In Buergofol GmbH v. Omega Liner Company, Inc., 4-22-cv-04112 (DSD Jul. 13, 2023) (Karen E. Schreier), the court granted the defendant’s motion to compel and awarded monetary sanctions after the plaintiff failed to respond at all to discovery requests that the plaintiff had objected to as overbroad because the court ruled the plaintiff “still had an obligation to respond to the extent it did not object.”

In the case, Plaintiff Buergofol GmbH alleged that defendant Omega Liner Company, Inc. infringed two of its patents. Omega moved to compel Buergofol to respond to discovery related to prior art and for attorneys’ fees. Omega had asked Buergofol to identify every item of prior art and to produce all documents and things that could qualify as prior art to either of the two patents in suit. Buergofol did not respond to the discovery requests at all, instead objecting that the requests were “absurdly overbroad,” “unduly burdensome,” and thus not “warrant[ing] a response.”

Omega then attempted to meet and confer with Buergofol but to no avail. Indeed, the court noted that Buergofol’s insistence that it was under no obligation to respond to Omega’s requests using even a revised definition of prior art that Omega had provided demonstrates that Buergofol was not conferring in good faith.

In considering a motion to compel, the requesting party must make a threshold showing that the requested information falls within the scope of discovery under Rule 26(b)(1). Once this threshold showing has been made, the burden then shifts to the party resisting discovery “to show specific facts demonstrating that the discovery is irrelevant or disproportional.” However, as many courts have held, “the fact that answering [discovery requests] will be burdensome and expensive is not in itself a reason for a court’s refusing to order discovery which is otherwise appropriate.”

In moving to compel, Omega argued that the requested prior art is relevant because it relates to Omega’s potential defenses that the patents-in-suit are invalid or unenforceable. Although Buergofol argues that the scope of the requested prior art is overly broad and unduly burdensome, it does not dispute that prior art is relevant. The court agreed that the identification and production of prior art is relevant.

Instead, Buergofol argued that Omega’s discovery requests are overly broad because the definition of prior art encompasses “all subject matter that existed before the U.S. filing date in the form of one of the categories of disclosures enumerated in 35 U.S.C. § 102.” However, the Court reasoned that although § 102 includes several broad categories of items that could deprive an invention of the novelty required to be patentable, federal courts have consistently held that “[t]o anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” Because this limitation was implicitly incorporated into Omega’s definition of prior art, the broad categories in § 102 do not render the discovery requests overbroad.

Buergofol also argued that Omega’s discovery requests are overbroad because Omega’s definition of prior art also includes analogous prior art, and determining whether something qualifies as analogous prior art “often involves ambiguities and factual assumptions flowing from a legal test that is easier to state than it is to apply.” Thus, according to Buergofol, Omega’s discovery requests, which require Buergofol to make judgment calls about analogous prior art, “would lack specificity and particularity as required by Rule 26 . . . .” Again, the Court rejected this argument, reasoning that because Buergofol’s counsel has twenty years of patent experience and because Buergofol is the original patent applicant, Buergofol’s counsel should be able to make such judgment calls. Thus, the court concluded that Buergofol has not shown that responding to the discovery requests would be overbroad or unduly burdensome and granted Omega’s motion to compel.

Next, the court considered Omega’s motion for an award of attorneys’ fees and expenses under Federal Rule of Civil Procedure 37(a)(5)(A). Under this Rule, “the court must—after giving an opportunity to be heard, require the party . . . whose conduct necessitated the motion . . . to pay the movant’s reasonable expenses incurred in making the motion, including attorney’s fees[,]” subject to certain exceptions. Relevant here is the exception that prohibits the court from awarding such fees and expenses if “the opposing party’s nondisclosure, response, or objection was substantially justified[.]” The party resisting sanctions bears the burden of showing that its position was substantially justified.

In arguing that it was substantially justified in not responding to Omega’s discovery requests, Buergofol restated that the requests were overbroad and that even if it had considered Omega’s clarified requests, those clarifications would not have made the requests any less broad. The court again rejected these arguments, reasoning even if Buergofol’s interpretation of the breadth of the requests was reasonable, Buergofol still had an obligation to respond to the extent it did not object.

In other words, Buergofol had a duty to respond with known prior art that it deemed to be within the scope allowed by Rule 26. But instead, Buergofol maintained throughout the dispute that it had no obligation to respond at all unless Omega served it with a new discovery request. The court found that the position was not substantially justified and granted Omega’s motion for attorneys’ fees and expenses.

This case is a reminder that the scope of discovery is broad and that one may still have an obligation to respond to discovery requests to the extent possible, even if such requests are overbroad or otherwise objectionable in some manner.