InProcessOut, LLC v. World Tech Toys, Inc.

Western District of Texas, txwd-5:2018-cv-00869

Rule 26(f) Discovery Report/Case Management Plan Joint by InProcessOut, LLC.

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0 United States District Court Western District of Texas San Antonio Division InProcessOut, LLC Plaintiff v. Civil Action No. 5:18-cv-00869-FB-HJB World Tech Toys, Inc. Jury Trial Defendant Joint Discovery Plan and Order The Parties file this report of their conference under Rule 26(f) and submit this plan to the Court for its approval under Rule 16(b). A. Introduction 1. Matthew J. Booth and Dale Langley represent Plaintiff InProcessOut, LLC. 2. Robert L. McRae represents Defendant World Tech Toys, Inc. 3. On 08/14/2019, attorneys for all parties met to confer on the matters outlined in Rule 26(f)(2). The Scheduling Recommendations proposed by the Parties was filed on 08/14/2019. B. Claims and Defenses 4. Plaintiff InProcessOut, LLC is asserting the following claims: Federal trademark infringement, Federal unfair competition, Federal false designation of origin, Texas Common Law trademark Infringement, Texas Common Law Unfair Competition, Texas Common Law Misappropriation, and Texas Common Law Unjust enrichment. 1 0 5. Defendant World Tech Toys, Inc. is asserting the following defenses: laches, waiver, estoppel and/or unclean hands; failed to mitigate Plaintiff's damages, Plaintiff's Federal Trademark Registration is invalid; Plaintiff has no federal or common law trademark rights in ORION; Plaintiff is not the first to use the mark ORION to market drones; Defendant's use of ORION predates Plaintiff's use of the mark ORION in conjunction the sale or offer for sale drones; Plaintiff has committed fraud on the United States Patent and Trademark Office; abandonment; improper use; and failure to enforce the mark. 6. Counter Plaintiff World Tech Toys, Inc. is asserting the following counter claims: Declaratory Judgement that Defendant has not violated any of the Plaintiff's trademark rights; cancellation of Plaintiff's registration; Federal Unfair Competition; Common Law trademark Infringement. 7. Counter Defendant InProcessOut, LLC is asserting the following counter defenses: prior use. C. Settlement 8. The Parties have discussed a possible settlement or early resolution of the Case. However, the Parties are unable at this time to determine whether a settlement or early resolution of the Case is possible. D. Discovery Plan Initial Disclosures Under Rule 26(a)(1) 9. Plaintiff made its Initial Disclosure on 09/28/2018 and its First Updated Disclosure on 07/25/2019. 10. World Tech Toys, Inc. will make its Initial Disclosure by 08/28/2019. 2 0 Initial Requests Under Rule 34 11. Plaintiff made its Initial Request(s) under Rule 34 on 09/26/2018. The due date for those Initial Request(s) is 30 days after the Rule 26 conference. 12. World Tech Toys, Inc. has not made any Initial Request(s) under Rule 34. Expert Disclosures under Rule 26(a)(2) 13. The Parties will make their Expert Disclosures as required by and under Rule 26(a)(2). Pretrial Disclosures under Rule 26(a)(3) 14. The Parties will make their Pretrial Disclosures as required by and under Rule 26(a)(3). Oral Depositions under Rule 30 15. The Parties will conduct the Oral Depositions according to Rule 30. Depositions by Written Questions under Rule 31 16. The Parties will conduct the Depositions by Written Questions according to Rule 31. Interrogatories under Rule 33 17. The Parties will conduct the Interrogatories according to Rule 33. Requests for Production under Rule 34 18. The Parties will conduct the Requests for Production according to Rule 34. Requests for Admissions under Rule 36 19. The Parties will conduct the Requests for Admissions according to Rule 36. Scope of Discovery 20. The Parties believe that in addition to the disclosures required by Rule 26(a), additional discovery under Rules 30, 31, 33, 34 and 36, or otherwise as permitted under 3 0 the Federal Rules, will be necessary in this case. The Parties believe that this additional discovery will be completed by the date specified in the Scheduling Order for close of discovery. The Parties believe that the subject(s) of the additional discovery will include the following: a. Priority and Use in commerce of Plaintiff's trademark(s) at issue in the Case. b. The identification and scope of the goods and/or services of Plaintiff's trademark(s) at issue in the Case. c. Priority and Use in commerce of Defendant's trademark(s) at issue in the Case. d. The identification and scope of the goods and/or services of Defendant's trademark(s) at issue in the Case. e. Knowledge of the other Party's trademark(s) at issue in the Case. f. Actual confusion between the trademarks at issue in the Case. g. Likelihood of confusion between the trademarks at issue in the Case. h. Unfair competition between the Parties for use of the trademarks at issue in the Case. i. Infringement. j. Liability. k. Damages including profits and costs. l. If there is willful infringement. m. Attorney's Fees. The additional discovery may be of any form and format permitted and in accordance with the Federal Rules. 4 0 Discovery of Electronically Stored Information 21. The Parties believe that discovery of Electronically Stored Information will be necessary. The Parties agree to the following: 1. Liaison a. The Parties have identified liaisons to each other who are and will be knowledgeable about and responsible for discussing their respective Electronically Stored Information. Each e-discovery liaison will be, or have access to those who are, knowledgeable about the technical aspects of e- discovery, including the location, nature, accessibility, format, collection, search methodologies, and production of Electronically Stored Information in this matter. The Parties will rely on the liaisons, as needed, to confer about Electronically Stored Information and to help resolve disputes without Court intervention. 2. Search b. The Parties agree that in responding to any Rule 34 request, or earlier if appropriate, they will meet and confer about methods to search Electronically Stored Information in order to identify Electronically Stored Information that is subject to production in discovery and filter out Electronically Stored Information that is not subject to discovery. 3. Production Formats c. The Parties agree to produce electronically stored information in both native format and in single page searchable Adobe PDF format. The Parties agree 5 0 to provide the following metadata for all ESI produced to the extent such data reasonably exists: Custodian, E-mail Subject, From, To, CC, BCC, Date Sent, Time Sent, Date Received, Time Received, Filename, Author, Date Created, Date Modified, MD5 Hash, File Size, File Extension, control Number Begin, Control Number End, Attachment Ranges, Attachment Begin and Attachment End. For documents currently in native format, the Parties agree to convert them into single page searchable Adobe PDF and maintain all associated metadata, and for documents that cannot be converted into searchable Adobe PDF, the Parties agree to notify the requesting party of the responding party's intended form of production that is either reasonably usable or as it is ordinarily kept. For any electronically stored information produced: i. Produce a discovery log that details the type of information, the source of the information, the discovery request to which the information corresponds, and the information's electronic ID number. ii. Write all of the electronically stored information to a reasonably usable storage media, e.g., CD, DVD, or flash drive, or to a shared electronic storage system created for use for this litigation. d. If particular documents warrant a different format, the Parties will cooperate to arrange for the mutually acceptable production of such documents. e. The Parties agree not to degrade the searchability of documents as part of the document production process 6 0 4. Search Terms a. If any specific search terms are requested by a Party with regard to Electronically Stored Information, the Parties agree to reasonably respond by searching the terms in order to identify Electronically Stored Information that is subject to production in discovery and filter out Electronically Stored Information that is not subject to discovery. Asserting Claims of Privilege and Protection 22. The Parties anticipate that the claims in this Case will involve the disclosure or discovery of material under Rule 34 that may be privileged and/or work product material. The Parties agree to the following: a. The disclosure and/or inadvertent disclosure of privileged and/or work product material is controlled by FRE 502 and FRCP 26(b)(5). b. Except as set forth in c. below, the Parties agree that they must disclose on a privilege log any information they withhold from production based on privilege or work product protection. The Parties will describe in the privilege log the nature of the withheld information as required by FRCP 26(b)(5)(A) so that the other Party can assess the privilege claims. c. Communications involving any legal counsel that occur after the filing date of this Case do not need to be produced in discovery. d. Communications involving any legal counsel that occur before the filing date of this Case need to be placed on a privilege log. 7 0 Preservation Plan 23. The Parties believe that a Preservation Plan for the disclosure or discovery of material under Rule 34 is necessary to preserve materials that are relevant to the claims and defenses asserted in this case and proportional to the needs of this case. The Parties recognize that they must take steps to preserve these materials. Although efforts aimed at preserving discoverable material can become unduly burdensome and unreasonably costly, the Parties believe that these concerns can be addressed with a plan that (1) clearly targets materials that are reasonably likely to be relevant and proportional to the needs of the Case and (2) takes into account the unique issues associated with the discoverable material, including electronically stored information. a. The Parties agree to the initial designated custodians of the electronically stored information are the individuals named in the respective Parties' Initial Disclosures. Other Discovery Issues 24. The Parties do not believe there are other discovery issues that need to be addressed at this time. E. Additional Orders (if necessary) 25. None expected at this time. Conclusion All Parties participated in the conference and agree to this Joint Discovery Plan and Order and request the Court to approve it under Rule 16(b). 8 0 Approved: /s/ Matthew J. Booth Matthew J. Booth Legal Counsel for Plaintiff InProcessOut, LLC Approved: /s/ Robert L. McRae Robert L. McRae Legal Counsel for World Tech Toys, Inc. Defendant 9 0 It is SO ORDERED this _______day of ______________________. ______________________________ Henry Bemporad United States Magistrate Judge 10