United States District Court, D. Kansas
CONAGRA FOODS FOOD INGREDIENTS COMPANY, INCORPORATED, Plaintiff and Counter-defendant,
ARCHER DANIELS MIDLAND COMPANY, Defendant and Counterclaimant.
MEMORANDUM AND ORDER
K. GARY SEBELIUS, Magistrate Judge.
This matter comes before the court upon Defendant Archer-Daniels-Midland Company's Motion to Compel Discovery (ECF No. 107). Archer-Daniels-Midland Company (ADM) seeks a court order compelling Plaintiff ConAgra Foods Food Ingredients Company, Incorporated to produce information and documents that ADM contends is relevant to its inequitable conduct counterclaim and its defenses against ConAgra's patent infringement claims. Specifically, patent applications must be filed within one year of any publication, public use or sale of the claimed invention. ADM argues that any publication, public disclosure or sale of the claimed flour before December 17, 2002, would invalidate ConAgra's patent infringement claims against ADM. ADM seeks a court order compelling ConAgra to respond to discovery requests aimed at gathering documents and information about these types of flours. ConAgra lodges various objections to these discovery requests but also generally states that it may have destroyed many responsive documents before litigation was contemplated pursuant to ConAgra's document retention policies.
ConAgra has alleged that ADM's Kansas Diamond flour infringes the claims of the patents-in-suit, which claim a whole wheat flour wherein at least about 98 percent of the particles are smaller than or equal to 212 microns and has an ash value of about 97 percent of the wheat kernel's ash value. ADM contends it has not infringed upon the patents-in-suit because significantly less than 98 percent of Kansas Diamond flour's particles are less than 212 microns, and ADM contends the patents-in-suit are invalid because ConAgra was making and publically disclosing a flour that fell within the scope of the claims of the patents-in-suit well before it had filed for patent protection. The present dispute involves discovery requests aimed at gathering information and documents about the ConAgra flours similar to that of the patents-in-suit that were publically disclosed or sold before December 17, 2002, a year before the alleged filing date of the patents-in-suit's claimed parent application.
When resolving a motion to compel, the court is guided by the following principles. Fed.R.Civ.P. 26(b)(1) defines the scope of discovery as "any nonprivileged matter that is relevant to any party's claim or defense-including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter." For good cause, the court may also order discovery of any matter relevant to the subject matter involved in the action. Relevance is broadly construed at the discovery stage and a "request for discovery should be considered relevant if there is any possibility' that the information sought may be relevant to the claim or defense of any party."
There is no presumption in the Federal Rules of Civil Procedure that a discovery request seeks relevant information. Relevance, however, is often apparent on the face of the request. However, when relevancy is not apparent on the face of the request, the proponent of the discovery request must, at the outset, show the relevance of the requested information. When a discovery request seeks facially relevant information or when the proponent of the discovery has demonstrated relevance, objecting party bears the burden to show how the discovery request is objectionable.
A. Interrogatory No. 21
This interrogatory asks ConAgra to,
Identify each whole wheat flour that ConAgra has sold since 1998, including any identifying name under which the flour was sold, any name the flour was known as internally at ConAgra, the dates and location of the flour's production, the particle size distribution of the flour, and the ash value of the flour.
Subject to certain objections, ConAgra initially responded to this interrogatory by listing certain flours by name. ConAgra later supplemented this response to include the start date of production and the locations for the production of each whole wheat flowers produced by ConAgra. The supplemental response also includes an identification of documents responsive to the particle size distribution and ash value for the flours going back until 2005.
Subject to the supplemental response, the objections ConAgra continues to rely upon in response to the motion to compel include: that the interrogatory is overly broad and unduly burdensome to the extent it is unlimited in scope and to the extent it seeks each and every whole wheat flour sold by ConAgra since 1998. ConAgra also objects to the extent ADM seeks to require ConAgra to provide information beyond what is reasonably available to ConAgra after a reasonable search of ConAgra's files and reasonable inquiry of ConAgra's present employees. ConAgra does not separately discuss these objections. Although overbreadth and undue burden objections may be related in some instances, the showing necessary to support one objection is not necessarily the same showing required to support another.
Certain overbreadth objections are often intertwined with relevance, in that the discovery request encompasses some information that is relevant to the claims or defenses in the case but is drafted so broadly as to include collateral information. A party asserting an undue burden objection, however, must typically set forth facts justifying the objection "by demonstrating that the time or expense involved in responding to requested discovery is unduly burdensome." This means the objecting party must show "not only undue burden or expense but that the burden or expense is unreasonable in light of the benefits to be secured from discovery." This imposes an obligation "to provide sufficient detail in terms of time, money and procedure required to produce the requested documents." Typically, this showing is made through an "affidavit or other evidentiary proof of the time or expense involved."
In response to the motion to compel, ConAgra argues that the request is objectionable "to the extent it is unlimited in scope and to the extent it seeks each' and every whole wheat flour sold by ConAgra since 1998." ConAgra goes on to state that ADM has not limited this interrogatory to time periods that qualify as prior art. The court agrees. ADM explains it requires this information to determine whether ConAgra was making and publically disclosing a flour that fell within the scope of the claims of the patents-in-suit well before ConAgra had filed for patent protection. According to ADM's motion, the earliest priority date ConAgra can establish is December 17, 2003, and therefore, any publication, public disclosure, or sale of the claimed flour prior to December 17, 2002, would invalidate ConAgra's claims. But the interrogatory seeks information about flours ...