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Blue Gentian, LLC v. Tristar Products, Inc.

United States District Court, D. New Jersey

November 14, 2017



          EDWARD F. MCHALE BRIAN M. TAILLON KENNETH W. COHEN ANDREW D. LOCKTON MCHALE & SLAVIN, P.A. Appearing pro hac vice on behalf of Plaintiffs

          EDWARD P. BAKOS NOAM J. KRITZER BAKOS & KRITZER On behalf of Defendants


          NOEL L. HILLMAN, U.S.D.J.

         This is an appeal from United States Magistrate Judge Ann Marie Donio's March 21, 2017 Order requiring Plaintiffs Blue Gentian, LLC and National Express, Inc. (“Plaintiffs”) to produce an unredacted version of a September 1, 2015 Settlement and License Agreement (“the Agreement”) between Plaintiffs and Telebrands. Plaintiffs appealed the Order before this Court, arguing the Magistrate Judge committed clear error. For the reasons that follow, this Court will affirm the decision.


         The Court takes its brief recitation of the facts from the Magistrate Judge's March 21, 2017 Order. This case is a patent-infringement action relating to an expandable hose product. Plaintiffs allege Blue Gentian, LCC is the owner of U.S. Patent No. 8, 757, 213, which is a continuation of several other patents. Additionally, Plaintiffs allege Blue Gentian, LLC is the owner of U.S. Design Patent D722, 681, which is a continuation in part of an earlier design patent. Plaintiffs assert claims of direct infringement of these patents pursuant to 35 U.S.C. § 271(a) and indirect infringement of these patents pursuant to 35 U.S.C. § 271(b) and (c). Defendants contest these claims and assert counterclaims of noninfringement and invalidity against Plaintiffs.

         On March 25, 2016, Defendants filed a Motion to Compel the production of an unredacted copy of the Agreement. This Agreement concerned litigation between Plaintiffs and Telebrands.[2] The litigation involved claims by Telebrands against Plaintiffs seeking declaratory relief that certain patents were invalid or not enforceable and that Telebrands was not infringing certain patents, and claims by Plaintiffs for infringement of certain patents. The Agreement originally produced by Plaintiffs was redacted. Specifically, Plaintiffs redacted Paragraphs 1.5, 1.6, 1.7, 5.4, 6.1, 6.2, and 6.3 in full, as well as Paragraph 3.1, in part.

         After conducting oral argument and an in camera review of the Agreement, the Magistrate Judge granted Defendants' Motion to Compel. In making that decision, the Magistrate Judge ordered Plaintiffs to produce the Agreement “with Paragraphs 1.5, 1.6, 1.7, 3.1, 5.4, 6.1, 6.2, and 6.3 in their unredacted form.” She further ordered “that counsel for Defendants shall maintain the unredacted Agreement on an Attorneys' Eyes Only basis and shall not share any portion with in-house counsel for Defendants.” The Magistrate Judge found the complete Agreement was discoverable upon consideration of the factors set forth in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.Supp. 1116 (S.D.N.Y. May 28, 1970). The Magistrate Judge found the “confidentiality concerns . . . do not outweigh the relevance of the discovery to the determination of a reasonable royalty rate in this case.” Specifically, the Magistrate Judge found “Paragraphs 1.5, 1.6, and 1.7 concern Plaintiffs' and Telebrands' ability to license the Patents-in-Suit, ” making them “relevant to the reasonable royalty analysis.” The Magistrate Judge further found “Paragraphs 5.4, 6.1, 6.2, and 6.3 are also relevant to the determination of a reasonable royalty rate, ” as they “concern the ongoing business relationship between Plaintiffs and Telebrands.” Finally, the Magistrate Judge found “Paragraph 3.1 . . . is relevant to a determination of whether the [lump sum settlement amount] constitutes a front end royalty.”

         On April 4, 2017, Plaintiffs appealed the Magistrate Judge's decision to this Court.[3]


         Federal Rule of Civil Procedure 72(a) provides:

When a pretrial matter not dispositive of a party's claim or defense is referred to a magistrate judge to hear and decide, the magistrate judge must promptly conduct the required proceedings and, when appropriate, issue a written order stating the decision. A party may serve and file objections to the order within 14 days after being served with a copy. A party may not assign as error a defect in the order not timely objected to. The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.[4]

         Thus, Rule 72(a) requires this Court adhere to a “clearly erroneous” or “contrary to law” standard of review. This standard requires the Court accord the Magistrate Judge “wide discretion.” United States v. Sensient Colors, Inc., 649 F.Supp.2d 309, 314-15 (D.N.J. 2009) (quoting Miller v. Beneficiary Mgmt. Corp., 844 F.Supp. 990, 997 (D.N.J. 1993)).

         “A magistrate judge's decision is clearly erroneous ‘when, although there may be some evidence to support it, the reviewing court, after considering the entirety of the evidence, is “left with the definite and firm conviction that a mistake has been committed.”'” Id. at 315 (quoting Kounelis v. Sherrer, 529 F.Supp.2d 503, 518 (D.N.J. 2008)). “A magistrate judge's decision is contrary to law when he or she has ‘misinterpreted or misapplied applicable law.'” Id. (quoting Kounelis, 529 F.Supp.2d at 518). “Particular deference is accorded to magistrate judges on discovery issues.” Costa v. County of Burlington, 584 F.Supp.2d 681, 684 n.2 (D.N.J. 2008).

         “The burden of demonstrating clear error rests with the appealing party.” Sensient Colors, 649 F.Supp.2d at 315 ...

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