This case presents an example of a district court's use of
the "proportionality" requirement of Rule 26 to limit
On March 9, 2017, Magistrate Judge Barbara L. Major of the
District Court for the Southern District of California denied a
motion brought by defendant, Pacific Surf Designs, Inc., to compel
plaintiff, FlowRider Surf, Ltd., to produce "all documents and
pleadings" from an earlier arbitration.
The plaintiff, FlowRider, acquired an exclusive right to the
asserted patent and a portion of the inventor's business, Wave
Loch. Prior to the instant litigation, FlowRider and Wave Loch were
engaged in arbitration unrelated to the patent issues before the
court. The arbitration lasted almost a year and involved the
production of more than 40,000 pages of documents and the exchange
of nearly 80 pleadings.
In the subsequent patent litigation, defendant Pacific Surf
requested the production of "whatever documents, pleadings,
etc., were exchanged or provided" in the arbitration.
FlowRider objected on various grounds, but eventually produced the
demand for arbitration, the arbitration settlement agreement, and a
contribution agreement. FlowRider also produced nearly 79,000 other
documents through the course of discovery. Not satisfied, Pacific
Surf moved to compel FlowRider to produce "all pleadings and
documents exchanged in the arbitration."
Pacific Surf argued that the arbitration documents were relevant
to standing, damages and the credibility of the inventor. FlowRider
countered that a separate, non-arbitrated agreement gave it
standing, that it had already produced documents relating to
damages, and that the confidential documents exchanged in the
arbitration were directed to an irrelevant contract dispute. On
this last point, FlowRider submitted a declaration from arbitration
counsel that explained that the arbitration related to contractual
pricing obligations and manufacture and sales rights, and that
"[n]one of the issues in the arbitration related to Wave
Loch's development or ownership of patents or other
Although the court found the motion untimely, it went on to rule
on the merits. The court agreed with FlowRider that the arbitration
involved an irrelevant breach of contract claim, and held that
"even if the documents were relevant, [Pacific Surf's]
request for all 'documents, pleadings, etc. . . . exchanged or
provided' in the [a]rbitration is grossly disproportionate to
the needs of the case and seeks confidential information." The
court also found that the request sought "cumulative
information" because the 79,000 documents that FlowRider had
already produced contained sufficient information to support
damages and challenge the inventor's credibility. Thus, the
court found that the request was overboard, sought irrelevant
information and was not proportional to the needs of the case. The
court also found that Pacific Surf had ignored FlowRider's
representation that it had already produced any relevant documents
that were exchanged in the arbitration, and instead filed an
"untimely motion to compel irrelevant, duplicative and
confidential documents, which are not proportional to the needs of
The court denied the motion and sanctioned the defendant for
filing a motion that was not substantially justified.
FlowRider Surf, Ltd., et al., v. Pacific Surf Designs,
Inc., No. 15-cv-1879 BEN (BLM) (S.D. Cal. March 9, 2017)
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).