United States District Court, D. New Mexico
DENTSPLY SIRONA INC and TULSA PRODUCTS LCCS d/b/a DENTSPLY SIRONA ENDODONTICS, Plaintiffs,
EDGE ENDO, LLC and U.S. ENDODONTICS, LLC Defendants.
MEMORANDUM OPINION AND ORDER DENYING PLAINTIFFS'
MOTION TO COMPEL
C YARBROUGH UNITED STATES MAGISTRATE JUDGE
MATTER comes before the Court on Plaintiffs'
Motion to Compel the Production of Documents Withheld by
Defendants Based Upon Their Improper Claims of
Attorney-Client Privilege, filed August 28, 2019 and fully
briefed September 26, 2019. Docs. 235, 241, 254. Having
considered the parties' arguments and all relevant
authority, the Court denies Plaintiffs' Motion to Compel
bring this patent infringement case alleging that Defendants
infringed upon four published patents. Both parties design
and sell endodontic drill files. Plaintiffs filed their
Complaint on October 16, 2017, Doc. 1, an Amended Complaint
on November 16, 2017, Doc. 27, and a Second Amended Complaint
on March 27, 2018, Doc. 68. On January 16, 2018, the Court
held a scheduling conference and entered a Scheduling Order.
Doc. 47. On July 10, 2018, Defendants moved to stay the case
pending inter partes review by the United States
Patent Office's Patent Trial and Appeal Board. Doc. 147.
The Court granted the stay on October 3, 2018, Doc. 177, and
subsequently lifted the stay on January 23, 2019, Doc. 179.
The Court held a status conference on February 12, 2019 to
discuss remaining scheduling order dates. Doc. 183. After
hearing arguments from the parties regarding proposed dates,
the Court advised the parties that it would enter a
scheduling order after reviewing any renewed discovery
motions and after conferring with the presiding judge.
Id. The presiding judge, the Honorable Joseph F.
Bataillon, held a Markman hearing on June 17, 2019,
Doc. 205, and issued a Markman Order on August 29,
2019, Doc. 237.
instant motion, Plaintiffs seek production of certain
documents withheld by Defendants. Specifically, on August 24,
2018, Defendants served Plaintiffs with a privilege log of
documents they withheld from Plaintiffs based on
attorney-client privilege and work product. Docs. 236-2,
241-7. Of those withheld, Plaintiffs seek production of 28
documents: privilege log entry numbers 56-58, 76-80, 82-87,
89-94, 100-104, 147, and 159-160. Those specific documents
are communications either to or from Tina Dunk, which
Defendants describe as “communication reflecting legal
advice regarding” advertising, trademarks, or marketing
campaign. Doc. 326-2, 241-7. Tina Dunk is an Account
Executive with K2MD, a marketing and advertising agency that
Defendant Edge Endo, LLC worked with. Plaintiffs assert that
because Defendants shared the communications with an outside
third-party (K2MD), they have waived any attorney-client
privilege. Defendants, on the other hand, assert that K2MD is
the functional equivalent of an Edge Endo employee, and they
therefore have not waived entitlement to attorney-client
addressing the parties' arguments on attorney-client
privilege, the Court must determine if Plaintiffs' Motion
to Compel is timely. Under this District's Local Rules,
“[a] party served with objections to [a] request for
production or inspection . . . must proceed under
D.N.M.LR-CIV. 37.1 [for motions to compel] within twenty-one
(21) days of service of an objection.” D.N.M.LR-CIV
26.6. “Failure to proceed within this time period
constitutes acceptance of the objection.” Id.
Defendants assert, and Plaintiffs do not dispute, that
Defendants served the privilege log on Plaintiffs on August
24, 2018. Accordingly, Plaintiffs had until September 14,
2018 to move to compel further information. Yet, Plaintiffs
waited to file the instant motion until August 28, 2019 -
nearly a year later. Even omitting the period from October 3,
2018 to January 23, 2019 when the Court stayed this case,
Plaintiffs are several months past their 21-day deadline.
argue that “Local Rule 26.6 does not, by it express or
implied language, create a 21-day period for filing a motion
following service of a privilege log.” Doc. 254 at 14.
The Court disagrees. By that reasoning, Plaintiffs would have
an indefinite amount of time to object to a privilege log.
Rather, Local Rule 26.6 applies, in part, to objections to
requests for production. A privilege log is essentially an
objection to a request for production: it is a list of
documents that a party objects to disclosing on the basis
that the documents are privileged. See Fed. R. Civ.
P. 26(b)(5) (“When a party withholds information
otherwise discoverable by claiming that the information is
privileged . . ., the party must: (1) expressly make the
claim; and (2) describe the nature of the documents,
communications, or tangible things not produced or
disclosed-and do so in a manner that, without revealing
information itself privileged or protected, will enable other
parties to assess the claim.”); Fed.R.Civ.P.
34(b)(2)(C) (“An objection [to a request for
production] must state whether any responsive materials are
being withheld on the basis of that objection.”).
Plaintiffs therefore had 21 days under Local Rule 26.6 to
challenge the privilege log. See Sedillo Elec. v.
Colorado Cas. Ins. Co., No.15-1172 (D.N.M. Mar. 9, 2017)
(holding that a challenge to a privilege log is subject to
Rule 26.6). Or, if Plaintiffs needed more time, they could
have requested it, but they did not.
further argue that “[t]o the extent Local Rule 26.6
even pertains to this motion, the period for filing a motion
to compel should be calculated from the date on which
Defendants complete document production with respect to the
relevant requests.” Doc. 254 at 15. True, Local Rule
26.6 requires motions to compel within 21 days of service of
an objection, “unless the response specifies that
documents will be produced or inspection allowed.”
D.N.M.LR-CIV 26.6. “In this case, the party must
proceed under D.N.M.LR-CIV 37.1 within twenty-one (21) days
after production or inspection of the documents.”
Id. However, that is not the case here. While
Plaintiffs argue that Defendants have not produced documents
responsive to other outstanding requests, there is no
indication that, when producing the privilege log at issue in
this motion, Defendants specified that they would produce
further documents. Accordingly, Plaintiffs had 21 days to
object to the privilege log.
failure to file within the required deadline is sufficient
grounds for the Court to deny their Motion to Compel.
See D.N.M.LR-CIV 26.6 (“Failure to proceed
within this time period constitutes acceptance of the
objection.”); Thymes v. Verizon Wireless,
Inc., No. 16-66 KG/WPL, 2017 WL 4534838, at *2 (D.N.M.
Feb. 9, 2017) (holding that a violation of Local Rule 26.6.
is sufficient grounds on its own to deny a motion to compel).
The Court may, however, alter the 21-day deadline on a
showing of good cause. D.N.M.LR-CIV 26.6.
offer the following explanation to show good cause for an
extension: On August 9, 2019 and August 15, 2019, Plaintiffs
took the depositions of Damien Maestas and Juliet Bates,
respectively. Mr. Maestas is Defendant Edge Endo's
Research and Development manager and testified that K2MD
employees are not employees of Edge Endo. Doc. 236-7. Ms.
Bates testified that Edge Endo no longer uses any external
marketing firms. Doc. 236-10. Plaintiffs assert that those
two depositions “revealed key information to the
weaknesses of Defendants' privilege claims, ” and
that they promptly moved to compel following those
deposition. Doc. 254 at 16.
however, does not explain why Plaintiffs could not bring
their motion to compel in September 2018. The information
gained in the two depositions only confirmed Plaintiffs'
theory that K2MD employees were not employees of Edge Endo.
The depositions did not, for the first time, reveal that K2MD
employees were not employees of Edge Endo. Indeed, on June 6,
2019, before either deposition took place, Plaintiffs'
counsel sent a letter to defense counsel calling into
question Defendants' assertion of attorney-client
privilege between Defendants and a third party. Doc. 236-3.
Defendants confirmed their assertion of that privilege in a
letter to Plaintiffs on June 25, 2019. Doc. 236-4. Plaintiffs
responded on June 26, 2019, asserting essentially the same
argument they later make in their Motion to Compel: “It
is our understanding that, at the time of the relevant
communications, Tina Dunk was an account manager at ¶
2MD, an advertising agency with which Defendants did not
share common legal interests, ” and
“Defendants' assertion of common interest privilege
as to these documents is without merit.” Doc. 236-5.
Plaintiffs then waited 63 days to file a motion to compel,
which was almost year after initially receiving the privilege
Court notes that it is generally receptive to motions to
extend the 21-day period to file a motion to compel. Such
extensions allow the parties to resolve disputes informally
and without costly briefing. The Court further applauds the
parties' meet and confer efforts that took place before
Plaintiffs filed the instant motion. However, Plaintiffs
should have initiated those efforts in August and September
of 2018, when they first received the privilege log, not ten
months later. To that point, Plaintiffs recently opposed
Defendants' requests for appointment of commissioners to
oversee discovery in France and Switzerland, arguing in part
that Defendants' requests were untimely. Docs. 219, 228.
Specifically, Plaintiffs asserted that Defendants'
requests should be denied because Defendants had known for
over a year that they would need the desired discovery, but
failed to promptly request it. Doc. 219 at 5; Doc. 228 at 2.
Plaintiffs are now trying to counter essentially that same
argument. In deciding the previous discovery issue, the Court
found that Defendants' requests were not untimely because
there is currently no discovery deadline set in the case.
Doc. 245. In contrast, Local Rule 26.6 set a very clear
deadline by which Plaintiffs must file their motion to compel
and Plaintiffs did not meet that deadline or show good cause
to extend it.
both sides request that the Court award them their costs
associated with bringing the motion or responding to the
motion. Because the Court denies Plaintiffs' motion, it
also denies Plaintiffs' request for costs. See
Fed. R. Civ. P. 37(a)(5)(A). The Court also denies
Defendants' request for costs. Rule 37(a)(5)(B) requires
that if the court denies a motion to compel, it must order
the movant, the attorney filing the motion, or both, after
giving them an opportunity to be heard, to pay the party
opposing the motion its reasonable expenses incurred in
opposing the motion. Fed.R.Civ.P. 37(a)(5)(B). However, the
court “must not order this payment if the motion was
substantially justified or other circumstances make an award
of expenses unjust.” Id. As discussed above,
the Court recently granted Defendants' requests for
international discovery, holding that the requests were
timely. While that situation is distinguishable from the
instant motion, the Court finds that, in light ...