United States District Court, D. Kansas
MEMORANDUM AND ORDER
K. GARY SEBELIUS, Magistrate Judge.
This matter comes before the court upon Plaintiff Ardent Mills' Motion to Compel Discovery (ECF No. 184). Ardent Mills seeks an order compelling Defendant Archer-Daniels-Midland Company (ADM) to fully respond to its discovery requests seeking certain samples and permission to enter ADM's Enid, Oklahoma and Buffalo, New York plants so that Ardent Mills may inspect, observe, and photograph the collection of samples. ADM opposes the motion on the grounds that the discovery is not relevant to this case and is unduly burdensome. Specifically, ADM contends that Ardent Mills has maintained throughout this litigation that ADM's whole wheat flour end product infringed on the patents-in-suit, not that ADM's product stream infringes on the patents-in-suit. ADM contends the latter theory is not a theory in this case, and because of this, discovery aimed at that theory is not relevant. Alternatively, ADM contends Ardent Mills should be judicially estopped from pursuing this theory given Ardent Mills' prior statements to the court. Finally, ADM contends that allowing an inspection of its facilities would be unduly burdensome and costly.
As explained in greater detail below, Ardent Mills' Third Amended Complaint is drafted broadly enough to encompass infringement by intermediate products created in ADM's product stream, and therefore, discovery on this matter is relevant to the claims or defenses currently in this case. Ardent Mills has never filed an amended pleading that would make clear it was abandoning this theory, and the district judge has never ruled that Ardent Mills was barred from pursing this theory. While the court recognizes that Ardent Mills has made statements to the district judge indicating that it was only pursuing a theory of infringement by end products, in ruling on a motion to compel, it is not the magistrate judge's role to decide whether a party should be judicially estopped from pursuing a theory encompassed by the plain language of the pleadings. That said, the court finds ADM has adequately supported its objection that allowing inspection of its facilities would be unduly burdensome and costly. For these reasons, Ardent Mills' motion to compel is granted in part and denied in part. The court also grants ADM's motion for leave to file a surreply because Ardent Mills' reply brief raised new issues.
I. Relevant Background
Ardent Mills is the owner by assignment of rights, title, and interest to United States
Patent Nos. 8, 017, 172; 8, 252, 360; and 8, 404, 298 (the patents-in-suit). These patents generally claim a whole wheat flour product with characteristics of white flour. In its Third Amended Complaint, Ardent Mills alleges that "ADM's white whole wheat products, including but not limited to Kansas Diamond White Whole Wheat Flour, embody, use, and incorporate the inventions claimed in the 172, 360, and 298 patents...." Ardent Mills further alleges that ADM has been and currently is infringing on the patents-in-suit by "making, using, selling, and/or offering for sale, white whole wheat products, including Kansas Diamond White Whole Wheat Flour...."
In its opening interrogatories, ADM requested Ardent Mills to identify the products it alleged infringed on its patents. Ardent Mills failed to include intermediate products in its initial response or in two subsequent supplementations. However, on July 7, 2014, Ardent Mills served its third supplemental responses, which list intermediate products as accused products in this litigation. Prior to its supplementation, ADM contends Ardent Mills made statements to the court indicating that this litigation involved only end products. For example, Ardent Mills' opening claim construction brief states,
[The inventors] sought to develop a white flour with nutrition of a wheat flour. After years of experimentation and research, these efforts successfully resulted in a series of patents issued by the USPTO. Some of the issued patents disclose a process for making flour, others disclose a flour product. For purposes of clarity, the asserted patents in this litigation deal with the end flour product. Any processing aspects are wholly irrelevant to the asserted patents in this litigation.
Similarly, during the claim construction hearing before the district judge, Ardent Mills' counsel stated,
This case is purely about the end product. You should be able to determine infringement by looking at a product. If you import processing steps into this claim, one in the field, a competitor, could not determine infringement by looking at a product. They would have to go investigate the process too. That's why you can never mix these two together. It's a matter of proof. It's also a matter of public notice. The product claim, you should be able to look at the product, examine the product, and determine if there's infringement, which is what we proposed here. On July 7, 2014, the same day Ardent Mills served its Third Supplemental Interrogatory
Responses, Ardent Mills also served its Fourth Request for Production of Documents and Things. Request No. 54 seeks various five-pound samples of certain product streams located at different ADM plant locations. Request No. 55 seeks a ten-pound sample of clean dried wheat kernels used to produce each sample requested in Request No. 54. And Request No. 56 asks ADM to permit Ardent Mills to enter the Enid, Oklahoma and Buffalo, New York plants so that Ardent Mills "may inspect, observe, and photograph the collection of the samples requested in Request Nos. 54 and 55."
A. Relevance Objection
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 ...