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

Case 3:07-cv-02277-BTM-RBB

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MELODY A. KRAMER, SBN 169984 KRAMER LAW OFFICE, INC. 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Telephone (858) 362-3150 J. MICHAEL KALER, SBN 158296 KALER LAW OFFICES 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Telephone (858) 362-3151 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. ) ) ESSEPLAST (USA) NC, 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. 07cv02277 BTM CAB DECLARATION OF MELODY KRAMER IN SUPPORT OF 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. A true and correct copy of said correspondence is attached hereto as Exhibit A. 5. Based upon pre-litigation communications, Defendant has already

acknowledged the difficulty in getting process information from the foreign third party manufacturers and has asserted that at least one accused product had low sales volumes. 6. Based upon pre-litigation communications, Defendant did not even

investigate the manufacturing process until after filing of this case. 7. After the filing of this case, Defendant's counsel claimed to me to have

obtained manufacturing process information for three accused products, however, the source of that information was second- or third-hand hearsay from individuals in Italy and China. 8. Although Defendant's counsel has claimed in his most recent letter that

they offered to provide Plaintiff access to the molds for these products, no such offer was ever made, and based upon available information, Plaintiff does not know if Defendant even has the ability to provide such access. 9. Upon information and belief, Defendant was acquired by The Evercare

Company on March 1, 2008.
2.
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Case No. 07cv02277 BTM CAB

SWORN TO under penalty of perjury of the laws of the State of California and the United States, this 26th day of June, 2008. /s/ Melody A. Kramer Melody A. Kramer, Esq.

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EXHIBIT A

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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 FED-EX April 17, 2008 Alan A. Limbach DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 CONFIDENTIAL OFFER OF COMPROMISE Subject to Federal Rules of Evidence § 408 RE: Sorensen Research & Development Trust v. Esseplast USA (NC) Inc. Case No. 07cv2277 JAH BLM

Dear Mr. Limbach: In accordance with the Order for stay by Judge Moskowitz, 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. 1. All prototype and production molds used in the production of the Accused Products that are currently in the possession or control of non-parties; and All design and technical Documents for the Accused Product that are in the possession or control of non-parties. Correspondence with foreign manufacturers regarding the Accused Product; 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.

2.

3.

4.

It is our understanding that all manufacturing of the Accused Products has been done in China by unidentified compan(ies), under the control and/or direction of

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Mr. Limbach April 17, 2008 Page 2

unidentified compan(ies) in Italy, none of which are Esseplast USA (NC) Inc. nor even its parent company. As such, 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 April 30th if your client is willing to stipulate to this limited discovery during the stay, otherwise we will file a motion with the Court.

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 650-687-1182 May 6, 2008 Alan A. Limbach DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 Facsimile: (650) 833-2001

RE:

Sorensen Research & Development Trust v. Esseplast USA (NC) Inc. Case No. 07cv2277 JAH BLM Request for agreement to conduct limited discovery during stay for the purpose of preserving evidence.

Dear Mr. Limbach: I am in receipt of your letter dated April 30, 2008 in which you refuse, on behalf of your client, to agree to limited discovery for the purpose of preserving evidence. Your assurance that Esseplast has "notified its manufacturer of the need to preserve evidence" is not a meaningful assurance. The manufacturers are not parties to this case and Esseplast's request cannot be enforced. When stay is lifted, however, any loss of manufacturing evidence in the interim will become Esseplast's problem. Sorensen has done everything within its power to obtain evidence of the manufacturing process from Esseplast both prelitigation and since. Esseplast has advised us that the manufacturing of the accused products in question is done by companies outside of even indirect control of Esseplast. This makes a solid case for application of the 35 U.S.C. § 295 presumption of infringement and we will be filing such a motion as soon as stay is lifted. Please advise us by May 21st 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

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Mr. Limbach May 6, 2008 Page 2

preserved. If you do not ask now, we will presume that Esseplast is willing to accept any consequences of loss of evidence occasioned by its request for stay of this litigation. 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 650-687-1182 June 4, 2008 Alan A. Limbach DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 Facsimile: (650) 833-2001

RE:

Sorensen Research & Development Trust v. Esseplast USA (NC) Inc. Case No. 07cv2277 JAH BLM Request for agreement to conduct limited discovery during stay for the purpose of preserving evidence.

Dear Mr. Limbach: Based upon the Court's ruling yesterday on a motion for exception to stay for preservation of evidence in the Sorensen v. Black & Decker case, I am renewing my request for Esseplast to provide us with the following information necessary for preservation of evidence during the stay of this case: 1. 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.

2. 3.

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Mr. Limbach June 4, 2008 Page 2

If your client would like to avoid motion practice on this issue, please notify me immediately. Otherwise, you should be receiving a motion on this issue shortly. Sincerely,

Melody A. Kramer

enclosure

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

Kramer Law Office, Inc.

Melody A. Kramer, Esq.
[email protected]

VIA FAX 650-687-1182 June 24, 2008 Alan A. Limbach DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 Facsimile: (650) 833-2001

RE:

Sorensen Research & Development Trust v. Esseplast USA (NC) Inc. Case No. 07cv2277 JAH BLM Request for agreement to conduct limited discovery during stay for the purpose of preserving evidence.

Dear Mr. Limbach: I have not received any response to my second letter regarding preservation of evidence dated June 4th requesting an agreement for preservation of certain items of evidence pending lift of stay of this case. Therefore, I am left to assume that your client is unwilling to cooperate with us and we will have no option but to make a request directly to the Court pursuant to the Order for Stay. Be advised that on June 3, 2008 Judge Moskowitz granted our request for preservation of evidence in circumstances similar to those in this case, therefore we are confident that we will prevail in a request for the limited discovery we have requested from you. Enclosed please find a copy of the transcript in the referenced Black & Decker hearing and resulting order wherein Judge Moskowitz granted my client an exception to stay to conduct certain items of discovery, including conducting a plant inspection. As you can see, there is every reason to believe that Judge Moskowitz would also grant a motion allowing us to conduct the same type of discovery of Esseplast.

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Mr. Limbach June 24, 2008 Page 2

If your client would like to avoid the necessity of motion practice on this issue, please reconsider your position and let me know immediately. Otherwise we will be filing a motion shortly. Sincerely,

Melody A. Kramer

enclosure

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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 650-687-1182 June 26, 2008 Alan A. Limbach DLA Piper USA LLC 2000 University Avenue East Palo Alto, CA 94303-2214 Facsimile: (650) 833-2001

RE:

Sorensen Research & Development Trust v. Esseplast USA (NC) Inc. Case No. 07cv2277 JAH BLM Request for agreement to conduct limited discovery during stay for the purpose of preserving evidence.

Dear Mr. Limbach: I have received your letter dated June 25th and it is clear that your client is refusing to cooperate with us in preserving necessary evidence in this case, therefore we will proceed to file our Motion for Exception to Stay for Preservation of Evidence. Some of the statements in your letter need to be corrected. First, your client has never offered to provide my client with access to molds. You have made a statement regarding the claimed method of manufacture for the Topfin product in your letter dated December 21, 2007, however that statement did not contain any offer to view molds. Furthermore, in telephone conversations between the two of us in January 2008, you never made such an offer, and furthermore advised me that the source of your statements regarding the claimed process for the Topfin product came from the statements of someone in Italy talking about a process occurring in China at a third-party manufacturer. That is hardly reliable information for purposes of resolving such an important issue. Furthermore, you refused to provide me with even an assertion of the manufacturing process for the accused Clorox products, claiming that you were not at liberty to provide that to us. You have provided us with no assurances that the prototype and production molds for the accused products are within your possession, custody or control, and thus cannot

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Mr. Limbach June 26, 2008 Page 2

guarantee their preservation pending lift of stay in this case. Furthermore, you have not provided us with any information upon which we can access that information directly from the third-party manufacturers. As such, we have not choice but to seek relief from the Court. Your client did not even make inquiry into the manufacturing process until this case was filed, and then have failed to back up that claimed process with anything resembling admissible evidence as to one product, and not even making any representations as to the two additional products. Sincerely,

Melody A. Kramer enclosure