Hy-Ko Products Company LLC v. The Hillman Group, Inc., No. 2:21-cv-00197 (E.D. Tex. Feb. 18, 2022)

Before the Court is Defendant The Hillman Group, Inc.’s (“Hillman”) Motion to Compel Hy-Ko’s Response to Interrogatory 24 (the “Motion”). (Dkt. No. 87). Having considered the Motion and the subsequent briefing, and for the reasons set forth herein, the Court finds that the Motion should be DENIED.

I. BACKGROUND

On June 1, 2021, Plaintiff Hy-Ko Products Company, LLC (“Hy-Ko”) filed the above-captioned case against Hillman alleging claims of patent infringement, unfair competition, and conversion. (Dkt. No. 1) (the “Original Complaint”). Paragraph 54 of the Original Complaint reads as follows:

2On August 2, 2021, Hy-Ko filed its Amended Complaint against Hillman—still asserting claims of patent infringement, unfair competition, and conversion. (Dkt. No. 14) (the “Amended Complaint”). However, the allegations regarding Hillman’s acquisition of the KID System were removed and replaced with the following paragraph:

In late 2021, Hillman served Interrogatory No. 24, which reads as follows:

(Dkt. No. 87-1 at 15). It is undisputed that Interrogatory No. 24 relates to the allegations in Paragraph 54 of the Original Complaint but are not found in the Amended Complaint. (Dkt. No. 87 at 1–2; Dkt. No. 96 at 1). On January 18, 2022, Hy-Ko objected to Interrogatory No. 24 on the grounds that it sought irrelevant information. (Dkt. No. 87-1 at 15). On January 25, 2022, the parties met and conferred on the issue but could not reach an agreement. (Dkt. No. 87 at 7). On3 January 28, 2022, Hillman moved to compel Hy-Ko’s response to Interrogatory No. 24. (Dkt. No. 87).

II. DISCUSSION

Hillman argues that it “needs an answer to Interrogatory 24 in order to understand and explore how and why Hy-Ko’s story changed, test the alleged facts supporting Hy-Ko’s new conversion story, and confront Hy-Ko about its changing narrative.” (Dkt. No. 87 at 3). In other words, Hillman argues that “[k]knowledge of the original story and its sources is essential to fairly confronting Hy-Ko’s present, changed assertions.” (Id.). Hillman argues that Interrogatory No. 24 “is also relevant to the credibility of the people who concocted and endorsed Hy-Ko’s false and explosive accusation.” (Id.). Hillman further contends that the information responsive to Interrogatory No. 24 “is also relevant to the designation of this matter as ‘exceptional’ pursuant to 35 U.S.C. § 285.” (Id. at 4).

Hy-Ko responds that its Amended Complaint superseded the allegations in the Original Complaint, and accordingly, the allegations in the Original Complaint “are nullities.” (Dkt. No. 96 at 1). Hy-Ko argues that “‘how and why [its] story changed’ is not relevant to whether Hillman converted Hy-Ko’s engineering drawings.” (Id. at 2). In response to Hillman’s “credibility” argument Hy-Ko responds that the allegations in both the Original Complaint and Amended Complaint were made by Hy-Ko as an entity, through counsel, and cannot be used to impeach the credibility of any trial witnesses. (Id.). With respect to Hillman’s “exceptional case” argument, Hy-Ko argues that Hillman “omits authority for the proposition that allegations for a conversion claim under state common law may be appropriately considered in an exceptional case determination under section 285 of the Patent Act.” (Id. at 3).

4The Court has reviewed the Original Complaint, the Amended Complaint, and the parties’ arguments and finds that the information sought by Interrogatory No. 24 is not relevant to the current issues of this case. The parties do not dispute that allegations regarding Hillman’s alleged possession of a KID System are no longer part of Hy-Ko’s conversion claims in this case. While the Court recognizes the general tenet that discovery should be pursued and produced liberally, the . Court finds that Interrogatory No. 24 would inevitably involve the expenditure of time and resources pursuing something no longer in the case. The Court notes that fact discovery closes in less than four weeks, and the parties would be better served by focusing these final weeks on the issues that are still live and perhaps not fully explored or developed.

III. CONCLUSION

For the reasons noted above, Hillman’s Motion is DENIED.

So ORDERED and SIGNED this 18th day of February, 2022.

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE