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 PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES 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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Plaintiff, pursuant to a shortened procedure outlined by Judge Moskowitz in related cases, 1 hereby requests the Court for an exception to the stay entered in this case in order to preserve evidence that will otherwise be unavailable after the stay. Plaintiff has presented its arguments in brief form pursuant to the Court's request. Plaintiff has already requested this exception and discovery by letters to Defendants' counsel (see Kramer Decl., ¶ 4, Exhibit A), but Defendants have failed to agree. The requested discovery is as follows: 1. Confirmation of preservation of all prototype and production molds used in the production of the Accused Products if they are within possession, custody, or control of named Defendants; and Confirmation of preservation of all design and technical documents for the Accused Products that are in the possession, custody, or control of named Defendants.

2.

For any of the above categories of evidence that are in the possession, custody, or control of non-parties (as Plaintiff understands some to be), Plaintiff requests as follows: 3. Sworn identification of the company name(s) and address(s) of all non-party manufacturers, suppliers, and importers for the Accused Products; and Court leave to use appropriate procedural steps to acquire the above-listed categories of evidence from, and/or conduct plant inspections of, non-parties.

4.

Plaintiff believes these items of discovery are necessary and that delay until completion of the `184 patent reexamination creates the risk of loss of evidence. Sorensen v. Helen of Troy Texas Corporation, et al, Case No. 07cv02278 (see relevant portion of the transcript at Appendix A hereto); and Sorensen v. Black & Decker Corporation, Case No. 06cv1572 (see Docket # 264-277, various entries).
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A motion to preserve evidence requires the court to consider "1) the level of concern the court has for the continuing existence and maintenance of the integrity of the evidence in question in the absence of an order directing preservation of the evidence; 2) any irreparable harm likely to result to the party seeking the preservation of evidence absent an order directing preservation; and 3) the capability of an individual, entity, or party to maintain the evidence sought to be preserved, not only as to the evidence's original form, condition or contents, but also the physical, spatial and financial burdens created by ordering the evidence preservation." Jacobs v. Scribner Slip Copy, 2007 WL 1994235 (E.D.Cal. 2007) citing: Daniel v. Coleman Co., Inc., No. 06-5706 KLS, 2007 WL 1463102, *2 (W.D.Wash. 2007). 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. Kramer Decl. ¶ 5. Defendant did not even investigate the manufacturing process until after filing of this case. Kramer Decl. ¶ 6. After the filing of this case, Defendant's counsel claims to have obtained manufacturing process information for three accused products, however, the source of that information is second- or third-hand hearsay from individuals in Italy and China. Kramer Decl. ¶ 7. 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. Kramer Decl. ¶ 8. "The obligation to preserve [evidence] arises when the party has notice that the evidence is relevant to litigation -- most commonly when the suit has already been filed, providing the party responsible for the destruction with express notice, but also on occasion in other circumstances, as for example when a party should have known that the evidence may be relevant to future litigation." Treppel v. Biovail Corp., 233 F.R.D. 363, 371 (2006).
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A foreign manufacturer, however, is not likely to, and has no obligation to maintain molds, design documents, or correspondence. Molds are often sold for scrap metal after production ceases. Every day that goes by without the production of this evidence increases the likelihood that the evidence will be lost or destroyed. Further reason to believe the evidence may be lost or destroyed is Defendant's acquisition by The Evercare Company on March 1, 2008. Kramer Decl. ¶ 9. Often acquisitions result in the loss or destruction of materials of the acquired company. There is no reason to believe that the prototype and production molds for the Accused Products, and related design and technical documents are being preserved by the named Defendant pending the stay of this case and there is even less reason to believe that non-parties to this case are preserving evidence necessary to this case. Unidentified, and thus non-party, manufacturers, suppliers, and importers, of the accused products may not have notice of this lawsuit and Plaintiff has no means of ensuring that they are preserving evidence for this case. Neither the Court nor Plaintiff can informally request evidence preservation, much less compel it, without this identification. WHEREFORE, Plaintiff respectfully requests the Court to order an exception to the stay in this case as follows: (1) requiring sworn identification of

manufacturers, suppliers, and importers for the following products: Topfin Hand Held Glass Scrubber, Clorox Flexible Scrub Brush, and Clorox Clip On Dustpan; and (2) granting Plaintiff to pursue third-party discovery relating to preserving evidence in possession of those parties.

// //

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Case No. 07cv02277 BTM CAB

RESPECTFULLY SUBMITTED this Thursday, June 26, 2008. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff /s/ Melody A. Kramer Melody A. Kramer, Esq. J. Michael Kaler, Esq. Attorneys for Plaintiff

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UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA ) ) ) ) ) ) ) ) Case No. 07cv02278BTM ) ) ) ) ) ) ) ) ) ) ) ) San Diego, California ) ) February 25, 2008

JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff,

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 APPEARANCES: For the Plaintiff: Defendants. vs. HELEN OF TROY TEXAS CORPORATION; OXO INTERNATIONAL, LTD; and DOES 1-100,

Status Conference BEFORE THE HONORABLE BARRY TED MOSKOWITZ UNITED STATES DISTRICT JUDGE

Kaler Law Offices J. Michael Kaler 9930 Mesa Rim Road St. 200 San Diego, CA 92121 Kramer Law Office Melody A. Kramer 9930 Mesa Rim Road, St.1600 San Diego, CA 92121

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1 For the Defendants: 2 3 4 5 Official Reporter: 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Barbara Harris CM/RPR/CRR 880 Front Street San Diego, CA 92101 619-990-3116 Seyfarth Shaw Eric B. Von Zeipel 2029 Century Park East, Suite 3300 Los Angeles, CA 90067

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thing is if I grant them an extension of time to answer of 60 days, and I grant the stay without prejudice and they answer on behalf of Helen of Troy of Texas, and Oxo International, then I think everything is taken care of. MR. VON ZEIPEL: THE COURT: MR. KALER: That sounds good.
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Mr. Kaler is about to speak. That would certainly be a resolution, Has the court considered the

not one I'm thrilled with.

possibility of a partial stay allowing some discovery, that does not address claim construction issues, to preserve evidence in these cases that are newly filed? THE COURT: I have not considered it, but that is No one should
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certainly something that would be considered. be prejudiced by the stay.

It would be unfair to the
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plaintiff if there is a stay and something happens that they lose evidence. So that's always an implied exception. If

The stay is always granted without prejudice. that wasn't understood then perhaps it's my fault in not making it clear. MR. KALER: motion? THE COURT: First you would discuss it with the Would we need to bring a separate

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party you would want to take discovery on, and if they didn't agree, then you would then come before me. MR. KALER: Okay.
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THE COURT:

And I think I would try to do it in a

way that the parties would file something very, very brief so they don't take up a lot of attorney time and work, and then I would hear it orally and I would rule on it right there. In other words, you would file something, maybe a page or two, saying we want to get an exception to the stay for the following reasons, we are going to come into court on such and such a date the clerk gives you, and we will flush them out, but here it is in capsule form. MR. KALER: THE COURT: Thank you, your Honor. All right? So that's when I say the Well, does anyone have
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stays are granted without prejudice. a problem if we proceed this way?

I know it's not ultimately

what you want, but you can't -- isn't there a song, You Can't Always Get What You Want? MR. KALER: Your Honor, I was actually hoping for
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summary judgment in our favor this morning, but I'll take it. THE COURT: Well, we will do an order in that

Is 60 days enough to file an answer? MR. VON ZEIPEL: THE COURT: I believe so.
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And the order will provide that you can

file an amended answer 30 days after any re-examination decision. MR. VON ZEIPEL: THE COURT: Thank you, your Honor. So, then that will take
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All right?