United States District Court, D. Kansas
JAMES P. O'HARA, Magistrate Judge.
These consolidated cases involve claims by Sprint Communications Company, L.P. that defendants are infringing twelve patents related to broadband and packet-based telephony products. Defendants filed a motion to compel Sprint to produce documents responsive to defendants' first set of common document requests (ECF doc. 153). On February 11, 2014, the undersigned U.S. Magistrate Judge, James P. O'Hara, issued an order which held, in part, that Sprint waived its objections to certain document requests by conditionally answering the requests, i.e., by objecting to the requests but then answering "subject to and without waiving" its objections. Sprint has filed a motion for reconsideration of that portion of the order (ECF doc. 192). The court remains unpersuaded that conditional discovery responses are ever appropriate. But the court will grant Sprint's motion for reconsideration in the unusual circumstances presented here. Having reviewed the substantive merits of Sprint's objections, the court finds them proper and denies defendants' motion to compel.
I. Relevant Background
As discussed in the February 11, 2014 order (to which the reader is referred for the full background of this dispute), defendants' first set of common document requests to Sprint included requests seeking documents relating to the subject matter of Sprint's disclosures during a separate patent-infringement lawsuit brought by Sprint against Vonage Holdings Corp. and Vonage America, Inc. (collectively, "Vonage"). In Sprint Communications Company LP v. Vonage Holdings Corp.,  Sprint claimed that Vonage had infringed patents from two related families of patents issued to named inventor Joseph Christie (the "Christie Patents"). During the 2007 trial in Vonage, Sprint called two in-house attorneys, Michael Setter and Harley Ball, to testify about Mr. Christie's inventions, Sprint's evaluation of their patentability, Sprint's patent applications, and Sprint's decision to sue Vonage for infringement. Sprint's trial counsel, B. Trent Webb, also discussed these topics in his opening statement and closing argument.
In these consolidated cases, seven Christie Patents are at issue, including five that were at issue in Vonage. A number of defendants' document requests sought documents relating to the subject matter of Sprint's disclosures during the Vonage trial. Defendants accurately characterize these requests as seeking information related to the following four topics: "(1) assessments by Sprint's legal department of the patentability of Mr. Christie's purported inventions; (2) the preparation or prosecution of patent applications for such inventions (including instructions and other communications of Sprint's legal department relating thereto); (3) communications and analysis of Sprint's legal department concerning its pre-suit investigation into whether Vonage infringed the patents concerning Mr. Christie's purported inventions; and (4) communications among Sprint's legal department and its executives regarding authorization to contact Vonage about alleged infringement of such patents and to sue Vonage for such alleged infringement."
In Sprint's responses to the document requests, Sprint asserted objections on several grounds, including that the information sought was "protected from discovery by the attorney-client privilege, work product doctrine, and/or any other applicable privilege or immunity." But in response to requests numbered 18-20, which sought information on topics one and two, Sprint went on to state that it would produce non-privileged and responsive documents "subject to and without waiving" its objections. Defendants filed a motion to compel Sprint to produce documents responsive to their document requests, asserting that Sprint's presentation in the Vonage trial waived any attorney-client or work-product protection to which the documents were otherwise entitled.
To the extent defendants' motion asked the court to compel Sprint to produce documents related to topics three and four, the court evaluated Sprint's objections on their merits and sustained them. However, to the extent the motion asked the court to compel Sprint to produce documents related to topics one and two, the court concluded that Sprint's conditional responses to requests numbered 18-20 were improper and had the effect of waiving any objection Sprint had to producing documents. Thus, without reaching the substantive merits of Sprint's objections to these requests, the court ordered Sprint to "produce information related to (1) assessments by Sprint's legal department of the patentability of the Christie Inventions, and (2) the preparation or prosecution of patent applications for such inventions."
Sprint's motion asks the court to reconsider the portion of the February 11, 2014 order which held that Sprint waived its objections to document requests numbered 18-20 by conditionally answering the requests. Defendants state in their response that they agree with Sprint that the holding, as applied, is "problematic." Defendants submit that the finding of waiver based on Sprint's conditional responses "should be withdrawn and the issue of waiver as to these two subject areas reconsidered in view of the arguments presented by Defendants in support of the underlying motion to compel."
II. Reconsideration of the Waiver Holding
D. Kan. Rule 7.3(b) allows a party to seek reconsideration of a non-dispositive order "based on: (1) an intervening change in controlling law, (2) the availability of new evidence, or (3) the need to correct clear error or prevent manifest injustice." The decision whether to grant or deny a motion for reconsideration is committed to the court's discretion.
In its February 11, 2014 order, the court explained why the practice of responding to discovery requests by asserting objections and then answering "subject to" or "without waiving" the objections is confusing, unproductive, and in violation of federal discovery rules. The undersigned magistrate judge has reviewed the analysis and sources leading him to reach that conclusion, and remains convinced it's correct.
Further, the court also has come to believe that conditional responses violate Fed.R.Civ.P. 26(g). Rule 26(g)(1) requires attorneys and pro se parties to certify that discovery responses are consistent with the Federal Rules of Civil Procedure, "not imposed for any improper purpose, " and "neither unreasonable nor unduly burdensome." The 1983 advisory committee comments to Rule 26(g) elaborate that the rule "imposes an affirmative duty to engage in pretrial discovery in a responsible manner that is consistent with the spirit and purposes of Rules 26 through 37." Rule 26(g)(3) requires courts to impose sanctions when the rule is violated without substantial justification.
Nevertheless, the unusual set of facts presented here warrant relief. That is, Sprint has persuaded the undersigned, that if he had known all the facts underlying Sprint's discovery responses-the undersigned acknowledges that he reached his ruling without asking the parties to brief this issue-he would have found that no party in this case was confused or put out by Sprint's responses.
Each of Sprint's responses to requests numbered 18-20 contained a number of boilerplate objections (e.g., vague, overbroad, unduly burdensome, privileged) but concluded with the statement, "[s]ubject to and without waiver of the foregoing objections... Sprint will produce non-privileged responsive documents within its custody and control." This statement, without context, leads the reader wondering whether Sprint planned to withhold certain documents based on its objections. Significantly, Sprint did not state that it would produce all non-privileged documents-a specification which, if included, might support Sprint's argument that it complied with Fed.R.Civ.P. ...