United States District Court, D. New Jersey
BLUE GENTIAN, LLC, NATIONAL EXPRESS, INC., and TELEBRANDS CORP., Plaintiffs,
TRISTAR PRODUCTS, INC. and WAL-MART STORES, INC. d/b/a SAM'S CLUB and SAM'S WHOLESALE CLUB, Defendants.
R. CURTIN GEORGE C. JONES GRAHAM CURTIN A PROFESSIONAL
CORPORATION On behalf of Plaintiffs
F. MCHALE BRIAN M. TAILLON KENNETH W. COHEN ANDREW D. LOCKTON
MCHALE & SLAVIN, P.A. Appearing pro hac vice on behalf of
P. BAKOS NOAM J. KRITZER BAKOS & KRITZER On behalf of
L. HILLMAN, U.S.D.J.
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.
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
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. 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.
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.”
April 4, 2017, Plaintiffs appealed the Magistrate Judge's
decision to this Court.
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
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)).
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).
burden of demonstrating clear error rests with the appealing
party.” Sensient Colors, 649 F.Supp.2d at 315