Whitewater West Industries, LTD. v. Pacific Surf Designs, Inc. et al

RESPONSE in Opposition re MOTION for Sanctions

S.D. Cal.August 15, 2018

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 BUCHALTER A Professional Corporation J. Rick Taché (SBN: 195100) Roger L. Scott (SBN: 247165) Erikson C. Squier (SBN: 275274) 18400 Von Karman Avenue, Suite 800 Irvine, CA 92612-0514 Telephone: 949.760.1121 Facsimile: 949.720.0182 Email: rtache@buchalter.com rscott@buchalter.com ecsquier@buchalter.com Attorneys for Plaintiff Whitewater West Industries, Ltd. UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA WHITEWATER WEST INDUSTRIES, LTD., a Canadian corporation, Plaintiff, vs. PACIFIC SURF DESIGNS, INC., a Delaware corporation, and FLOW SERVICES, INC., a California corporation, Defendants. Case No. 3:17-cv-01118-BEN-BLM PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS (ECF NO. 154) Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5665 Page 1 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E i PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 TABLE OF CONTENTS Page(s) I. INTRODUCTION ........................................................................................... 1 II. STATEMENT OF FACTS .............................................................................. 2 A. The ’589 Patent Expires While Mr. Taché Is On A Leave Of Absence ................................................................................................. 2 B. Relevant History Of Discovery ............................................................. 3 1. Whitewater’s Disclosure Of The ’589 Patent History ................ 3 2. The Model ESI Order Limits The Discovery Of Email ESI ...... 4 3. Defendants Move To Compel Discovery Regarding Expiration And Revival, But Do Not Request Sanctions ........... 4 4. Whitewater And Its Counsel Comply In Good Faith With The Court’s November 3, 2016 Order ........................................ 5 5. Whitewater Complies In Good Faith With Document Discovery In This Action; The Court Rejects Defendants’ Request For Sanctions ................................................................ 6 6. Mr. Squier Provides Complete And Truthful Testimony (Twice); The Court Denies Defendants’ Requests For Sanctions Regarding His Deposition .......................................... 7 7. Defendants Issue A Subpoena to Knobbe, But Fail To Timely Seek Compliance ............................................................ 8 8. Whitewater Explains Its Good Faith Conduct And Inadvertent Failure To Produce The January 22, 2015 Email; Defendants Insist Their Only Recourse Is Terminating Sanctions ..................................................................................... 9 III. ARGUMENT ................................................................................................ 10 A. The Emails Produced By Knobbe Do Not Affect Defendants’ Meritless Inequitable Conduct Defense .............................................. 10 B. The Only Potential Basis For Defendants’ Motion Is Whitewater’s Inadvertent Failure To Produce The January 22, 2015 Email ............ 13 C. Defendants Cannot Demonstrate That Whitewater Engaged In Willful Misconduct ............................................................................. 14 1. Defendants Fail To Address Willfulness, Mandating Denial Of Their Motion ........................................................................ 14 Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5666 Page 2 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E ii PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 2. Whitewater’s Inadvertent Failure To Produce The January 22, 2015 Email Was Not Willful .............................................. 15 3. Even If “Willful,” The Delayed Production Of The January 22, 2015 Email Cannot Support Terminating Sanctions .......... 17 D. The Five Remaining Factors Weigh Against Dismissal ..................... 20 1. Any Issues Relating To The January 22, 2018 Email Can Be Resolved Within The Court’s Existing Schedule ..................... 20 2. Any Limited Prejudice Weighs Against Dismissal Because Defendants’ Sanctions Request Is Purely Punitive .................. 21 3. Public Policy Favors Disposing Of This Case On The Merits . 22 4. Lesser Sanctions Are Available, Were Not Previously Imposed, and No Prior Warnings Were Given ......................... 23 IV. CONCLUSION ............................................................................................. 25 Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5667 Page 3 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E iii PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 TABLE OF AUTHORITIES Page(s) Cases Alexis v. Rogers, No. 15cv691-CAB(BLM), 2017 U.S. Dist. LEXIS 72920 (S.D. Cal. May 12, 2017) .............................................................................................. 20, 22, 23, 24 Amersham Pharmacia Biotech, Inc. v. Perkin Elmer Corp., 190 F.R.D. 644 (N.D. Cal. 2000) ......................................................................... 24 Aristocrat Techs. v. Int’l. Game Tech. & IGT, No. C-06-003717, 2011 U.S. Dist. LEXIS 48693 (N.D. Cal. May 6, 2011) ....... 12 Asghari-Kamrani v. United Services Auto. Association, 252 F. Supp. 3d 562 (E.D. Va. 2017) ................................................................... 13 Aspex Eyewear Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010) ............................................................................ 11 Astrazeneca Pharm. LP v. Teva Pharm. USA, Inc., 583 F.3d 766 (Fed. Cir. 2009) .............................................................................. 11 Barry v. Medtronic, Inc., 245 F. Supp. 3d 793 (E.D. Tex. 2017) ................................................................. 13 Bernard v. Ricketts, No. 91-16701, 1993 U.S. App. LEXIS 4478 (9th Cir. Feb. 26, 1993) .......... 17, 25 Burley v. Gagacki, 729 F.3d 610 (6th Cir. 2013) ................................................................................ 13 Chambers v. Janssen Pharm., Inc., No. 16CV762-JAH(BLM), 2018 U.S. Dist. LEXIS 131011 (S.D. Cal. Aug. 3, 2018) ......................................................................................................... 18 Conn. Gen. Life Ins. Co. v. New Image of Beverly Hills, 482 F.3d 1091 (9th Cir. 2007) .............................................................................. 24 Doyle v. F/V Infinite Glory, No. 3:12-cv-00179-TMB-DMS, 2015 U.S. Dist. LEXIS 183430 (D. Alaska Jan. 12, 2015) ............................................................................................ 17 Fjelstad v. Am. Honda Motor Co., 762 F.2d 1334 (9th Cir. 1985) ............................................................ 15, 16, 17, 18 Halaco Eng’g. Co. v. Costle, 843 F.2d 376 (9th Cir. 1988) ................................................................................ 17 Henry v. Gill Indus., Inc., 983 F.2d 943 (9th Cir. 1993) ................................................................................ 15 Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5668 Page 4 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E iv PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 In re Exxon Valdez, 102 F.3d 429 (9th Cir. 1996) ................................................................................ 15 Klund v. High Tech. Sols., Inc., No. 05CV0565-JAH(BLM), 2006 U.S. Dist. LEXIS 12163 (S.D. Cal. Feb. 23, 2006) .................................................................................................. 20, 21 L. Tarango Trucking v. Cty. of Contra Costa, 202 F.R.D. 614 (N.D. Cal. 2001) ............................................................. 15, 16, 22 Malone v. United States Postal Serv., 833 F.2d 128 (9th Cir. 1987) ................................................................................ 22 Med. Imaging Sys., LLC v. Visage Imaging, Inc., 228 F. Supp. 3d 1331 (N.D. Ga. 2017) ................................................................ 13 Molins PLC v. Textron, Inc., 48 F.3d 1172, 1181 (Fed.Cir.1995) ...................................................................... 11 Network Appliance, Inc. v. Bluearc Corp., No. C 03-5665 MHP, 2005 U.S. Dist. LEXIS 16726 at *12 (N.D. Cal. Jun. 27, 2005) .................................................................................................... 1, 18 Ortiz-Rivera v. Mun. Gov’t. of Toa Alta, 214 F.R.D. 51 (D.P.R.2003) ........................................................................... 18, 19 Pagtalunan v. Galaza, 291 F.3d 639 (9th Cir. 2002) ................................................................................ 23 R&R Sails, Inc. v. Ins. Co. of Penn., 673 F.3d 1240 (9th Cir. 2012) .............................................................................. 24 Ray v. Lehman, 55 F.3d 606 (Fed. Cir. 1995) ................................................................................ 11 Thompson v. Hous. Auth. of City of Los Angeles, 782 F.2d 829 (9th Cir. 1986) .......................................................................... 20, 23 Unigard Sec. Ins. Co. v. Lakewood Eng. & Mfg. Corp., 982 F.2d 363 (9th Cir. 1992) ................................................................................ 13 Valley Eng’rs., Inc. v. Electric Eng’g. Co., 158 F.3d 1051 (9th Cir. 1998) .................................................................. 18, 19, 22 Wanderer v. Johnston, 910 F.2d 652 (9th Cir. 1990) ................................................................................ 21 White v. Cinemark USA, Inc., No. 2:04-cv-397-GEB-CMK, 2005 U.S. Dist. LEXIS 42134 (E.D. Cal. Aug. 3, 2005) ......................................................................................................... 15 Wiltec Guam, Inc. v. Kahaluu Constr. Co., 857 F.2d 600 (9th Cir. 1988) ................................................................................ 15 Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5669 Page 5 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E v PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 Wyle v. R.J. Reynolds Indus., Inc., 709 F.2d 585 (9th Cir. 1983) .......................................................................... 21, 22 Zamani v. Carnes, 491 F.3d 990 (9th Cir. 2007) ................................................................................ 15 Rules and Regulations 37 C.F.R. § 1.137 ...................................................................................................... 11 37 C.F.R. § 1.378 ...................................................................................................... 11 37 CFR 11.18 ............................................................................................................ 13 Fed. R. Civ. P. 34 and 45 ............................................................................................ 4 Local Rule 5.4 ........................................................................................................... 26 MPEP § 410 .............................................................................................................. 13 MPEP § 711.03 ......................................................................................................... 11 MPEP § 2590 ............................................................................................................ 11 Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5670 Page 6 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 1 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 I. INTRODUCTION Defendants’ motion for terminating sanctions is an improper effort to manipulate Whitewater’s inadvertent failure to produce a single immaterial email into a basis for the most severe sanctions a Court may ever issue.1 Whitewater openly explained to Defendants the reasonable basis for its inadvertent failure to produce the email, and asked that Defendants identify any prejudice they suffered and suggest ways to resolve the issue. Defendants flatly refused and insisted on filing the present motion supported by little more than baseless accusations of conspiracy and perjury. Defendants’ theory ignores that neither Whitewater nor its counsel had anything to gain from delaying the revival of the ’589 Patent or hiding a mere two-week delay in the timeline of their efforts to revive it. The Court is not required to “indulge such overly confrontational litigation tactics.”2 Defendants’ strained attempt to end this case on a procedural ground is nothing more than a cover for Defendants’ knowledge that they cannot prevail on the merits. Immediately after founding Pacific Surf Designs, its co-founder, Richard Alleshouse, openly admitted that its sole purpose was to infringe on Whitewater’s patents, referring to Pacific Surf Designs’ products as “ .”3 Scott Decl., Ex. 1. As set forth fully below, Defendants’ motion must be denied because Whitewater’s actions were not willful (a required element Defendants do not even address). Even if willful, the omission of a single, non-material document cannot support terminating sanctions, and the five factors that must be considered in 1 While Defendants’ motion is baseless and should be denied, Whitewater and its counsel recognize and apologize to the Court and Defendants for counsel’s inadvertent failure to locate and produce the email at issue. 2 Network Appliance, Inc. v. Bluearc Corp., No. C 03-5665 MHP, 2005 U.S. Dist. LEXIS 16726 at *12 (N.D. Cal. Jun. 27, 2005) (denying sanctions where party provided a reasonable explanation for non-production of documents and offered to discuss remedies other than sanctions). 3 Mr. Alleshouse went on, asking how Pacific Surf Designs c Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5671 Page 7 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 2 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 imposing terminating sanctions all weigh against dismissal. This is because terminating sanctions are reserved for severe, repeated, and intentional misconduct. Notably, Defendants fail to cite a single case supporting the proposition that the inadvertent failure to produce a single document can support terminating sanctions. Moreover, Defendants fail to mention their own delay in seeking production from Knobbe. Had Defendants acted with diligence, the documents at issue would have been produced five weeks before the close of discovery, avoiding any claimed prejudice. As a result, the Court should deny Defendants’ motion. II. STATEMENT OF FACTS A. The ’589 Patent Expires While Mr. Taché Is On A Leave Of Absence The ’589 Patent expired on Friday, January 2, 2015. Whitewater’s Rule 30(b)(6) representative testified that the expiration was unintentional, stating, “I believe it was an oversight on the part of Whitewater. Scott Decl. Ex. 2 (Benac 165:4-10). The following Monday, January 5, 2015, Mr. Taché, due to exigent family circumstances, began an extended leave of absence from Greenberg that lasted until June 1, 2015. Taché Decl. ¶ 2. Specifically, in late 2014, Mr. Taché’s then wife of 14 years abruptly ended their marriage and moved out of state, leaving Mr. Taché as the single father of two daughters. Id. ¶ 3. This situation presented any number of time consuming and personal issues, the most important of which was caring for his daughters. Id. Further complicating matters, Mr. Taché’s ex-wife was not only their daughters’ primary caregiver, but also their teacher through homeschooling. Id. Lacking the usual day-time supervision offered by traditional schooling, Mr. Taché was required to be home. Id. While Mr. Taché maintained access to work email during this time, he rarely used it, checking primarily for emails from clients or Greenberg attorneys on issues requiring his immediate attention. Id. ¶ 4. Thus, it is not remarkable, or even unexpected, than an email from an unrecognized address from another law firm Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5672 Page 8 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 3 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 would go overlooked. While Mr. Taché is now aware that, on January 22, 2015, Knobbe sent him an email notifying him of the January 2, 2015 expiration of the ’589 Patent, he has no recollection of ever receiving that email. Id. ¶ 5. Because Mr. Taché was unaware of the January 22, 2015 email, he did not discuss it with anyone, including Mr. Squier. Id. ¶ 5, Squier Decl. ¶ 3. The first time Mr. Taché became aware that the ’589 Patent had expired was through a February 4, 2015 email from Mr. Squier. Id. ¶ 6. Mr. Taché immediately responded to Mr. Squier. Tache Decl., Ex. 3. On February 5, 2015, Mr. Taché contacted the client regarding the expiration of the ’589 Patent and obtained instructions to revive it. Tache Decl., Ex. 4. On February 20, 2015, Mr. Squier filed Whitewater’s petition to revive the ’589 Patent.4 Squier Decl., Ex. 5. B. Relevant History Of Discovery Defendants’ motion is based almost entirely on an erroneous portrayal of the historical discovery issues and Court orders both in the Prior Action5 and this litigation. Whitewater provides an accurate statement of the relevant facts here. 1. Whitewater’s Disclosure Of The ’589 Patent History In compliance with its obligation to produce the ’589 Patent file, in or about January 2016, Whitewater used Pat Pro, Inc. a service registered with the patent office, to obtain the full patent file “wrapper” contained in the patent office’s files. Squier Decl. ¶ 5. The file Whitewater received did not contain the pages Defendants complain were omitted. Id. ¶ 6. Whitewater did not remove or omit any documents from the patent file when producing it to Defendants. Id. ¶ 7. In preparing to oppose this motion, Whitewater again contacted Pat Pro, Inc. and confirmed that the file produced was the full and complete file obtained from 4 Whitewater’s initial petition was dismissed because Mr. Squier was not listed on Greenberg’s debit account with the PTO. Whitewater filed a renewed petition to revive on August 11, 2015, and the ’589 Patent was revived on August 25, 2015. 5 The “Prior Action” refers to Flowrider Surf, Ltd., et al v. Pacific Surf Designs, Inc., Case No. 15-cv-01879 BEN BLM. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5673 Page 9 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 4 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 the patent office in January, 2016. Id. ¶ 8. 6 Even today, the patent office’s online system does not show documents Defendants complain are missing as part of the patent’s transaction history. Squier Decl. Ex. 6.7 2. The Model ESI Order Limits The Discovery Of Email ESI In an effort to curb overly burdensome discovery of Electronically Stored Information (“ESI”), this District provides a “Model Order Governing Discovery Of Electronically Stored Information in Patent Cases” (the “Model ESI Order”). The Model ESI Order provides explicit limitations on discovery of ESI, and instructions on how a party may properly obtain discovery of ESI from other parties and third-parties. Model ESI Order ¶¶ 5, 7 (limiting discovery of ESI sought under Federal Rules of Civil Procedure 34 and 45). To obtain discovery of email ESI, the requesting party “must propound specific email production requests.” Id. ¶ 7. Such requests are limited to a total of five custodians and five search terms per custodian. Id. ¶¶ 11, 12. Discovery of email ESI through any other method is prohibited. Id. ¶ 7. By way of example, during the Prior Action, Defendants issued subpoenas to third-party Thomas Lochtefeld and several entities he controls pursuant to Federal Rule of Civil Procedure 45. Scott Decl., Ex. 7. None of the subpoenas contained specific email ESI requests as required by the Model ESI Order. Id. As a result, Mr. Lochtefeld and his entities did not provide ESI to counsel for production or create a privilege log. 3. Defendants Move To Compel Discovery Regarding Expiration And Revival, But Do Not Request Sanctions In the Prior Action, Defendants served both ESI and non-ESI discovery on Whitewater. Whitewater’s ESI production consisted of a total of 78,437 emails and attachments. Scott Decl. ¶ 5. Whitewater also produced documents responsive to 6 Defendants fail to explain how or when they obtained the additional pages, simply saying they were “ordered.” ECF No. 152-2 ¶ 4. If Defendants used a different service, obtained the file on a different date, they may have received different documents. 7 PAIR does not list March 30, 2015 transactions Defendants claim were “omitted.” Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5674 Page 10 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 5 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 non-ESI discovery and responded to interrogatories and requests for admission. Id. One interrogatory and three non-ESI requests for production related to the expiration and revival of the ’589 Patent. Whitewater objected that these requests were not relevant because Defendants had not asserted an inequitable conduct claim. Defendants moved to compel responses to these requests. See Prior Action ECF No. 76-1 at 3:23-4:28. None of the discovery Defendants sought to compel called for the production of documents related to the transfer of the ’589 Patent files from Knobbe to Greenberg. Recognizing that its non-ESI discovery requests did not require the production of ESI responsive to the requests for production at issue, Defendants sought to compel additional ESI search terms related to those requests. Id. at 2 n2. Defendants did not seek sanctions against Whitewater. See, generally, ECF No. 76-1. On November 3, 2016, the Court granted Defendants’ motion with respect to the’589 Patent on the limited basis that the expiration and revival of that patent was relevant to Defendants’ laches and estoppel defenses. Prior Action ECF No. 96 at 15:11-12. However, the Court refused to require that Whitewater utilize any specific ESI search terms. Id. at 15:18-22. Instead, the Court required Whitewater to “produce responsive documents, including electronic documents” responsive to the interrogatory and requests for production at issue. Id. at 15:22-23. Whitewater was required to comply with the Order no later than November 18, 2016. Id. at 19:5-8. The Court denied the remainder of Defendants’ motion. 8 4. Whitewater And Its Counsel Comply In Good Faith With The Court’s November 3, 2016 Order In compliance with the Court’s order, Whitewater promptly searched the email accounts of all attorneys and staff who worked on any issues related to the 8 The Court denied Defendants request for (i) expiration and revival discovery related to the ’016 Patent and (ii) production of every document that “hit” on any of Defendants’ ESI search terms, regardless of relevance. Prior Action ECF 96 at 15:12-13; 18:22-19:1. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5675 Page 11 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 6 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 expiration and revival of the ’589 Patent for responsive ESI.9 Taché Decl. ¶ 9. Mr. Taché personally searched his own account for responsive emails. Id. ¶ 10. Since the Court had expressly rejected the use of specific keywords, Mr. Taché conducted a manual search. Id. In doing so, Mr. Taché sought to locate every email in his possession responsive to Defendants’ requests for production. Id. Despite his good faith efforts, Mr. Taché did not locate the January 22, 2015 Knobbe email in his search. Id. ¶ 11. Because Mr. Taché had no recollection of receiving the email, he had no reason to recognize it was missing or continue to search for it. Id. Had Mr. Taché located the email, it would have been produced. Id. On November 18, 2016, in compliance with the Court’s order, Whitewater provided a verified response to Interrogatory No. 1 that explained the expiration and revival process: “On Wednesday, February 4, 2015, Erickson C. Squier, counsel at Greenberg Traurig, LLP, independently discovered that the ’589 Patent had expired for failure to pay a maintenance fee and sent an email to J. Rick Taché informing him that the ’589 patent had expired.” Scott Decl. Ex. 8. Because Mr. Taché had no recollection of receiving the January 22, 2015 email, Whitewater honestly stated that it first learned of the expiration of the ’589 Patent on February 5, 2015 the day after it was discovered by Mr. Squier. Id. Whitewater’s response cannot in good faith be changed even now—Mr. Taché still has no recollection of the email, and Whitewater’s discovery of the expiration of the ’589 Patent and efforts to revive it were all driven by Mr. Squier’s independent discovery of the patent’s expiration. 5. Whitewater Complies In Good Faith With Document Discovery In This Action; The Court Rejects Defendants’ Request For Sanctions In this action, Defendants sought email ESI discovery for five custodians on various terms. Scott Decl. ¶ 7. Whitewater provided a full and complete production of all relevant documents that hit on the requested search terms. Id. 9 The parties subsequently negotiated certain additional email ESI search terms for specific non-attorney custodians. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5676 Page 12 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 7 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 None of these searches would have even “hit” on the January 22, 2015 email because the email was from Knobbe to Mr. Taché who was not one of the designated custodians. In addition, Defendants served non-ESI requests for production, including Request for Production No. 12, which called for the production of “All Documents and Things relating to the ’589 Patent exchanged between You and Knobbe, Martens, Olson & Bear, LLP.” Id. at Ex. 9. Whitewater provided a full and complete response to this request. Id. at Ex. 10. Because this request was not a specific request for email ESI under the Model ESI Order, it could not have resulted in the production of any of the emails, including attachments, produced by Knobbe. Model ESI Order ¶ 7. Whitewater initially objected to both ESI and non-ESI document discovery in this action. The Court has already found that Whitewater’s position was taken in good faith explaining: “there appears to have been a miscommunication between the parties and the Court” regarding the availability of RFPs and ESI and that “[t]he Court did not anticipate that either party would issue RFPs seeking either ESI or other documents.” ECF No. 133 at 6:21-28. Emphasizing the good faith basis of Whitewater’s position, the Court rejected Defendants’ request for sanctions on this issue. Id. at 23:20-22 (“Plaintiff’s position is in an appropriate response to a genuine issue of dispute and, especially in light of the miscommunication between the parties and the Court, reasonable people could differ about the requested RFPs”). 6. Mr. Squier Provides Complete And Truthful Testimony (Twice); The Court Denies Defendants’ Requests For Sanctions Regarding His Deposition On March 21 and July 13, 2018, Mr. Squier sat for deposition. Defendants’ questions focused significantly on Mr. Squier’s knowledge of the expiration and revival of the ’589 Patent. In each deposition, Mr. Squier testified that he first discovered the expiration of the ’589 Patent on February 4, 2018 and promptly notified Mr. Taché. (ECF No. 154-11 at 9:19-10:11, 91:6-7; ECF No. 154-12 at Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5677 Page 13 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 8 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 131:20-22, 159:21-23). Mr. Squier understood that Mr. Taché then communicated with the client, and subsequently instructed Mr. Squier to take the necessary steps to revive the patent. (ECF No. 154-11 at 92:12-14, 93:21-94:8; ECF No. 154-12 at 131:22-132:3, 159:23-160:2). Mr. Squier’s testimony was and is the truth. Mr. Squier did not learn of the expiration of the ’589 Patent prior to February 4, 2015. Squier Decl. ¶ 2. Mr. Taché never discussed the January 22, 2015 email with Mr. Squier. Squier Decl. ¶ 3; Taché Decl. ¶ 5. This is because Mr. Taché had no recollection of receiving the January 22, 2015 email. Taché Decl. ¶ 5. On June 8, 2018, between the dates of Mr. Squier’s two depositions, the Court resolved the parties’ dispute over the scope of Mr. Squier’s testimony. Specifically, the Court overruled Whitewater’s relevance objections and ordered Mr. Squier to appear for a second deposition. ECF No. 133 at 12:19-21. While the Court ordered Whitewater to pay the costs for that second deposition, the Court denied Defendants’ request for sanctions, stating: “Plaintiff’s position is in an appropriate response to a genuine issue of dispute . . . reasonable people could differ about . . . the scope of the deposition topics posed to Mr. Squier.” Id. at 23:20-23. 7. Defendants Issue A Subpoena to Knobbe, But Fail To Timely Seek Compliance On March 29, 2018, Defendants issued a subpoena to Knobbe that included two requests relating to maintenance fees and expiration and revival of the ’589 Patent. Scott Decl. Ex. 11. On April 13, 2018, Knobbe declined to produce documents in response to those two requests pending the resolution of the parties’ ongoing dispute regarding the relevance of the expiration and revival of the ’589 Patent, but responded to the remainder of the subpoena. Id. at Ex. 12. Knobbe stated its intent to fully comply with the subpoena upon receipt of a Court order or instruction from the parties that the dispute had been resolved. Id. On June 8, Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5678 Page 14 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 9 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 2018, the Court issued an order resolving that dispute. ECF No. 133. Defendants did not inform Knobbe of the Court’s June 8, 2018 order until July 11, 2018, nearly five weeks later, and only nine days before the close of discovery. Shean Decl., ¶ 2, Ex. 13. On July 19, 2018, Knobbe produced documents. Scott Decl, ¶ 12. Thus, had Defendants diligently pursued discovery, they would have received Knobbe’s production a full month before Mr. Squier’s second deposition and five weeks before the close of discovery, allowing them to take whatever additional discovery they believed was necessary. 8. Whitewater Explains Its Good Faith Conduct And Inadvertent Failure To Produce The January 22, 2015 Email; Defendants Insist Their Only Recourse Is Terminating Sanctions Upon receiving Knobbe’s July 19, 2018 production, Defendants identified three categories of documents produced or logged as privileged by Knobbe that they believed Whitewater should have previously disclosed (i) privileged documents between Knobbe and Thomas Lochtefeld, (ii) emails from Knobbe to Greenberg regarding the transfer of patent files, and (iii) the January 22, 2015 email from Knobbe to Mr. Taché . ECF No. 154-15. Based on Whitewater’s alleged failure to produce, Defendants demanded that Whitewater immediately dismiss its case. Id. Whitewater responded by noting the seriousness of the allegations and stated that it intended to conduct an investigation to determine the accuracy of Defendants’ claims. ECF No. 154-16 at 109-110. On July 27, 2018, Whitewater provided the results of its investigation explaining (i) the Lochtefeld documents had not been produced or logged as privileged because Defendants’ subpoenas did not call for the production of ESI under the Model ESI Order, (ii) the emails from Knobbe to Greenberg were not responsive to any of Defendants’ ESI requests to Whitewater, and (iii) the January 22, 2015 email was inadvertently omitted from Whitewater’s ESI productions because Mr. Taché did not recall receiving it and it was not located in Whitewater’s search for responsive ESI pursuant to the Court’s Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5679 Page 15 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 10 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 November 3, 2016 Order. ECF No. 154-16 at 106-107. Emphasizing the good faith nature of its investigation, Whitewater explained that it had contacted Greenberg and confirmed that the January 22, 2016 email did in fact exist in Greenberg’s servers, but had not been replied to or forwarded.10 Id. In an effort to address Defendants’ concerns Whitewater asked, “to the extent that PSD alleged to have been prejudiced in any way as a direct result of the inadvertent failure to produce this email prior to Knobbe’s recent production, please provide us with an explanation of any such prejudice along with your proposal as to how it can be best addressed by the parties.” Id. Defendants never provided any explanation of prejudice or proposal for how to resolve the issue; they insisted on moving forward with this motion. Scott Decl. ¶ 13. III. ARGUMENT11 A. The Emails Produced By Knobbe Do Not Affect Defendants’ Meritless Inequitable Conduct Defense Throughout its motion, Defendants argue that the January 22, 2015 email and other documents produced by Knobbe are bombshell revelations “hidden” by Whitewater that supposedly support, if not prove, Defendants’ inequitable conduct claim. This is factually and legally wrong. As an initial matter, Defendants falsely state that emails to Mr. Taché, other than the January 22, 2015 email, informed Mr. Taché of the expiration date of the ’589 Patent.12 None of these emails provide the maintenance fee due dates or 10 With the actual email in-hand, Greenberg was able to locate it within Mr. Taché’s email archive. Alvarez Decl. ¶ 3. The email does not reflect that it was ever replied to or forwarded. Id. at ¶ 4. Based on the information available, Greenberg cannot determine whether it was ever opened or read. Id. 11 Defendants’ motion briefly mentions the Court’s inherent power to sanction. The Court’s inherent authority should not be exercised for the same reasons terminating sanctions are not appropriate as set forth below. 12 See, e.g. 154-1 at 2:10-1 (“Most importantly, the Knobbe emails notified Mr. Taché when the maintenance fees for the ’589 Patent were due in the months leading up to its expiration”); 5 n.5 (“Whitewater ignores the many emails produced by Knobbe that reminded Plaintiff’s counsel about the ’589 Patent maintenance fee due date”); 7:20-22 (“Knobbe produced numerous emails . . . to Mr. Taché beginning in September 2014, informing him of the maintenance fees for the ’589 Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5680 Page 16 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 11 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 expiration date of the ’589 Patent.13 ECF No. 154-2 Ex. K at KM00094-00100. Thus, (i) Defendants deliberately misrepresent the content of these emails, (ii) these emails are not responsive to Defendants’ expiration and revival discovery compelled by the Court’s November 3, 2016 Order, and (iii) as emails, they are not responsive to Defendants non-ESI requests for production in this matter. Equally important, the January 22, 2015 email, sent three weeks after the ’589 Patent expired, has no bearing on the outcome of Defendants’ inequitable conduct affirmative defense and counterclaim. Inequitable conduct requires clear and convincing evidence of a specific intent to mislead or deceive the PTO. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1181 (Fed.Cir.1995); Astrazeneca Pharm. LP v. Teva Pharm. USA, Inc., 583 F.3d 766, 776 (Fed. Cir. 2009). “Mistake, negligence, even gross negligence, does not support a ruling of inequitable conduct.” Aspex Eyewear Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1316 (Fed. Cir. 2010). When reviving an expired patent for an unintentional failure to pay maintenance fees, the petitioner must verify that the entire period of delay was unintentional. 37 C.F.R. § 1.378; MPEP § 2590. While the statute does not provide specific examples of intentionality for revival, it does provide examples of intentional abandonment of a patent application.14 See 37 C.F.R. § 1.137; MPEP § 711.03. “Each of these examples shows either (1) a conscious decision to abandon the application; or (2) a conscious decision to deliberately delay prosecuting to avoid or at least postpone any additional expenses.” Aristocrat Techs. v. Int'l. Game Tech. & IGT, No. C-06-003717, 2011 U.S. Dist. LEXIS 48693, at *29 (N.D. Patent”); 14:24-25 (“Mr. Taché clearly had notice from September 2014 of the maintenance fe13 2. One email erroneously states “ ” however, the email does not act Ex. K at KM00098-99. 14 37 C.F.R. § 1.137 applies the same “unintentional” standard as 37 C.F.R. § 1.378. Ray v. Lehman, 55 F.3d 606, 608 (Fed. Cir. 1995) (“A late maintenance fee is considered under the same standard as that for reviving an abandoned application…”). Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5681 Page 17 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 12 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 Cal. May 6, 2011). Further, responses to comments in the Federal Register make clear that an “‘unintentional’ delay does not require that the delay have occurred despite the exercise of due care and diligence.” Id. at *30-31 (citation omitted). In other words, to be “intentional,” a delay in reviving a patent must be based on a conscious decision to delay revival, not alleged carelessness or lack of diligence. The existence of the January 22, 2015 email cannot support a finding of intentional delay. First, Mr. Taché cannot have made a deliberate decision not to pursue information in an email he does not recall receiving.15 Second, even if Mr. Taché saw the email, but, distracted by the personal issues that necessitated his leave of absence, failed to act for two weeks until Mr. Squier independently brought the expiration to Mr. Taché’s attention, that short lapse cannot constitute a “conscious decision” not to revive the patent. This is particularly true since neither Mr. Taché nor Whitewater had anything to gain through deliberate delay. Id. at *33-34 (“There is also no clear and convincing evidence that Mr. Islam deliberately delayed during the period from the June 2001 Decision up to the July 2002 Petition to Revive. Notably, there is no evidence to suggest that Mr. Islam had anything to gain from deliberate delay”). Similarly, the existence of the January 22, 2015 email cannot support a finding that Mr. Squier made any material misrepresentation to the PTO. Because Mr. Taché did not recall receiving the email, he did not (and could not have) disclosed its existence to Mr. Squier. Mr. Squier, for his part, could not have investigated a period of delay neither he nor Mr. Taché was aware of. Even if Mr. Taché had knowledge of the email, Mr. Squier did not and therefore had no obligation to disclose it to the PTO or conduct any investigation related to it. See 15 Defendants cast aspersions on Mr. Taché’s memory; however, a lack of memory cannot support a finding of intentionality absent evidence of a deliberate decision to delay. Aristocrat Techs., 2011 U.S. Dist. LEXIS 48693, at *34 (“Mr. Islam's testimony was disturbingly vague and his lack of memory difficult to believe. However, the evidence does not suggest that Mr. Islam deliberately decided to defy Aristocrat and Mr. Owens and intentionally delay prosecuting the 717 application.”). Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5682 Page 18 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 13 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 Barry v. Medtronic, Inc., 245 F. Supp. 3d 793, 818 (E.D. Tex. 2017) (“Because Mr. Henry was not aware of the references, he was not under a duty to disclose them to the PTO, and his omission cannot be the basis for Medtronic's inequitable conduct defense.” (citations omitted)).16 17 Thus, the documents produced by Knobbe cannot support Defendants’ inequitable conduct affirmative defense and counterclaim. B. The Only Potential Basis For Defendants’ Motion Is Whitewater’s Inadvertent Failure To Produce The January 22, 2015 Email Any sanctions sought under Rule 37 requires a prior order compelling discovery under Rule 37(a). Burley v. Gagacki, 729 F.3d 610, 618 (6th Cir. 2013), Unigard Sec. Ins. Co. v. Lakewood Eng. & Mfg. Corp., 982 F.2d 363, 367 (9th Cir. 1992). Defendants identify two orders Whitewater purportedly did not comply with: the Court’s June 8, 2018 Order in this action (ECF No. 133) and the Court’s November 3, 2016 Order in the Prior Action (Prior Action ECF No. 96).18 16 See also Asghari-Kamrani v. United Servs. Auto. Ass’n, 252 F. Supp. 3d 562, 581 (E.D. Va. 2017) (finding that there was no inequitable conduct when patent counsel certified the entire delay in correcting the priority claim was unintentional based on representations of former counsel, even when patent counsel did not further contact or question the other counsel); MPEP § 410 (“When a practitioner is submitting information (e.g., a statement of fact) from the applicant or a third party, or relying upon information from the applicant or a third party in his/her arguments, the office will consider a practitioner’s ‘inquiry reasonable under the circumstances’ duty under 37 CFR 11.18 met so long as the practitioner has no knowledge of information that is contrary to the information provided by the applicant or third party.”). 17 Defendants’ citation to 3D Med. Imaging Sys., LLC v. Visage Imaging, Inc., 228 F. Supp. 3d 1331 (N.D. Ga. 2017) is readily distinguishable. In 3D Med, the patentee had in fact made an express decision to abandon the patent due to lack of funds that ultimately led to bankruptcy, and counsel, despite knowledge of the timing of the lapse and subsequent bankruptcy, nevertheless certified without any knowledge (either personal knowledge or knowledge obtained from a third party) that the abandonment was unintentional. Id. at 1334-35. 18 Defendants also attempt to impute a “pattern of misconduct” based on the dismissal of the ’589 Patent for lack of standing in the Prior Action, and a motion to compel that Defendants filed, but was never heard. The baseless nature of Defendants’ allegations regarding standing are set forth in Whitewater’s opposition to Defendants’ motion for attorney’s fees in that matter. Prior Action ECF No. 255. Whitewater opposed Defendants’ motion to compel prior art documents (Prior Action ECF No. 199) because those documents were held by a third-party, Thomas Lochtefeld, and therefore could not be obtained through discovery requests to Whitewater. Prior Acton ECF No. 203. Defendants’ motion was dismissed as Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5683 Page 19 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 14 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 The Court’s June 8, 2018 Order overruled Whitewater’s objections that Defendants’ non-ESI Requests for Production (including request No. 12 that called for the production of “All Documents and Things relating to the ’589 Patent exchanged between You and Knobbe, Martens, Olson & Bear, LLP”) were not permitted under the Case Management Order. ECF No. 133. Whitewater provided a full and complete response to each request, including No. 12. Because these request did not encompass ESI, they could not have resulted in the production of any of the emails produced by Knobbe that form the basis of Defendants’ motion. Model ESI Order ¶ 7. Thus, Whitewater fully complied with the Court’s June 8, 2018 Order. The Court’s November 3, 2016 Order required Whitewater to respond to Defendants’ Interrogatory No. 1 and produce documents, including ESI, responsive to Defendants’ Request for Production Nos. 1-3 relating to the expiration and revival of the ’589 Patent. Prior Action ECF No. 96. The January 22, 2015 email does not change the completeness or veracity of Whitewater’s interrogatory response because Mr. Taché did not recall receiving the email, and did not locate it when searching for responsive documents for production. As a result, Whitewater could not include it as a factor in the timeline of the expiration and revival in its response. Thus, the only potential violation of the November 3, 2016 Order is Whitewater’s inadvertent failure to produce the January 22, 2015 email. C. Defendants Cannot Demonstrate That Whitewater Engaged In Willful Misconduct 1. Defendants Fail To Address Willfulness, Mandating Denial Of Their Motion Dispositive sanctions such as dismissal of the complaint are “authorized only in ‘extreme circumstances’ and only where the violation is ‘due to willfulness, bad faith, or fault of the party.’” In re Exxon Valdez, 102 F.3d 429, 432 (9th Cir. 1996) moot (Prior Action ECF No. 223). Defendants ultimately sought and obtained production from Mr. Lochtefeld. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5684 Page 20 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 15 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 (quoting United States ex rel Wiltec Guam, Inc. v. Kahaluu Constr. Co., 857 F.2d 600, 603 (9th Cir. 1988)). This is because dismissal of an action in its entirety represents the most severe penalty that can be imposed. Kahaluu Constr. Co., 857 F.2d at 603 n.5. Defendants’ motion fails to address willfulness as a required element for the imposition of terminating sanctions or provide any analysis of whether Whitewater’s alleged misconduct was willful. This alone is a basis to deny it. White v. Cinemark USA, Inc., No. 2:04-cv-397-GEB-CMK, 2005 U.S. Dist. LEXIS 42134, at *7-8 (E.D. Cal. Aug. 3, 2005) (“Defendant does not identify this necessary showing [of willfulness] as an element of a case-terminating sanction . . . Therefore, Defendant is not entitled to terminating sanctions under Rule 37 since this element will not be raised and addressed sua sponte.”). Any belated effort by Defendants to address this critical element in reply should be disregarded. Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007) (“The district court need not consider arguments raised for the first time in a reply brief.”). 2. Whitewater’s Inadvertent Failure To Produce The January 22, 2015 Email Was Not Willful To demonstrate “willfulness” or “bad faith,” the moving party must show “disobedient conduct not shown to be outside the control of the litigant. Henry v. Gill Indus., Inc., 983 F.2d 943, 948 (9th Cir. 1993) (citing Fjelstad v. Am. Honda Motor Co., 762 F.2d 1334, 1341 (9th Cir. 1985)). The requirement of “disobedient conduct . . . connotes deliberate malfeasance [and therefore] comports with traditional notions of willful action.” Fjelstad, 762 F.2d at 1431. “Mere inadvertence” cannot meet the requirements of “disobedient conduct.” L. Tarango Trucking v. Cty. of Contra Costa, 202 F.R.D. 614, 620 (N.D. Cal. 2001) (citing Fjelstad, 762 F.2d at 1341). Tarango Trucking emphasizes what behavior can meet the requirement of deliberate misconduct. During discovery, the defendant County destroyed several Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5685 Page 21 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 16 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 boxes of relevant records due to an error in labeling. Id. at 621. The court found that, while the destruction may have been grossly negligent, “that in and of itself [did not establish] either willfulness or bad faith on the part of the County” and “I don’t find that the document destruction was intentional.” Id. The court explained that an “ultimate finding” is not appropriate absent conduct that was “done on purpose, intentionally, in bad faith for the purpose of causing [plaintiffs] extreme difficulty in the presentation of [their] case.” Id. at 621-622. Subsequently, during the last two days of trial, the County produced 141 pages of previously undisclosed relevant documents, and after trial, produced an additional 94 pages of documents. Id. at 616. Even this was not sufficient to warrant terminating sanctions because the County’s counsel “concede[d] that the documents she produced at the end of trial should have been produced earlier, but attest[ed] that she did not deliberately withhold them” and counsel failed to learn of the existence of the documents sooner due to “distractions in her life because of her relocation to Hawaii in March 2001.” Id. at 622.19 In denying terminating sanctions, the court concluded, “Although there were serious discovery disputes prior to trial, Judge Hamilton expressly found that defendants had not acted willfully or in bad faith. Similarly, the Court finds that defendants did not act willfully or in bad faith in failing to produce key documents until the end of trial. . . Their failure to do so was grossly negligent, without question, but as there is no evidence of bad faith or willfulness, plaintiffs’ requested sanction of a default judgment is inappropriate. Similarly, plaintiffs’ request for evidentiary sanctions is also inappropriate.” Id. at 623. 19 The Court also cited “plaintiffs’ failure to aggressively seek out the documents” as “grossly negligent” and itself a basis for denying terminating sanctions. Tarango Trucking, 202 F.R.D. at 623. Here, had Defendants aggressively pursued its subpoena to Knobbe (rather than waiting nearly five weeks after the Court found the subpoenaed documents relevant) the January 22, 2015 email would have been produced weeks before the close of discovery, more than sufficient time to conduct discovery on the issue including examining Mr. Squier at his July 13, 2018 deposition. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5686 Page 22 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 17 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 Whitewater’s inadvertent failure to produce a single non-material email is far less drastic than the “grossly negligent” mistakes committed by the County in Tarango Trucking. On January 22, 2015, Mr. Taché was in the early weeks of a prolonged leave of absence due to serious, and understandably distracting, family issues. As a result, it is not surprising he does not recall receiving the email. Mr. Taché made a good faith effort to search his email account for emails responsive to the Court’s November 3, 2016 Order, but did not locate the January 22, 2015 email. Mr. Taché could not have been expected to recognize the omission of an email that he did not recall receiving. Further, in contrast to the prior orders in Tarango Trucking, the Court’s orders here did not find that Whitewater engaged in any improper conduct (negligent or otherwise) or impose sanctions. See Section III(B)(4) below. Thus, Defendants’ motion should be denied because Whitewater’s conduct was not willful. 3. Even If “Willful,” The Delayed Production Of The January 22, 2015 Email Cannot Support Terminating Sanctions Even if Whitewater’s inadvertent failure to produce the January 22, 2015 email were “willful,” a “single willful violation” of a discovery order does not merit dismissal. Fjelstad, 762 F.2d at 1342-1343 (reversing entry of partial default where defendant had significantly complied with discovery, but “willfully” failed to respond to one interrogatory even after being specifically ordered to respond fully and completely without objection); Halaco Eng'g. Co. v. Costle, 843 F.2d 376, 381 (9th Cir. 1988) (single act of producing an inaccurate report in discovery insufficient to warrant dismissal); Bernard v. Ricketts, No. 91-16701, 1993 U.S. App. LEXIS 4478, at *2 (9th Cir. Feb. 26, 1993) (“A single violation of a discovery order does not ordinarily justify dismissal.”); Doyle v. F/V Infinite Glory, No. 3:12- cv-00179-TMB-DMS, 2015 U.S. Dist. LEXIS 183430, at *10 (D. Alaska Jan. 12, 2015) (single disobedient act insufficient to support dismissal “[b]ecause there is no pattern of [party’s] willful disregard of court orders”). Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5687 Page 23 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 18 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 As set forth above, the only act on which sanctions can possibly be based is Whitewater’s inadvertent failure to produce the January 22, 2015 email. Whitewater has fully complied with all discovery requests and all Court orders in every other respect, including the production of nearly 80,000 emails and attachments in response to Defendants’ ESI requests. In these circumstances, dismissing Whitewater’s claims because of a single purported violation of November 3, 2016 Order, even if that violation is found to be willful, would be unjust. Fjelstad, 762 F.2d at 1343 (Reversing the district court finding, “In these circumstances, allowing American Honda to suffer partial default judgment because of its single willful violation of the July 29 order would be unjust”); Network Appliance, Inc. v. Bluearc Corp., No. C 03-5665 MHP, 2005 U.S. Dist. LEXIS 16726 at *9-10 (N.D. Cal. Jun. 27, 2005) (denying sanctions despite failure to produce where “there can be no doubt that defendant made a reasonable effort to respond to the court’s order to compel”). Whitewater anticipates Defendants will attempt to rely on the oft quoted phrase “a single willful violation may suffice depending on the circumstances.” See, e.g. Chambers v. Janssen Pharm., Inc., No. 16CV762-JAH (BLM), 2018 U.S. Dist. LEXIS 131011, at *9 (S.D. Cal. Aug. 3, 2018) (citations omitted). However, that argument is not only the exception that makes the rule, but also misstates the cases on which it is based. The two cases consistently cited for this proposition each specifically hold that their decisions were not based on a single violation. Valley Eng’rs., Inc. v. Electric Eng’g. Co., 158 F.3d 1051, 1056 (9th Cir. 1998) (“[t]he failure to produce the Carroll memorandum was not a single violation of a single court order”); Ortiz-Rivera v. Mun. Gov’t. of Toa Alta, 214 F.R.D. 51, 58 (D.P.R.2003) (“the Court is not dealing with a single violation”). Of the two Valley Engineers is closer to the present facts as it dealt with the failure to produce a single document.20 Valley Engineers exemplifies the extreme 20 Ortiz-Rivera involved the plaintiff’s taking of depositions even before the Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5688 Page 24 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 19 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 conduct that must be demonstrated to warrant terminating sanctions. There, the defendant’s project manager, John Carroll, falsely claimed not to recall writing a memorandum that admitted that the construction project at issue could not have been completed on time, undermining Electrical Engineering’s defense that other parties were responsible for delays in the project’s completion. Id. at 1054. Defendants deliberately and repeatedly failed to produce the document despite a handwritten note by another witness stating that the memorandum had been discussed in a meeting, and the fact that a copy had been disclosed to (but apparently not noticed by) at least one party. Id. at 1054-55. In imposing terminating sanctions for withholding this single document, the court referred to it as the “most important four pages” in the case and emphasized that “[t]he failure to produce the Carroll memorandum was not a single violation of a single court order” but multiple orders that included the imposition of monetary sanctions and the waiver of objections. Id. at 1056. The facts in Valley Engineering go well beyond even Defendants’ dramatic re-telling of the facts at issue here: (i) Mr. Taché was sent a non-material email that he does not recall receiving; (ii) the January 22, 2015 email was not discussed with colleagues; (iii) the email was not produced and then withdrawn and hidden, it was never located; and (iv) neither Mr. Taché nor Whitewater had any reason to hide the January 22, 2015 email. At most, the email discloses an immaterial two-week gap between when Knobbe wrote Mr. Taché about the expiration of the ’589 Patent and February 4, 2018, when Mr. Squier wrote Mr. Taché about the expiration. Thus, Whitewater’s inadvertent failure to produce the January 22, 2015 email cannot support terminating sanctions.21 defendant was served and serial violations of the Court’s scheduling order including failure to timely designate experts and failure to timely respond to interrogatories. 214 F.R.D. at 58. 21 Whitewater is unaware of any case where the inadvertent failure to produce a single document, that arguably violates a single order, provides sufficient grounds to warrant terminating sanctions, and Defendants have cited none. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5689 Page 25 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 20 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 D. The Five Remaining Factors Weigh Against Dismissal The Court’s analysis should end with Defendants’ failure to establish a sufficient willful violation of a Court order, but Whitewater will nonetheless address the remaining factors, none of which support terminating sanctions: “(1) the public's interest in expeditious resolution of litigation; (2) the court's need to manage its docket; (3) the risk of prejudice to the [party seeking sanctions]; (4) the public policy favoring disposition of cases on their merits and (5) the availability of less drastic sanctions.” Thompson v. Hous. Auth. of City of Los Angeles, 782 F.2d 829, 831 (9th Cir. 1986); Alexis v. Rogers, No. 15cv691-CAB (BLM), 2017 U.S. Dist. LEXIS 72920, at *12-13 (S.D. Cal. May 12, 2017). 1. Any Issues Relating To The January 22, 2018 Email Can Be Resolved Within The Court’s Existing Schedule This Court has previously held that where a case is proceeding to trial on its current schedule, the first and second factors weigh against terminating sanctions. Klund v. High Tech. Sols., Inc., No. 05CV0565-JAH (BLM), 2006 U.S. Dist. LEXIS 12163, at *17-18 (S.D. Cal. Feb. 23, 2006) (“all but one of these factors militate against a recommendation that default judgment be entered . . . this case is proceeding to trial on schedule”). Here, Defendants have presented no reason why this case cannot proceed to the Final Pre-trial conference currently scheduled for February 11, 2019. There is no reason that limited discovery directly related to the January 22, 2015 email and its purported impact on the timing of the revival of the ’589 Patent cannot be achieved through a limited re-opening of fact discovery and a limited continuance of expert discovery deadlines, without affecting the remainder of the current schedule. 22 This Court has also held that the culpability of the moving party in the 22 At most, Defendants suggest that, had the January 22, 2015 email been produced sooner, they may have deposed Mr. Taché, and that information regarding the January 22, 2015 email may be relevant to expert discovery. Defendants’ attempt to revive their subpoena to Greenberg is improper. Defendants never served Greenberg and failed to pursue the issue for months. See ECF No. 154-18. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5690 Page 26 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 21 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 complained of delays is relevant to the determination of the first two factors. Id. (noting “the recent impediments to this case’s progress cannot be attributed solely to Defendants”). Here, Defendants failed to inform Knobbe of the Court’s June 8, 2018 Order compelling production until July 11, 2018. Had Defendants acted with any diligence, they would have received the production weeks prior to the close of discovery, allowing them to take any other discovery they believed was necessary within the then-existing deadlines. Defendants attempt to attribute delays in this case to any purportedly improper conduct by Whitewater fall flat. The only scheduling change attributable to a discovery dispute in this matter were the Court’s June 8, 2018 Order extended fact discovery while finding Whitewater’s discovery positions to be reasonable (ECF No. 133), and June 12, 2018 Order continuing remaining dates to comport with the June 8, 2018 Order. ECF No. 140.23 Thus, the first and second factors weigh against dismissal. 2. Any Limited Prejudice Weighs Against Dismissal Because Defendants’ Sanctions Request Is Purely Punitive The element of prejudice is essential, but “sanctions which interfere with the litigants’ claim or defenses violate due process when they are imposed ‘merely for punishment of an infraction that did not threaten to interfere with the rightful decision of the case.’ Delay alone, without a focus on its effects, will not justify dismissal or default.” Wanderer v. Johnston, 910 F.2d 652, 656 (9th Cir. 1990) (citing Wyle v. R.J. Reynolds Indus., Inc., 709 F.2d 585, 591 (9th Cir. 1983)). Defendants seek sanctions for no other purpose than to punish Whitewater “for an infraction that did not threaten or interfere with the rightful decision of the case.” Id. As explained above, the existence or absence of the January 22, 2015 email has no bearing on the outcome of Defendants’ meritless inequitable conduct 23 All other modifications to the scheduling order were made by joint motion. One because Whitewater’s counsel switched firms. ECF No. 88. And another to allow both parties time to complete desired discovery. ECF No. 107. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5691 Page 27 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 22 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 affirmative defense and counterclaim. The email is not “the most important [document]” in the case as was the memorandum in Valley Engineering. Its relevance is limited to exactly what Defendants use it for here: to insult Whitewater’s counsel and falsely accuse Mr. Squier of perjury. The only prejudice is delay, for which Defendants are equally at fault. Tarango Trucking, 202 F.R.D. at 623 (terminating sanctions denied where moving party partly at fault for delayed discovery of documents). All of the supposed ills cited by Defendants can be cured through discovery that could have been completed already had Defendants diligently pursued the Knobbe subpoena.24 Even if some prejudice exists, “[w]hether prejudice is sufficient to support an order of dismissal is in part judged with reference to the strength of the plaintiff’s excuse for the default.” Alexis v. Rogers, No. 15cv691-CAB (BLM), 2017 U.S. Dist. LEXIS 72920, at *18 (S.D. Cal. May 12, 2017) (Malone v. United States Postal Serv., 833 F.2d 128, 131 (9th Cir. 1987)). Defendants’ impugning counsel’s integrity does nothing to change the strength and veracity of Whitewater’s explanation: Mr. Taché did not, and does not, recall receiving the January 22, 2015 email. It is wholly understandable that Mr. Taché’s family circumstances in early 2015 distracted him sufficiently that he did not pay attention to outside email. When later called to produce emails relating to the expiration and revival of the ’589 Patent, Mr. Taché undertook a good faith effort to do so, but did not locate the January 22, 2015 email. Because he did not recall receiving it, he had no reason to recognize it was missing or look further. Defendants offer no contrary proof, nor can they. As a result, this factor weighs against dismissal. 3. Public Policy Favors Disposing Of This Case On The Merits The public policy favoring disposition of cases on their merits always weighs 24 Defendants’ claim that it would have made different “strategic decisions as to its pleading [and case strategy]” had it known about the January 22, 2015 email ring false. Defendants tried and failed to add an inequitable conduct claim in the Prior Action, and then added it and pursued it in this action. Knowledge of the January 22, 2015 email would not have changed that strategy. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5692 Page 28 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 23 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 against dismissal. Alexis, 2017 U.S. Dist. LEXIS 72920 at *20-21 (citing Pagtalunan v. Galaza, 291 F.3d 639, 643 (9th Cir. 2002)). The facts of this case strongly support addressing its merits. Less than two weeks after Pacific Surf Designs was established, its co-founder, Richard Alleshouse openly admitted that its sole purpose was to infringe on Whitewater’s patents, referring to Pacific Surf Designs’ products as “ .” Ex. 1. Mr. Alleshouse went on, asking how Pacific Surf Designs could attempt to evade liability for their infringement through superficial changes to their products: “ ” Id. The mandate that this factor weigh against dismissal is only abrogated where the party opposing dismissal has not moved the case forward at a reasonable pace, or has engaged in dilatory or evasive tactics. Id. (citations omitted). As noted above, the only scheduling changes attributable to any discovery dispute in this matter were the Court’s June 8, 2018 Order that extended fact discovery while finding Whitewater’s discovery positions to be reasonable (ECF No. 133), and June 12, 2018 Order continuing remaining dates to comport with the June 8, 2018 Order. ECF No. 140. Further, for the reasons set forth throughout this brief, Whitewater has not engaged in dilatory or evasive tactics. Whitewater has at all times comported with its discovery obligations and complied with all Court orders. Thus, this factor weighs against dismissal. 4. Lesser Sanctions Are Available, Were Not Previously Imposed, and No Prior Warnings Were Given The final factor used to determine whether terminating sanctions should be imposed is “the availability of less drastic sanctions.” Thompson, 782 F.2d at 831. “The sub-parts of the fifth factor are whether the court has considered lesser sanctions, whether it tried them, and whether it warned the recalcitrant party about the possibility of case-dispositive sanctions.” Conn. Gen. Life Ins. Co. v. New Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5693 Page 29 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 24 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 Image of Beverly Hills, 482 F.3d 1091, 1096 (9th Cir. 2007). There can be no legitimate dispute that the second and third sub-parts are not met here. The Court has never sanctioned Whitewater or indicated in any way that Whitewater’s discovery conduct was improper. Defendants did not even seek sanctions when moving to compel expiration and revival discovery in the Prior Action. See, Prior Action ECF No. 76-1. The Court’s June 8, 2018 Order expressly denied sanctions against Whitewater finding “Plaintiff’s position is in an appropriate response to a genuine issue of dispute and . . . reasonable people could differ about the requested RFPs as well as the scope of the deposition topics posed to Mr. Squier.” ECF No. 133 at 23:20-27. Similarly, the Court has never warned Whitewater that its claims could be dismissed due to its discovery conduct. Alexis, 2017 U.S. Dist. LEXIS 72920 at *22 (“If a court fails to warn a claimant ‘explicitly or implicitly that their procedural lapses might result in a judgment against them’ then it places that court's order of dismissal ‘in serious jeopardy.’” (citations omitted)). With respect to the first sub-part, Defendants focus on issue or evidentiary sanctions, but fail to discuss any other options. Because they would be tantamount to dismissal, any argument in favor of issue or evidentiary sanctions fails for the same reasons Defendants’ motion for terminating sanctions fails. R&R Sails, Inc. v. Ins. Co. of Penn., 673 F.3d 1240, 1247 (9th Cir. 2012) (“Under this circuit's law, because the sanction amounted to dismissal of a claim, the district court was required to consider whether the claimed noncompliance involved willfulness, fault, or bad faith, and also to consider the availability of lesser sanctions.”). Even if considered separately, Defendants cannot establish a basis for a preclusion ruling because they have not demonstrated any bad faith or willfulness. Amersham Pharmacia Biotech, Inc. v. Perkin Elmer Corp., 190 F.R.D. 644, 649 (N.D. Cal. 2000) (preclusion “wholly unwarranted in the absence of any indicia of bad faith” (citations omitted)). Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5694 Page 30 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 25 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 While Whitewater does not concede that any sanctions are appropriate in response to an inadvertent failure to produce a single, non-material, email, there are numerous lesser options available to the Court. Bernard, 1993 U.S. App. LEXIS 4478 at *2 (listing “many alternative sanctions” including “a warning, a formal reprimand” and monetary sanctions); Fed. Rule Civ. Proc. 37(b)(2) (listing available remedies). Moreover, Defendants refused Whitewater’s request to discuss lesser alternatives, insisting on filing this motion. Network Appliance, 2005 U.S. Dist. LEXIS at *12 (“That plaintiff rejected this offer [to resolve the issue] and instead elected to file a motion for sanctions does not require the court to indulge such overly confrontational litigation tactics.”). Thus, the fifth factor weighs against dismissal. IV. CONCLUSION For the foregoing reasons, Defendants’ motion for terminating sanctions should be denied. DATED: August 15, 2018 BUCHALTER A Professional Corporation By: /s/ J. Rick Taché ________________ J. Rick Taché Roger L. Scott Erikson C. Squier Attorneys for Plaintiff Whitewater West Industries, Ltd. Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5695 Page 31 of 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BUCHALTER A P R O F E S S I O N A L C O R P O R A T I O N I R V I N E 26 PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS Case No. 3:17-cv-01118-BEN-BLM BN 33762123v5 CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on August 15, 2018, to all counsel of record who are deemed to have consented to electronic service via the Court’s CM/ECF system per Civil Local Rule 5.4. Any counsel of record who have not consented to electronic service through the Court’s CM/ECF system will be served by electronic mail, first class mail, facsimile and/or overnight delivery. /s/ Roger L. Scott________________ Roger L. Scott Case 3:17-cv-01118-BEN-BLM Document 158 Filed 08/15/18 PageID.5696 Page 32 of 32