# GLASTON CORPORATION v. HHH EQUIPMENT RESOURCES

> District Court, M.D. North Carolina · June 25, 2024

URL: https://www.frixlaw.com/law-library/cases/10653720

## Case

- **Court:** District Court, M.D. North Carolina
- **Decided:** June 25, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10653720

## How later opinions describe it (automated extraction)

- noting district court’s “broad discretion to determine whether a nondisclosure of evidence is substantially justified or harmless for purposes of a Rule 37(c)(1) exclusion analysis”
- explaining in email sent on November 22, 2023, that, despite subpoena’s schedule of December 8, 2023, for “inspection/deposition,” subpoenaed company’s “furnace has not yet been delivered . . . and will not be operational until late January 2023 [sic] (if not later
- explaining that Rule 37 “gives the district court wide discretion to impose sanctions for a party’s failure to comply with its discovery orders”

## Opinion text

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
GLASTON CORPORATION and )
UNIGLASS ENGINEERING OY, )
)
Plaintiffs, )
)
v. ) 1:21cv942
)
SALEM FABRICATION TECHNOLOGIES )
GROUP, INC., )
)
Defendant. )
MEMORANDUM OPINION AND ORDER
This case comes before the Court on (i) “Salem’s Motion for
Discovery Sanctions Pursuant to FRCP 37(b) & 37(c)” (Docket Entry
81) (the “Discovery Sanctions Motion”), (ii) “Plaintiffs’ Motion to
Compel Discovery” (Docket Entry 112) (the “Motion to Compel”),
(iii) the “Unopposed Motion to Seal” (Docket Entry 111) (the
“Sanctions’ Sealing Motion”) filed by Glaston Corporation and
Uniglass Engineering Oy (collectively, the “Plaintiffs”), and
(iv) “Defendant Salem Fabrication Technologies Group, Inc.’s
Unopposed Motion to Seal” (Docket Entry 122) (the “MTC Sealing
Motion,” and collectively with the Sanctions’ Sealing Motion, the
“Sealing Motions”). For the reasons that follow, the Court will
deny the Discovery Sanctions Motion and the Motion to Compel
(collectively, the “Discovery Motions”) and will deny as moot the
Sealing Motions.
BACKGROUND
“This is a civil action for [alleged] patent infringement”
(Docket Entry 14 (the “Complaint”), □ 1) of two United States
patents (at times, the “Asserted Patents”) related to “[t]hermally
tempering glass” (id., J 18; see, e.g., id., TT 19-21). (See
generally Docket Entry 14.)? Plaintiffs, Finnish companies
involved in the manufacture of glass tempering machinery (see id.,
2-4), assert that Salem Fabrication Technologies Group, Inc.
(the “Defendant” or “Salem”) infringed these patents through its
sale, importation, distribution, and servicing of certain “glass
tempering furnace[s] manufactured by Luoyang North Glass Technology
Co., Ltd. (‘Northglass’[ or ‘North Glass’])” (id., JI 1) (the
“Accused Products”). (See generally Docket Entry 14.) Defendant
disputes Plaintiffs’ allegations and seeks declaratory judgments of
non-infringement and invalidity of the patents. (See Docket Entry
24 at 1-24.)* On April 18, 2024, the Court (per United States
District Judge Thomas D. Schroeder) issued its Claim Construction
Order, “adopt[ing] all of Plaintiffs’ proposed constructions”
(Docket Entry 98 at 1). (See id. at 55-56.) The Court has not yet

1 According to the Complaint, “[each] Patent is Assigned to
Uniglass” (id., 44 12, 13) and exclusively licensed to Glaston (see
id., 7 14).
2 Docket Entry page citations utilize the CM/ECF footer’s
pagination.

scheduled a trial in this matter. (See Docket Entries dated Dec.
9, 2021, to present.)
As relevant here, on February 23, 2023 (see Docket Entry 28 at
12), Plaintiffs and Defendant submitted the “Parties’ Joint Rule
26(f) Report” (id. at 1), in which they “agree[d] that fact
discovery ends December 13, 2023, and expert discovery begins and
ends based on the date that the Court issues a Claim Construction
Order” (id. at 5). The Court (per the undersigned United States
Magistrate Judge) promptly adopted that proposal, establishing the
fact discovery deadline as December 13, 2023. (See Text Order
dated Feb. 24, 2023 (the “Scheduling Order”).) In August 2023,
Defendant moved to compel discovery, specifically seeking responses
to certain interrogatories and production of material responsive to
its requests for production of documents by a specific date. (See
Docket Entry 35.) The Court scheduled a hearing on that motion,
directing the parties to confer beforehand to “attempt again to
reach a resolution of all remaining disputed issues.” (Text Order
dated Sept. 14, 2023.) The parties thereafter resolved their
dispute regarding certain of the interrogatories (see Docket Entry

50 at 1-2) and the Court granted the motion to compel as to the
remaining matters, ordering Plaintiffs to complete their document

3
production and provide their interrogatory responses by October 2,
2023 (see Minute Entry dated Sept. 25, 2023).3
On December 13, 2023, the parties filed a “Stipulation
Regarding Depositions” (Docket Entry 56 at 1) that
waive[s] any objection to the validity of any deposition
noticed before December 13, 2023 taking place after that
date and instead during the month of January 2024[] based
on the dates set forth in the Scheduling Order. The
parties expressly agree that any deposition taken
pursuant to this Stipulation shall be usable in this
action as if the deposition had been taken within the
United States on or before December 13, 2023, and that
all objections lodged during depositions pursuant to this
Stipulation shall be preserved, as though the deposition
was taken in the United States on or before December 13,
2023.
(Id. at 2.)
On February 2, 2024, Plaintiffs filed a motion to compel
“discovery that has been withheld by Defendant on the basis of the
alleged common interest privilege.” (Docket Entry 69 at 1; see id.
at 2.) Defendant objected to that motion on the grounds that the
parties had not properly conferred before its filing and that such
conferral could resolve or at least narrow the parties’ dispute.
(See Docket Entry 121-9 at 2-3.) Plaintiffs accordingly withdrew
the motion (see Docket Entry 77 at 1) and, after the parties
conferred and reached certain agreements, Defendant produced
twenty-two “documents that were previously withheld on the basis of
3 The parties subsequently agreed to extend this deadline to
October 6, 2023. (See Docket Entry 52 at 1.)
4
common interest privilege with Northglass” (Docket Entry 121-11 at
2). (See Docket Entry 121-10 at 2; Docket Entry 121-11 at 2-4.)
On February 29, 2024, Defendant filed the Discovery Sanctions
Motion (see Docket Entry 81 at 3), seeking “to obtain discovery
sanctions against Plaintiffs for failure to obey the orders of this
Court and failure to supplement their response to Salem’s requests
for inspection” (id. at 1). Notwithstanding its explicit request
for “discovery sanctions” (id.), the Discovery Sanctions Motion
lacks any good-faith conferral certification (see id. at 1-4).
Instead, Defendant maintains that “Rule 37 [of the Federal Rules of
Civil Procedure (the ‘Rules’)] does not impose any requirement on
the parties to confer prior to the filing of th[e Discovery
Sanctions] Motion.” (Docket Entry 97 at 18 n.4.) The Discovery
Sanctions Motion seeks expense-shifting and “an order sanctioning
Plaintiffs as follows” (Docket Entry 81 at 1):
A. Plaintiffs are precluded from arguing or seeking to
admit into evidence that any product Plaintiffs made,
sold, offered for sale, or used is covered by any claim
of the Asserted Patents;
B. Plaintiffs may not argue or seek to introduce into
evidence at trial that Plaintiffs aggressively enforce
their patent rights anywhere in the world, and Plaintiffs
may not rely upon any evidence of Plaintiffs’ patent
litigation in the world regarding the Asserted Patents or
related patents in support of any part of Plaintiffs’
affirmative case-in-chief, including at least Plaintiffs’
claims for damages;
C. Plaintiffs are precluded from presenting any arguments
regarding the price or profit margins of Plaintiffs’
sales in the U.S. and from seeking to admit into evidence
5
that the Accused Products are priced to be less expensive
than Plaintiffs’ practicing products;
D. Plaintiffs are precluded from arguing that any lost
sales of Plaintiffs’ practicing products are due
exclusively to sales of the Accused Product; it be taken
as a designated fact for purposes of this action that
every competing furnace identified in Mr. Rantala’s
spreadsheet is a commercially acceptable non-infringing
alternative to the Accused Products; and Plaintiffs are
precluded from arguing or seeking to admit as evidence
comparisons or characterizations of the efficiency,
quality, and performance of any practicing product,
including at least the FC 500 and 700 series of furnaces;
E. Plaintiffs are precluded from relying upon any service
agreements between either Plaintiffs or Salem and any
third party for any purpose at trial; and it shall be
taken as a designated fact that all of Plaintiffs’
profits for practicing products are derived from service
agreements for furnaces, rather than sales of furnaces.
(Id. at 1-2.)
Plaintiffs oppose the Discovery Sanctions Motion. (See Docket
Entry 107.) In particular, Plaintiffs argue that
Defendant’s motion is based on a litany of imagined
failures to respond to either requests that Defendant
never propounded or which Plaintiffs fully responded to.
Further, most of the documents [the Discovery Sanctions
Motion references] were identified for the first time at
depositions taken after the close of fact discovery, and
Defendant neither followed up with Plaintiffs to seek
their production [as promised (see id. at 10-11)], nor
met and conferred with Plaintiffs before filing the
instant motion.
(Id. at 7.) Plaintiffs also filed the Sanctions Sealing Motion,
seeking an order sealing unredacted versions of certain materials
submitted in connection with briefing arising from Defendant’s
Discovery Sanctions Motion. (See Docket Entry 111 at 1-8.)
“Defendant does not oppose th[at] motion.” (Id. at 2.)
6
On April 23, 2024, Plaintiffs filed the instant Motion to
Compel, seeking “documents, testimony, and information” that
Defendant withheld based on its asserted “common interest privilege
with Northglass” (Docket Entry 112 at 2). (See id. at 1-4.)
Through the Motion to Compel, “Plaintiffs contend that no common
interest privilege exists between Defendant and Northglass and
that, even if a privilege did exist, Defendant waived the right to
assert it.” (Id. at 2.) They therefore seek expense-shifting (see
id. at 3) and “an order directing Defendant to do the following”
(id. at 2):
1) Produce the 5 documents identified in Defendant’s
February 2024 Privilege Log as being withheld (in whole
or in part) pursuant to the common-interest privilege;
2) To the extent not already produced or otherwise
identified on Defendant’s 2023 and 2024 Privilege Logs,
produce all communications between Defendant and
Northglass regarding the Asserted Patents and this suit;
3) Produce the “indemnification agreements, cooperation
agreements, common interest agreements” with Northglass,
any other such agreement involving the cooperation of
Northglass, and any other documents concerning “any
obligation by Northglass to indemnity or hold harmless”
Defendant; and
4) Reopen discovery for the limited purpose of obtaining
deposition testimony related to documents and information
previously withheld pursuant to the alleged common
interest privilege between Defendant and Northglass,
including complete responses to Topics 4 and 13 listed in
Plaintiffs’ Rule 30(b)(6) Notice of Deposition to
Defendant.
(Id. at 2-3 (emphasis in original).)
7
Defendant opposes the Motion to Compel, contending, inter
alia, that “Plaintiffs did not properly meet and confer” before
filing their motion (Docket Entry 120 at 7) and that the “Motion to
Compel is untimely” (id. at 27). (See id. at 7-31.) Defendant
also filed the MTC Sealing Motion, seeking to seal certain
unredacted materials filed in connection with briefing arising from
the Motion to Compel. (See Docket Entry 122 at 1-10.) “Plaintiffs
do not oppose [the requested] sealing.” (Id. at 3.)
DISCUSSION
I. Discovery Sanctions Motion
As it explicitly acknowledges, Defendant brought the Discovery
Sanctions Motion pursuant to Rule 37 “to obtain discovery sanctions
against Plaintiffs.” (Docket Entry 81 at 1 (emphasis added); see
also id. (bearing title “Salem’s Motion for Discovery Sanctions
Pursuant to [Rules] 37(b) & 37(C)” (emphasis added)).) Under this
Court’s Local Rules, “[t]he Court will not consider motions .. .
relating to discovery unless moving counsel files a certificate
that after personal consultation and diligent attempts to resolve
differences the parties are unable to reach an accord.” M.D.N.C.
LR 37.1(a) (emphasis added). The Discovery Sanctions Motion seeks
sanctions based on alleged discovery failures. (See Docket Entry
81 at 1; see also, e.g., Docket Entry 97 at 6-28 (detailing alleged
discovery failures and contending such failures warrant requested
sanctions) .) Accordingly, the Discovery Sanctions Motion

“relat[es] to discovery,” M.D.N.C. LR 37.1(a), triggering
Defendant’s conferral obligations, see, e.g., Packrite, LLC v.
Graphic Packaging Int’l, LLC, No. 1:17cv1019, 2020 WL 7133806, at
*2 n.2 (M.D.N.C. Dec. 4, 2020) (discussing Local Rule 37.1
conferral obligation for sanctions motion), recommendation adopted,
No. 1:17evl1019, 2021 WL 9681472 (M.D.N.C. Jan. 6, 2021); Carolina
Coupon Clearing, Inc. v. Cardinal Health Managed Care Servs., LLC,
No. 1:16cv412, 2018 WL 11424681, at *1 (M.D.N.C. July 2, 2018)
(same) .*

4 Notably, although Plaintiffs’ opposition to the Discovery
Sanctions Motion argues for denial of the Discovery Sanctions
Motions on the grounds that Defendant violated Local Rule 37.1 (see
Docket Entry 107 at 8-12), Defendant did not address the actual
text of this Court’s Local Rules in its reply thereto (see Docket
Entry 101 at 19-20 (arguing that “No Meet-and-Confer Is Required”
(emphasis omitted))). Instead, Defendant maintained:
Contrary to Plaintiffs’ suggestion, motions for
sanctions under Rules 37(b) and 37(c) do not seek
discovery — but seek adverse evidentiary inferences.
Thus, motions for sanctions are not governed by local
meet-and-confer rules concerning discovery motions. As
stated in Salem’s Opening Brief, Motions for Sanctions
under Rules 37(b) & (c) do not impose a requirement to
meet and confer. Motion at 13 n.4. Indeed, such motions
can be made orally, in the moment, during a hearing.
Snead v. Automation Indus., Inc., 102 F.R.D. 823, 828-29
(D. Md. 1984).
(Id. at 19 (emphasis in original).)
This argument misses the mark. To begin, the Discovery
Sanctions Motion indisputably “relat[es] to discovery,” M.D.N.C. LR
37.1(a), bringing it within the ambit of Local Rule 37.1. Further,
independent of any obligations Rule 37 imposes, Local Rule 37.1’s
conferral requirements “have the force of law,” Hollingsworth v.
Perry, 558 U.S. 183, 191 (2010) (internal quotation marks omitted).
In addition, Snead does not support the proposition that litigants

Defendant does not dispute that it failed to confer with
Plaintiffs before pursuing the Discovery Sanctions Motion. (See
Docket Entries 81, 97, 101.) This failure alone warrants denial of
the Discovery Sanctions Motion. See M.D.N.C. LR 37.1(a) (mandating
that “[t]he Court will not consider motions . . . relating to
discovery” absent certification of proper consultation); see also
M.D.N.C. LR 83.4(a) (explaining that, if “a party fails to comply
with a [L]ocal [R]ule . . ., the Court may impose sanctions against
the . . . party” and “may make such orders as are just under the
circumstances,” including “striking [a filing]”).
Moreover, even if the Court overlooked this failure, it would
still deny the Discovery Sanctions Motion. Under Rule 37(b), if a
party “fails to obey an order to provide or permit discovery,” the
Court may issue any “just order[,]” including seven enumerated
sanctions ranging from “staying further proceedings until the order
is obeyed” to entering a default judgment and treating the failure
as contempt of court. Fed. R. Civ. P. 37(b)(2). In turn, Rule
37(c) establishes a “general rule excluding evidence that a party
seeks to offer but has failed to properly disclose,” subject to

may move for sanctions under Rule 37 orally, without prior
conferral; rather, Snead instructs that litigants can incur Rule
37(b) sanctions for failing to obey an oral order. See id., 102
F.R.D. at 828-29 (“While sanctions imposed pursuant to Rule 37(b)
must be in response to a failure to comply with a court order, such
order may be oral and need not be in writing.”). Finally, even if
Snead supported Defendant’s contention regarding Rule 37 motions,
that decision from the District of Maryland does not define the
obligations that this Court’s Local Rules impose.
10
“two exceptions . . .: (1) when the failure to disclose is
‘substantially justified,’ and (2) when the nondisclosure is
‘harmless.’” Southern States Rack & Fixture, Inc. v.
Sherwin-Williams Co., 318 F.3d 592, 596 (4th Cir. 2003) (brackets
omitted). The Court possesses “wide discretion” in imposing these
sanctions. Mutual Fed. Sav. & Loan Ass’n v. Richards & Assocs.,
Inc., 872 F.2d 88, 92 (4th Cir. 1989) (explaining that Rule 37
“gives the district court wide discretion to impose sanctions for
a party’s failure to comply with its discovery orders”); see also
Southern States, 318 F.3d at 597 (noting district court’s “broad
discretion to determine whether a nondisclosure of evidence is
substantially justified or harmless for purposes of a Rule 37(c)(1)
exclusion analysis”); Hathcock v. Navistar Int’l Transp. Corp., 53
F.3d 36, 40 (4th Cir. 1995) (observing that “the imposition of
sanctions under Rule 37(b) lies within the trial court’s
discretion”).5 Nevertheless, in the context of more severe
sanctions, the “[C]ourt’s range of discretion is more narrow
because” it must account for a “party’s rights to a trial by jury
and a fair day in court.” Mutual Fed., 872 F.2d at 92 (internal

quotation marks omitted).

5 “A decision to sanction a litigant pursuant to [Rule] 37 is
one that is not unique to patent law, and [courts handling patent
cases] therefore apply regional circuit law to that issue.”
Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1370
(Fed. Cir. 2002) (citation omitted).
11
Thus, in evaluating whether to impose Rule 37(b)(2) sanctions,
the Court should consider “(1) whether the non-complying party
acted in bad faith, (2) the amount of prejudice that noncompliance
caused the adversary, (3) the need for deterrence of the particular
sort of non-compliance, and (4) whether less drastic sanctions
would have been effective.” Southern States, 318 F.3d at 597
(internal quotation marks omitted). Further, in evaluating
whether a nondisclosure of evidence is substantially
justified or harmless for purposes of a Rule 37(c)(1)
exclusion analysis, a district court should be guided by
the following factors: (1) the surprise to the party
against whom the evidence would be offered; (2) the
ability of that party to cure the surprise; (3) the
extent to which allowing the evidence would disrupt the
trial; (4) the importance of the evidence; and (5) the
nondisclosing party’s explanation for its failure to
disclose the evidence.
Id. (explaining that “[f]our of these factors — surprise to the
opposing party, ability to cure that surprise, disruption of the
trial, and importance of the evidence — relate mainly to the
harmlessness exception, while the remaining factor — explanation
for the nondisclosure — relates primarily to the substantial
justification exception”). In deciding whether to impose Rule
37(c) sanctions, however, “the district court [i]s not required to
tick through each of the Southern States factors.” Wilkins v.
Montgomery, 751 F.3d 214, 222 (4th Cir. 2014) (emphasis omitted).
Defendant bases its contention that Plaintiffs failed to
properly produce items largely on testimony from depositions
conducted in January 2024, after fact discovery closed. (See,
12
e.g., Docket Entry 97 at 6 (“During corporate and personal
depositions of key Plaintiff witnesses, which were taken out of
time to accommodate the witnesses’ schedules, Salem learned that
Plaintiffs had withheld from production multiple categories of
highly relevant and non-privileged documents in direct violation of
this Court’s order to produce discovery.”); Docket Entry 108,
¶¶ 29-34 (discussing requests and deposition).) Despite agreeing
to request such material in writing post-deposition, Defendant
failed to do so. (See, e.g., Docket Entry 108, ¶¶ 29-34.) Indeed,
“Defendant’s counsel never sought to meet and confer regarding any
of the documents referenced in its brief.” (Id., ¶ 32.)
Moreover, these depositions occurred three months prior to the
issuance of the Claim Construction Order (see Docket Entry 98 at
56) — and thus prior to commencement of the expert discovery period
(see Docket Entry 28 at 5) — and, as noted, the trial date remains
unset (see Docket Entries dated Dec. 9, 2021, to present). (See
Docket Entry 108, ¶ 29; Docket Entry 108-13 at 2.) In addition,
the parties have informally continued voluntary exchanges of
information after the official close of fact discovery. (See,

e.g., Docket Entry 56 at 2 (reflecting parties’ agreement to take
depositions out of time); Docket Entry 102-2 at 2-3 (reflecting
defense counsel’s agreement to “defer the inspection and
deposition” of a third party “until after [Plaintiffs’ FC] furnace
has been installed,” anticipated to occur around “late January
13
202[46] (if not later)”); Docket Entry 121-11 at 2 (reflecting
supplemental production by Defendant on February 28, 2024,
“[f]urther to the parties’ conference on February 16, 2024 and the
agreements reached therein”).)
Accordingly, the record does not support characterization of
the requested sanctions as necessary to cure any prejudice that
Defendant may have suffered from any improperly withheld material.
See, e.g., Koppers Performance Chems., Inc. v. Travelers Indem.
Co., 593 F. Supp. 3d 247, 251-52 (D.S.C. 2022) (“agree[ing] with
[the defendant] that the failure [to disclose a declaration] was
not justified but ultimately find[ing] the failure harmless [due
to] possib[ility of] cure”); see also Southern States, 318 F.3d at
597 (directing consideration of “whether less drastic sanctions
would have been effective” (internal quotation marks omitted)).
Additionally, Plaintiffs’ counsel avers that certain of the
requested material does not qualify as responsive to Defendant’s
discovery requests. (See Docket Entry 108, ¶¶ 34-38.) And
Plaintiffs’ arguments regarding relevance, responsiveness, and
significance appear facially plausible (see Docket Entry 107),

6 The relevant document contains a scrivener’s error as to
the year. (See id. (explaining in email sent on November 22, 2023,
that, despite subpoena’s schedule of December 8, 2023, for
“inspection/deposition,” subpoenaed company’s “furnace has not yet
been delivered . . . and will not be operational until late January
2023 [sic] (if not later)[, and, a]s such, [the third party]
request[s] that the inspection/deposition currently scheduled for
December 8th be postponed”).)
14
undercutting any argument that Plaintiffs acted in bad faith or
that Defendant suffered notable prejudice. Yet, Defendant seeks
“draconian” sanctions, which may well “be[] case determinative,”
Thompson v. United States Dep’t of Hous. & Urb. Dev., 219 F.R.D.
93, 102 (D. Md. 2003). (See, e.g., Docket Entry 81 at 1-2
(requesting that “Plaintiffs [be] precluded from arguing or seeking
to admit into evidence that any product Plaintiffs made, sold,
offered for sale, or used is covered by any claim of the Asserted
Patents” and that “[it] be taken as a designated fact that all of
Plaintiffs’ profits for practicing products are derived from
service agreements for furnaces, rather than sales of furnaces”).)
Further, many of Defendant’s requested sanctions lack
proportionality to the alleged discovery failure. For instance,
Defendant maintains that Plaintiffs improperly failed to disclose
an employee’s “heat transfer coefficient analysis spreadsheet
comparing Plaintiffs’ FC 500 furnace (an allegedly practicing
product) against competitors’ furnaces — including the accused
Northglass product.” (Docket Entry 97 at 25.) To remedy the
failure to produce this spreadsheet — which Plaintiffs maintain “is

not responsive to Defendant’s requests for several reasons” (Docket
Entry 107 at 27), including that “heat transfer coefficients are
unclaimed and have nothing to do with whether a furnace is
infringing or not” (id. at 31) — Defendant
requests that this Court order that (1) Plaintiffs are
precluded from arguing that any lost sales of Plaintiffs’
15
practicing products are due exclusively to sales of the
Accused Product; (2) it be taken as a designated fact for
purposes of this action that every competing furnace
identified in [the] spreadsheet is a commercially
acceptable non-infringing alternative to the Accused
Products; and (3) preclude Plaintiffs from arguing or
seeking to admit as evidence comparisons or
characterizations of the efficiency, quality, and
performance of any practicing product, including at least
the FC 500 and 700 series of furnaces.
(Docket Entry 97 at 26 (footnote omitted).)
Similarly, Defendant faults Plaintiffs — Finnish companies —
for producing certain financial information in euros rather than
United States dollars. (See id. at 23-25; Docket Entry 101 at 12-
16.) According to Defendant, although Plaintiffs did produce some
of the requested information in dollars (see, e.g., Docket Entry
101 at 13-15),7 “Salem has been prejudiced by Plaintiffs’
production of profit and cost in Euros — rather than the currency
of the transaction” (id. at 16) because, “[n]ow that discovery is
closed, Salem cannot confirm the accuracy of Plaintiffs’ U.S. sales
data or the exchange rates that may have been used to generate it”
(Docket Entry 97 at 24-25). Thus, Defendant maintains, “the Court
should grant Salem’s requested evidentiary sanctions” (Docket Entry
101 at 16 (citing Docket Entry 97 at 25)), namely “that this Court
preclude Plaintiffs from presenting any arguments regarding the
price or profit margins of Plaintiffs’ sales in the U.S. and from
7 Notably, Defendant did not acknowledge this fact until its
reply memorandum, instead implying in its opening memorandum that
Plaintiffs had not provided any information in dollars. (See
Docket Entries 97, 101.)
16
seeking to admit into evidence that the Accused Products are priced
to be less expensive than Plaintiffs’ practicing products” (Docket
Entry 97 at 25).8
Under the circumstances, even absent Defendant’s failure to
comply with Local Rule 37.1(a), the Court would decline to impose
the extreme sanctions that the Discovery Sanctions Motion seeks.
Put simply, particularly given the questionable nature of many of
the purported deficiencies and the likelihood that Defendant could
have cured any significant prejudice by addressing these asserted
deficiencies with Plaintiffs following the January depositions, the
record does not warrant such drastic measures, which “would deprive
[Plaintiffs] of the opportunity to [advocate for] themselves in
such a significant way, that it could prove fatal to their ability
to prove their [claims],” Thompson, 219 F.R.D. at 104.
II. Motion to Compel
“Generally, a party must file a motion to compel before the
close of discovery in order for that motion to be deemed timely.”

8 For their part, Plaintiffs assert that, prior to filing the
Discovery Sanctions Motion, Defendant never challenged the currency
associated with their provided sales and profit information,
despite “be[ing] aware for over two years that Plaintiffs are
Finnish companies that sell products in the U.S.” (Docket Entry 107
at 21), and that, in any event, they have produced sales
information in dollars. (See id. at 20-24; see also Docket Entry
108, ¶ 33.) Plaintiffs further maintain that “Defendant’s
discovery requests never sought documents or information containing
‘exchange rates,’” but that “all exchange rate information, if
available, is ascertainable from Plaintiffs’ produced documents.”
(Docket Entry 107 at 22.)
17
Lane v. Lucent Techs., Inc., No. 1:04cv789, 2007 WL 2079879, at *3
(M.D.N.C. July 13, 2007) (collecting cases); see, e.g., Sager v.
Standard Ins. Co., No. 5:08-cv-628, 2010 WL 2772433, at *1
(E.D.N.C. July 12, 2010) (denying motion to compel as “fatally
defective,” noting that “[i]t is also significant that the motion
appears to be untimely, as it was filed after the close of fact
discovery”); In re Sulfuric Acid Antitrust Litig., 231 F.R.D. 331,
332 (N.D. Ill. 2005) (observing that “motions to compel filed after
the close of discovery are almost always deemed untimely”).
Nevertheless, the “[C]ourt has discretion to consider an untimely
motion to compel if the movant offers an acceptable explanation for
the motion’s tardiness.” United States ex rel. Becker v.
Westinghouse Savannah River Co., 305 F.3d 284, 290 (4th Cir. 2002)
(brackets and internal quotation marks omitted).
Plaintiffs filed their initial motion to compel on February 2,
2024 (see Docket Entry 69 at 2), and the instant Motion to Compel
on April 23, 2024 (see Docket Entry 112 at 4), rendering each
motion untimely given the close of fact discovery on December 13,
2023 (see Text Order dated Feb. 24, 2023). Defendant maintains
that this untimeliness warrants denial of the Motion to Compel.
(See Docket Entry 120 at 27.) More specifically, Defendant argues
that the “Motion to Compel is untimely” because “[f]lact discovery
closed December 13, 2023, two months before Plaintiffs filed their
original motion” and the Motion to Compel “was filed more than four

18

months after [the] close of fact discovery.” (Id.) Defendant
further argues that “even the [M]otion [to Compel] acknowledges
that Plaintiffs knew documents were withheld months before bringing
the [M]otion [to Compel].” (Id. (citing “Motion at 3”).)9 Per
Defendant, the “Motion [to Compel] should thus be denied as
untimely.” (Id.)
In response, Plaintiffs do not directly address the
untimeliness of the Motion to Compel due to its post-discovery-
deadline filing; instead, they argue:
After concealing the existence of a written common
interest agreement for almost a year, changing positions
on the basis for a common interest agreement and
privilege, and producing 22 documents previously withheld
as privileged only after Plaintiffs moved to compel,
Defendant’s claim that [the] Motion [to Compel] was
untimely is poorly taken.
Defendant’s designee, Mr. Synon, was made available
for deposition on January 9, 2024, weeks after the close
of fact discovery. Plaintiffs took his deposition on
January 9 and 11, received the transcript from the
reporting service on January 15, and filed their original
[m]otion to [c]ompel on February 2 — two and a half weeks
thereafter. (Dkt. 69).
After a dozen correspondences and a third phone
conference on this subject on February 16, Defendant
produced previously withheld documents, identified new
9 The cited page does not support Defendant’s contention, but
the Motion to Compel does suggest Plaintiffs’ awareness of
potentially withheld material “[i]n November 2023” (Docket Entry
112 at 1; see id. at 2), and the third numbered page of Plaintiffs’
memorandum in support of the Motion to Compel does concede this
point (see Docket Entry 126 at 9 (“On December 10, 2023, Defendant
asserted that ‘emails with North Glass relating to this lawsuit or
the Patents-in-Suit . . . will be withheld from production.’”
(ellipsis in original))).
19
documents not previously identified, supplemented its
2023 Log with the 2024 Log on February 28, and produced
another Sales and Distribution Agreement on March 26.
Plaintiffs narrowed the scope of its [sic] original
motion to account for Salem’s concessions, new
production, and 2024 Log, and filed the instant Motion
[to Compel] on March [sic] 23, several weeks later.
Neither its [sic] original February 2 motion nor the
instant Motion [to Compel] were untimely, especially
given the actions of Defendant preceding each motion.
(Docket Entry 128 at 16-17 (footnote omitted) (emphasis in
original); see also id. at 16 n.5 (“Salem’s causal conduct cannot
be gainsaid. Checkpoint Sys., Inc. v. United States Int’l Trade
Comm’n, 54 F.3d 756, 763 n.7 (Fed. Cir. 1995) (noting that
‘chutzpah’ describes ‘the behavior of a person who kills his
parents and pleads for the court’s mercy on the ground of being an
orphan’).”).)
As Plaintiffs argue (see, e.g., Docket Entry 126 at 20-23),
Defendant’s initial discovery responses, produced May 17, 2023,
suffered from serious defects, including assertion of impermissible
general and boilerplate objections, provision of answers “subject
to and without waiving” said objections, and failures to “state
whether any responsive materials [was] being withheld on the basis
of [any] objection,” Fed. R. Civ. P. 34(b)(2)(C). (See Docket
Entry 126-2.) As this Court has previously explained, “[g]eneral
or ‘boilerplate’ objections to discovery requests are invalid.
Similarly, promising to provide . . . documents ‘subject to’
objections . . . is improper.” Dillon v. BMO Harris Bank, N.A.,
No. 1:13cv897, 2015 WL 6619972, at *2 (M.D.N.C. Oct. 30, 2015)
20
(citation omitted); see also Brown v. Experian Info. Sols., Inc.,
No. 3:16cv670, 2017 WL 11632852, at *2 (E.D. Va. Apr. 17, 2017)
(explaining that “the practice of providing answers ‘subject to’
objections is confusing and misleading” and “amounts to no answer
at all, for it says, essentially, ‘here is some information, but
there could be more that you are not getting’” (certain internal
quotation marks omitted)).
Nonetheless, on November 22, 2023 (see Docket Entry 126-16 at
50), Defendant explicitly objected to requested discovery “as
protected from disclosure by . . . the common interest doctrine”
(id. at 8, 18; accord id. at 17). Then, at 5:26 p.m. on December
1, 2023, defense counsel sent an email to Plaintiffs’ counsel
noting that, at “the conference today,” the parties “discussed
Salem’s position that communications with North[g]lass are
protected by attorney-client privilege / attorney work product via
the common interest privilege.” (Docket Entry 126-9 at 2.) Less
than five hours later, with full knowledge of Defendant’s expressed
position that the common interest privilege protected requested
information from disclosure, “Plaintiffs propose[d] to exchange

privilege logs on December 15” (Docket Entry 121-15 at 2), i.e.,
two days after the fact discovery deadline. Five days later, on
December 6, 2023, Plaintiffs’ counsel responded to defense
counsel’s email, disputing the existence of a common interest
privilege. (See Docket Entry 126-10 at 2-3.) On December 10,
21
2023, Defendant’s counsel responded thereto, reiterating
Defendant’s position that it would withhold documents on the basis
of the common interest privilege and “will log such emails in
accordance with the requirements of paragraph 14 of the ESI Order
in this litigation.” (Docket Entry 126-11 at 2 (citing Docket
Entry 44).)10
On December 11, 2023, Plaintiffs conducted a Rule 30(b)(6)
deposition of Defendant, during which defense counsel “object[ed]
and caution[ed] the witness not to disclose the substance of any
attorney-client communication or communication with North Glass
related to defense.” (Docket Entry 121-6 at 4.) On December 13,
2023, Plaintiffs conducted another Rule 30(b)(6) deposition of
Defendant, during which defense counsel again objected on privilege
grounds and “instruct[ed] the witness not to answer” questions
regarding Northglass and its involvement in or control over the
litigation. (Docket Entry 121-8 at 7.) That same day (the fact
discovery deadline), the parties filed a stipulation reflecting
their agreement to take certain depositions in January 2024. (See
Docket Entry 56 at 1-2.) On January 9 and 11, 2024, Plaintiffs

conducted another Rule 30(b)(6) deposition of Defendant. (See
Docket Entry 126-14 at 2-15.) At the deposition on January 11,

10 Pursuant to this Order, “[d]ocuments dated after December
9, 2021 containing privileged and/or work product material relating
to the lawsuit do not need to be logged.” (Docket Entry 44,
¶ 14(d).)
22
2024, defense counsel again repeatedly objected on privilege
grounds and “instruct[ed] the witness not to reveal anything that
he may have learned from his attorneys or North[g]llass.” (Id. at
11.)
Notwithstanding the foregoing, Plaintiffs waited until early
February to move to compel material that Defendant withheld on the
basis of the common interest doctrine. (See Docket Entry 69 at 1-
2.) After Defendant objected to that motion for failure to confer
beforehand (see Docket Entry 121-9 at 2-3), Plaintiffs withdrew
that motion (see Docket Entry 77 at 1). On February 28, 2024,
Defendants produced supplemental material (see Docket Entry 121-11
at 2-4), and, on March 19, 2024, Plaintiffs’ counsel sent an email
seeking further clarification and information (see Docket Entry
121-12 at 2-5), which Defendant’s counsel provided on March 26,
2024 (see id. at 2; see also Docket Entry 128 at 16 (asserting that
Defendant “produced another Sales and Distribution Agreement on
March 26”)). Plaintiffs waited almost another month, however, to
file the Motion to Compel. (See Docket Entry 112 at 4.)
Under these circumstances, including particularly the explicit
and repeated indications within the fact discovery period that
Defendant refused to produce certain material on the basis of the
common interest privilege, the Court finds that Plaintiffs have not
“offer[ed] an acceptable explanation for the [M]otion[ to Compel]’s
tardiness,” Becker, 305 F.3d at 290 (brackets and internal

23

quotation marks omitted). The Court will therefore deny the Motion
to Compel as untimely. See, e.g., Lane, 2007 WL 2079879, at *4
(denying motion as untimely where “[the p]laintiff filed his motion
to compel well after the close of discovery”).
III. Sealing Motions
The parties filed Sealing Motions that seek to seal myriad
documents involved in briefing the Discovery Motions. (See Docket
Entries 111, 122.) “Sealed documents should not be filed unless
necessary for determination of the matter before the Court.”
M.D.N.C. LR 5.4(a)(3); see also id. (“If only non-confidential
portions of a document are necessary, only those portions should be
filed, immaterial portions should be redacted, and no motion to
seal should be filed.”). As reflected in the foregoing discussion,
the Court did not need the materials that the parties seek to seal
to resolve the Discovery Motions. Accordingly, the Court will deny
the Sealing Motions as moot and will direct the Clerk to strike the
materials (Docket Entries 103 to 106-5, 109 to 110-20, 123 to 125-

15, 127 to 127-26, 129) that the parties sought to file under seal.
See M.D.N.C. LR 5.4(c)(3) (“No motion to seal will be granted
without a sufficient showing by the party claiming confidentiality
as to why sealing is necessary.”); M.D.N.C. LR 83.4(a) (explaining
that, if “a party fails to comply with a [L]ocal [R]ule,” the Court
“may make such orders as are just under the circumstances,”
including “striking [a filing]”); see also, e.g., Hartzman v. Wells
24
Fargo & Co., No. 1:14cv808, 2015 WL 1268267, at *8 (M.D.N.C. Mar.
19, 2015) (“[T]he Court concludes that [the p]laintiff has failed
to show why the Report’s filing at this moment does not qualify as
unnecessary. Therefore, the Court will direct the Clerk to strike
the unredacted version of the [relevant] Report and will deny [the]
Motion to Seal as moot.” (citation omitted)).
IV. Final Matters
The parties all seek expense-shifting for the Discovery
Motions. (See, e.g., Docket Entry 81 at 1; Docket Entry 112 at 3.)
Given the denial of both Discovery Motions and the course of
conduct leading to the Discovery Motions, the Court declines to
order such expense-shifting. See, e.g., Fed. R. Civ. P.
37(a)(5)(B) (“[T]he [C]ourt must not order [expense-shifting] if
the motion was substantially justified or other circumstances make
an award of expenses unjust.”).
CONCLUSION

The Discovery Sanctions Motion violates Local Rule 37.1(a)
(and seeks unwarranted sanctions), and Motion to Compel qualifies
as untimely. In addition, resolution of the Discovery Sanctions
Motions moots the Sealing Motions by rendering unnecessary the
materials they sought to seal.
IT IS THEREFORE ORDERED that the Discovery Sanctions Motion
(Docket Entry 81) and the Motion to Compel (Docket Entry 112) are
DENIED.
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IT IS FURTHER ORDERED that the Sealing Motions (Docket Entries
111, 122) are DENIED AS MOOT. The Clerk shall STRIKE the
associated materials (Docket Entries 103 to 106-5, 109 to 110-20,
123 to 125-15, 127 to 127-26, 129) filed under temporary seal.
This 25th day of June, 2024.
/s/ L. Patrick Auld
L. Patrick Auld
United States Magistrate Judge

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10653720. Public record. Not legal advice.