honeywell’s motion to compel.
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`7
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`Case: 3:17-cv-00723-wmc Document #: 78 Filed: 08/07/18 Page 8 of 8
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`Respectfully submitted this 3rd day of August, 2018.
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`/s/ Anders Fjellstedt
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`HUSCH BLACKWELL LLP
`Attorneys for Plaintiff Honeywell
`International Inc.
`Thomas P. Heneghan
`State Bar No. 1024057
`33 East Main Street, Suite 300
`Madison, WI 53701
`(608) 234-6032
`tom.heneghan@huschblackwell.com
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`Of Counsel:
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`Gregg F. LoCascio, P.C.
`Sean M. McEldowney
`Anders P. Fjellstedt
`Abigail E. Lauer
`Brian H. Gold
`KIRKLAND & ELLIS LLP
`655 Fifteenth St., N.W.
`Washington, DC 20005
`(202) 879-5000
`gregg.locascio@kirkland.com
`sean.mceldowney@kirkland.com
`anders.fjellstedt@kirkland.com
`abigail.lauer@kirkland.com
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