Free Motion for Miscellaneous Relief - District Court of California - California

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MELODY A. KRAMER, SBN 169984 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Telephone (858) 362-3150 email: [email protected] J. MICHAEL KALER, SBN 158296 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Telephone (858) 362-3151 email: [email protected] Attorneys for Plaintiff JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA ) ) ) ) ) Plaintiff ) v. ) EMERSON ELECTRIC CO., a Missouri ) corporation; ONE WORLD ) TECHNOLOGIES, INC., a Delaware ) corporation; RIDGE TOOL COMPANY, ) ) an Ohio corporation; RIDGID, INC., a Delaware corporation; and ) ) DOES 1 ­ 100 ) Defendants. _________________________________ ) ) and related counterclaims. ) ) JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Case No. 08cv00060 BTM CAB DECLARATION OF MELODY A. KRAMER IN SUPPORT OF PLAINTIFF'S MOTION FOR EXCEPTION TO STAY TO PRESERVE EVIDENCE Date: August 8, 2008 Time: 11:00 a.m. Courtroom 15 ­ 5th Floor The Hon. Barry T. Moskowitz
Oral Argument Has Been Respectfully Requested by Plaintiff

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I, MELODY A. KRAMER, declare: 1. I am not a party to the present action. I am over the age of eighteen. I

have personal knowledge of the facts contained within the following paragraphs, and could and would competently testify thereto if called as a witness in a court of law. 2. At all times relevant herein I have been an attorney for Sorensen

Research and Development Trust ("SRDT"), Plaintiff in the above-captioned matter. 3. This Declaration is being submitted in conjunction with Plaintiff's

Motion for Exception to Stay for Preservation of Evidence. 4. I have requested an exception for stay for preservation of the evidence

outlined in the accompanying motion by letters to Defendants' counsel, but Defendants have failed to agree. 5. A list of all Accused Products (all Ridgid® brand tools) identified to

date to the Defendants, whether in the Complaint or subsequent correspondence is attached to the accompanying Memorandum of Points and Authorities as Appendix B. 6. Plaintiff is requesting the items of discovery that are the subject of this

motion because we believe these items of discovery are necessary and that delay until completion of the `184 patent reexamination creates the risk of loss of evidence. 7. Plaintiff has received contradictory information pre-litigation from the

Defendants regarding where and how the Accused Products are manufactured, whether domestically or offshore by companies other than the named Defendants, and companies which may or may not even have common ownership to the Defendants. 8. The packaging for Ridgid® Accused Products state that they are The

manufactured by Defendant One World Technologies in South Carolina.

relevant pages of the owner's manual for the original three accused products are attached hereto as Exhibit A. 9. I have located sworn testimony from Mr. Bugos, general counsel for
2.
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One World and its affiliated companies, given in December 2006 in a Pennsylvania products liability case that is contradictory to the representations we had received regarding identity of manufacturers for the Ridgid® tools. A true and correct copy of relevant pages of that deposition testimony is attached hereto as Exhibit B. 10. In that testimony, Mr. Bugos described himself as "general counsel for

Techtronic Industries North America, Inc. and its various subsidiaries . . . including One World Technologies, Inc." (page 5:23-6:4. He also testified as follows: Q. Does One World Technologies manufacture any products under the Ridgid name? A. [Mr. Bugos] No. . . . (page 6:24-7:2) 1 A. Ridgid brand products are marketed by One World Technologies to the Home Depot, are sourced through a parent company, ultimate parent company, Techtronic Industries Company Limited. Does One World Technology design the tools? One World Technologies, Inc., I imagine has had design input in connection with the line of various Ridgid brand products.

Q. A.

(page 7:23-8:3) A. We [One World] manufacture Ridgid brand products 2 as a supplier to Home Depot. There's a trademark license from the owner of the trademark, which I presume to be, as you've been calling them, Ridgid, Inc., so I believe that's the trademark owner. I understand it to be some entity owned by or controlled by Emerson. . . . What's the relationship between Emerson and One World Technologies? I believe we service, we provide customer service under contract

Q. A.

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This statement is contrary to the owner's manual information for Ridgid products.

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This statement is consistent with the owner's manual information for Ridgid products, but contradicts Mr. Bugos' prior representation. 3.
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for certain products that were manufactured by Emerson 3 . (page 15:12-24). Q. A. Who manufactures the tools? Well a variety of people manufacture the products. They are sourced through our parent company and it might be manufactured by them or it might be manufactured by a third party that they contract. Okay, so let me try to understand this. You source the tools, which means? What does source mean in your mind? Well Home Depot buys them from us, we buy them from somebody else. The third party we buy them from is our parent company in Hong Kong. Our parent company in Hong Kong may be the manufacturer, or it may be somebody else. 4

Q. A.

(page 18:10-24) A. Q. A. Q. A. ... A. The corporate entity, One World Technologies, Inc., technically does not manufacture anything. 5 So is it Techtronic that manufacturers them? It may be, or they may source it from a third party. A third party not related to Techtronic, or another subsidiary? It could be either. Well I don't want to mislead you. Our corporate entity, One World Technologies, Inc., plays a major role in the development of the product and decisions in regards to what that product will be like. We may have engineering input into the design of the product, in some cases we may not. In similar fashion to the contradictory product literature and general

Id. (page 19:6-20:4). 11.
3

This statement is inconsistent with Mr. Bugos' prior representation and inconsistent with the owner's manual information. This contradicts all of the previous statements regarding who manufacturers the products.
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This contradicts with the owner's manual statements and prior statements of Mr. 4.
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Bugos.

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counsel's testimony, letters from Defendants' counsel feign inability to even understand Plaintiff's request for preservation of molds and design and technical documents. True and correct copies of the relevant letters are attached hereto as Exhibit C. SWORN TO under penalty of perjury of the laws of the State of California and the United States, this 9th day of June, 2008.

/s/ Melody A. Kramer Melody A. Kramer, Esq.

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TABLE OF EXHIBITS

Exhibit A....................................................................................................................7 Exhibit B ..................................................................................................................13 Exhibit C ..................................................................................................................24

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Kramer Law Office, Inc.
9930 Mesa Rim Rd., Ste. 1600 San Diego, California 92121 Phone 858/362-3150 Fax 858/824-9073 ____________________________________________________________________________________________________________

Melody A. Kramer, Esq.
[email protected]

VIA FAX and FEDERAL EXPRESS May 6, 2008 Roger G. Perkins, Esq Angela Kim, Esq. MORRIS POLICH & PURDY LLP 501 West Broadway, Suite 500 San Diego, California 92101 Facsimile: (619) 557-0460 Orlando F. Cabanday HENNELLY & GROSSFELD LLP 4640 Admiralty Way, Suite 850 Marina del Rey, CA 90292 Facsimile: (310) 305-2116 Robert S. Mallin Brinks Hofer Gilson & Lione NBC Tower 455 N City Front Plaza Drive Suite 3600 Chicago, IL 60611 Facsimile: (312) 321-4299

RE:

Sorensen Research & Development Trust v. Emerson Electric, et al USDC Southern District of California, Case No. 08cv00060 Sorensen Research & Development Trust v. Ryobi Technologies, et al USDC Southern District of California, Case No. 08cv00070 Sorensen Research & Development Trust v. Senco Products, Inc., et al USDC Southern District of California, Case No. 08cv00071 Request for agreement to conduct limited discovery during stay for the purpose of preserving evidence

Dear Messrs. Mallin, Perkins and Cabanday: In accordance with the Order for stay by Judge Moskowitz in the above cases, we are hereby requesting the Defendants' agreement to preserve certain items of evidence to ensure that they will not be lost during the time that this case is being stayed. If we are unable to reach an agreement, we will be asking the Court for an order to produce this evidence.

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1.

2. 3.

All prototype and production molds used in the production of the Accused Products that are currently in the possession or control of either Defendants or non-parties; and All design and technical Documents for the Accused Product that are in the possession or control of either Defendants or non-parties. Initial disclosures pursuant to Rule 26(a)(1), specifically including the identity and location of all manufacturers, suppliers, and importers for the products at issue.

The products at issue at this point include the following identified products, and any other products made with the same molds or similar manufacturing process: Sorensen Research & Development Trust v. Emerson Electric, et al Ridgid 18V Cordless Reciprocating Saw Ridgid HD 3/8" VSR Drill Ridgid HD Reciprocating Saw Ridgid 18V Cordless ½" Hammer Drill Ridgid 18V Cordless 1/2 " Drill Ridgid 18V Cordless Drill Ridgid 14.4V Cordless ½" Drill Ridgid 12V Right Angle Impact Driver Ridgid 14.4V Impact Driver Ridgid 12V Cordless 3/8" Drill Ridgid Heavy Duty 3 Speed ½" Right Angle Drill Ridgid Heavy Duty 2 Speed ½" VSR Drill Ridgid Heavy Duty VSR Drywall Screwdriver Ridgid Heavy Duty ½" VSR Hammer/Pulse Drill Ridgid 7 ¼" Worm Drive Saw Ridgid Heavy Duty 7 ¼" Circular Saw Ridgid 18V Cordless Jig Saw Ridgid Variable Speed Orbital Jig Saw Ridgid Heavy Duty 11A Reciprocating Saw Ridgid 18V Cordless Hand Planer Ridgid Heavy Duty Variable Speed Belt Sander Ridgid 9.6V Pivoting Screwdriver Ridgid 9.6V Pivoting Screwdriver Ridgid Heavy Duty ½" Two Speed Hammer Drill Heavy Duty VSR Drywall Screwdriver Ridgid Professional 3/8" VSR Drill Ridgid Heavy Duty ½" VSR Hammer Drill Ridgid Max Select Dual Voltage Jig Saw Ridgid Heavy Duty ½" VSR Drill Ridgid 12 Volt Cordless 3/8" Drill Ridgid Max Select Dual Voltage Reciprocating Saw Ridgid 18 Volt Compact Lithium ­ Ion Drill Ridgid Max Select Dual Voltage Circular Saw Ridgid 24 Volt Lithium-Ion Cordless Hammer Drill Ridgid Worklight Ridgid ¼ Sheet Sander Ridgid 5" Random Orbit Sander Ridgid Max Select Hand Planer Ridgid 6 ½" Compact Framing Saw Ridgid 12 Volt Right Angle Impact Driver Ridgid 7" Circular Saw Ridgid 7 ¼" Worm Drive Circular Saw Ridgid Variable Speed Orbital Jig Saw Ridgid ½" Right Angle Drill Ridgid Variable Speed Belt Sander Ridgid Twist Handle Orbital Reciprocating Saw Ridgid Heavy Duty 11Amp Reciprocating Saw Ridgid

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Ridgid 18 Volt Cordless Impact Driver Ridgid 18 Volt Reciprocating Saw

Ridgid 18 Volt Circular Saw Ridgid 18 Volt Cordless Hammer Drill

Sorensen Research & Development Trust v. Ryobi Technologies, et al Ryobi 18.0V Circular Saw Ryobi 13 AMP Circular Saw Ryobi 14.4V Drill Ryobi 18.0V Drill/Driver Ryobi 14.4V Drill/Driver Ryobi Hammer Drill Ryobi 18" Electric Chainsaw Ryobi One+ Lithium 18V Circular Saw Ryobi One+ Lithium 18V Reciprocating Saw Ryobi One+ Lithium 18V Drill/Driver Ryobi One+ Lithium 18V Flashlight

Sorensen Research & Development Trust v. Senco Products, Inc., et al Senco Collated Screw Driver It is our understanding that manufacturing of the Accused Products has been done in China by unidentified company or companies, not by the Defendants. As such, and because we are also aware of often complicated, sometimes international, chain of company ownership, there is simply no assurance that this necessary technical information will be available to my client once the stay is lifted. Furthermore, as we already pointed out to you, failure to identify manufacturers, suppliers, and importers will make it impossible for us to assure that all evidence is preserved. Please advise us no later than May 27th if your clients are willing to stipulate to this limited discovery during the stay, otherwise we will file a motion with the Court. Additionally, please advise us by May 27th if Defendants have any categories of evidence that they want to ensure are preserved. Although we are cognizant of our general obligation to preserve evidence, we are willing to work with you to ensure that any particular categories of evidence that you think may be necessary when stay is lifted, are adequately preserved. Thank you for your attention to this matter. Sincerely,

Melody A. Kramer

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Kramer Law Office, Inc.
9930 Mesa Rim Rd., Ste. 1600 San Diego, California 92121 Phone 858/362-3150 Fax 858/824-9073 ____________________________________________________________________________________________________________

Melody A. Kramer, Esq.
[email protected]

VIA FAX and FEDERAL EXPRESS June 3, 2008 Robert S. Mallin Brinks Hofer Gilson & Lione NBC Tower 455 N City Front Plaza Drive Suite 3600 Chicago, IL 60611 Facsimile: (312) 321-4299 RE: Sorensen Research & Development Trust v. Emerson Electric, et al USDC Southern District of California, Case No. 08cv00060 Sorensen Research & Development Trust v. Ryobi Technologies, et al USDC Southern District of California, Case No. 08cv00070 Sorensen Research & Development Trust v. Senco Products, Inc., et al USDC Southern District of California, Case No. 08cv00071 Request for agreement to conduct limited discovery during stay for the purpose of preserving evidence

Dear Mr. Mallin: Thank you for your letters dated May 27th regarding the above-captioned cases and my request for preservation of evidence pending lift of stay in this case. I need to have some additional clarification to ensure that necessary evidence is being preserved. We are aware from prior correspondence and investigation that all of the accused products in these cases are manufactured by companies that are not located in the United States and that are several levels of corporate structure away from the defendants in this case or by third-parties that are contracted by several levels of companies away. As such, assuring us that the named parties "will comply with their preservation requirements in accordance with the Federal Rules of Civil Procedure and applicable case law" really doesn't mean anything.

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Are all prototype and production molds used in the production of the Accused Products being preserved? Are all design and technical documents for the Accused Products being preserved? Please clarify this matter for me no later than June 13th. If we do not receive adequate assurances of where this highly relevant evidence is being held and what steps are being taken to preserve it, we will have no choice but to proceed to the Court. Be advised that Judge Moskowitz has already heard one motion for exception to stay for preservation of evidence and did order certain discovery to proceed. A copy of that ruling is enclosed with this letter.

Sincerely,

Melody A. Kramer enclosure

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1 2 3 4 5 6 7 8 9 10 11 12 13 BLACK & DECKER CORPORATION, 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 EXHIBIT C - 31 1 Honorable Barry Ted Moskowitz United States District Judge vs. JENS ERIK SORENSEN, Plaintiff, CASE NO. 06CV1572 BTM (CAB) ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR EXCEPTION TO STAY; GRANTING IN PART AND DENYING IN PART MOTION TO FILE DOCUMENTS UNDER SEAL; AND GRANTING REQUEST FOR ORAL ARGUMENT

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA

Defendant. For the reasons set forth on the record, the Court GRANTS IN PART AND DENIES IN PART Plaintiff's motion for exception to stay [Doc. 264]. Plaintiff may take limited depositions of the relevant entities as set forth on the record. Plaintiff may also attempt to undertake an inspection of the out-of-district manufacturing facility through appropriate procedural avenues. Plaintiff's request for discovery as to the alleged UK facility is denied without prejudice. The Court also GRANTS IN PART AND DENIES IN PART Plaintiff's motion to file documents under seal [Doc. 265, 271]. Defendants shall file a publicly available version of the documents which the Court ruled should not be sealed within one week of the date of this order. The request for oral argument is GRANTED [Doc. 266]. IT IS SO ORDERED. DATED: June 3, 2008

06CV1572 BTM (CAB)

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Kramer Law Office, Inc.
9930 Mesa Rim Rd., Ste. 1600 San Diego, California 92121 Phone 858/362-3150 Fax 858/824-9073 ____________________________________________________________________________________________________________

Melody A. Kramer, Esq.
[email protected]

VIA FAX 310/305-2116 June 5, 2008 Orlando F. Cabanday HENNELLY & GROSSFELD LLP 4640 Admiralty Way, Suite 850 Marina del Rey, CA 90292 RE: Sorensen Research & Development Trust v. Emerson Electric, et al USDC Southern District of California, Case No. 08cv00060 Request for agreement to conduct limited discovery during stay for the purpose of preserving evidence

Dear Mr. Cabanday: We received a letter dated May 27th from Mr. Mallin regarding my request for preservation of evidence pending lift of stay in this case. Unfortunately, Mr. Mallin's representation did not provide the necessary assurance to avoid our need to pursue this matter with the Court. I have asked Mr. Mallin for certain clarifications, but wanted to also bring this matter to your attention. We are aware from prior correspondence and investigation that all of the accused products in these cases are manufactured by companies that are not located in the United States and that are several levels of corporate structure away from the defendants in this case or by third-parties that are contracted by several levels of companies away. As such, Mr. Mallin's assurance that the named parties "will comply with their preservation requirements in accordance with the Federal Rules of Civil Procedure and applicable case law" really doesn't mean anything. Are all prototype and production molds used in the production of the Accused Products being preserved? Are all design and technical documents for the Accused Products being preserved? Who has possession, custody, and control of this evidence? This matter needs to be clarified for me by June 13th. If we do not receive adequate assurances of where this highly relevant evidence is being held and what steps are being taken to preserve it, we will have no choice but to proceed to the Court. Be advised that Judge Moskowitz has already heard one motion for exception to stay for EXHIBIT C - 32

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Mr. Cabanday June 5, 2008 Page 2

preservation of evidence and did order certain discovery to proceed. A copy of that ruling is enclosed with this letter. Thank you in advance for your cooperation. Sincerely,

Melody A. Kramer enclosure

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