# Topsoe, Inc. v. Casale US, Inc.

> District Court, S.D. Texas · January 17, 2025

URL: https://www.frixlaw.com/law-library/cases/10784204

## Case

- **Court:** District Court, S.D. Texas
- **Decided:** January 17, 2025
- **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/10784204

## How later opinions describe it (automated extraction)

- stating that omnibus “phrases often require the answering party to engage in mental gymnastics to determine what information may or may not be remotely responsive”

## Opinion text

UNITED STATES DISTRICT COURT January 17, 2025
SOUTHERN DISTRICT OF TEXAS Nathan Ochsner, Clerk
GALVESTON DIVISION
TOPSOE, INC., §
§
Plaintiff. §
§
V. § CIVIL ACTION NO. 3:24-cv-00033
§
CASALE US, INC., et al., §
§
Defendants. §

OPINION AND ORDER
The parties1 have submitted a lengthy joint letter addressing a myriad of
discovery disputes. See Dkt. 115 (sealed); Dkt. 125 (redacted). I will address those
disputes in the same order the parties raise them in their joint letter. Before I do
that, however, let us review the permissible scope of discovery.
OVERVIEW OF PERMISSIBLE DISCOVERY
Federal Rule of Civil Procedure 26(b)(1) governs the permissible scope of
discovery. It provides that “[p]arties may obtain discovery regarding any
nonprivileged matter that is relevant to any party’s claim or defense and
proportional to the needs of the case.” FED. R. CIV. P. 26(b)(1). Relevant evidence
is that which “has any tendency to make a fact more or less probable than it would
be without the evidence,” and “the fact is of consequence in determining the
action.” FED. R. EVID. 401. Importantly, “[i]nformation within [the] scope of
discovery need not be admissible in evidence to be discoverable.” FED. R. CIV. P.
26(b)(1); see also Coughlin v. Lee, 946 F.2d 1152, 1159 (5th Cir. 1991)
(“Discoverable information is not limited to admissible evidence.”). Nonetheless,
“Rule 26(b) has never been a license to engage in an unwieldy, burdensome, and
speculative fishing expedition.” Crosby v. La. Health Serv. & Indem. Co., 647 F.3d

1 Topsoe, Inc. (“Topsoe”) is the plaintiff. Casale US, Inc. (“Casale US”) and Casale S.A. are
the defendants. I will refer to Casale US and Casale S.A. collectively as “Casale.”
258, 264 (5th Cir. 2011) (quotation omitted). Factors to consider in evaluating the
proportionality of requested discovery include the “importance of the issues at
stake in the action, the amount in controversy, the parties’ relative access to
relevant information, the parties’ resources, the importance of the discovery in
resolving the issues, and whether the burden or expense of the proposed discovery
outweighs its likely benefit.” FED. R. CIV. P. 26(b)(1).
TOPSOE’S DISCOVERY REQUESTS
A. CASALE’S AWARENESS OF RELEVANT PRIOR ART, INCLUDING TOPSOE’S
LOW CARBON OR “BLUE” AMMONIA TECHNOLOGY (INTERROGATORY 4
TO CASALE S.A. AND REQUESTS FOR PRODUCTION 17–19)
Topsoe first complains about Casale’s responses to certain discovery
requests aimed at discovering Casale’s awareness of prior art technology. Topsoe
maintains that “Casale’s awareness of prior art technology, including Topsoe’s low
carbon or ‘blue’ ammonia process, is one of the most essential issues in this case.”
Dkt. 125 at 6.
1. Interrogatory 4
Interrogatory 4 to Casale S.A. states:
Describe Casale’s awareness of Topsoe’s blue or low carbon
ammonia products or technology, and information relating to those
products and technology (including but not limited to publications,
presentations or information obtained from third-parties), the
individuals at Casale who were aware of this technology or
information, and when they first became aware of this technology or
information.
Id. at 1. In response to this interrogatory, Casale S.A. responded:
Casale S.A. incorporates by reference its General Objections.
Casale S.A. objects to this Interrogatory to the extent it seeks the
production of information protected by the attorney-client privilege,
the work product doctrine, or any other applicable privilege or
immunity. Casale S.A. also objects to the definition of “Casale,” “you,”
and “your” as overly broad and unduly burdensome because by
including both Casale US and Casale S.A. in the same definitions,
Topsoe disregards the fact that the Defendants are separate entities.
Subject to, and without waiving its General and Specific
Objections, Casale S.A. responds as follows:
Casale S.A. employees learned about Topsoe’s blue or low
carbon ammonia products or technology at the presentation held by
Topsoe engineers at the American Institute of Chemical Engineers’
(“AIChE”) 66th Annual Safety in Ammonia Plants and Related
Facilities Symposium (the “AIChE Symposium”), held from
September 12, 2022, to September 15, 2022, at the Hyatt Regency
Chicago. The Casale S.A. employees in attendance at this conference
were: Federico Zardi, Chief Executive Officer; Sergio Debernardi,
Chief Operating Officer; Ermanno Filippi, Chief Technology Officer;
Giuseppe Guarino, Chairman of the Board; Michal Bialkowski, R&D
Division Head; Andrea Fini, Area Sales Manager for North and South
America; Andrea Scotto, Process Division Head; Francesco Baratto,
Syngas Process Design - Department Head; and Guglielmo Deodato,
Mechanical Engineer.
Casale S.A. reserves the right to supplement this response as
discovery remains on-going.
Id. at 1–2.
To start, I overrule Casale S.A.’s three objections. First, Casale S.A. attempts
to incorporate some general objections to all the discovery requests. As I have
stated before, “a party may not provide a laundry list of general or boilerplate
objections in response to discovery requests. Asserting these objections is
tantamount to making no objection at all. I strike all general objections.” Shintech
Inc. v. Olin Corp., No. 3:23-cv-00112, 2023 WL 6807006, at *4 (S.D. Tex. Oct. 16,
2023). Second, Casale S.A. objects to this interrogatory “to the extent it seeks the
production of information protected by the attorney-client privilege, the work
product doctrine, or any other applicable privilege or immunity.” Dkt. 125 at 1. I
do not understand how this interrogatory possibly invades on any purported
privilege, and thus overrule that objection. Finally, Casale S.A. objects to the
definition of “Casale,” “you,” and “your” as overly broad and unduly burdensome.
Id. I completely disagree and overrule that objection as well.
Topsoe asks me to order Casale S.A. to
address[] (a) the discrepancy between its claimed first awareness and
the fact that its document production shows it was aware of Topsoe’s
blue or low-carbon ammonia products or technology prior to this date
and (b) its failure to comment on its access to Topsoe’s relevant
technology at the 2009 FAI seminar and during its IFFCO revamp
project.
Id. at 5. I will not do this. Casale S.A. has responded to this interrogatory. I
understand that Topsoe thinks that Casale S.A.’s answer is untruthful, but I am not
going to order Casale S.A. to respond to this interrogatory, or any other discovery
request, in a particular way. Topsoe is free, if it so desires, to test the veracity of
Casale S.A.’s interrogatory answer with additional discovery requests. Or Topsoe
can wait until later in the case to offer evidence refuting Casale S.A.’s response.
2. Requests for Production 17–19
Request for Production 17 asks for “[a]ll documents and communications
referencing or discussing Topsoe’s low carbon ammonia technology.” Id. at 2.
Request for Production 18 seeks “[a]ll documents in Casale’s possession relating to
prior art to the ’168 patent.” Id. at 3. Request for Production 19 requests “[a]ll
documents relating to Casale’s awareness of Topsoe’s blue or low carbon ammonia
products or technology, and information relating to those products and technology
(including but not limited to publications, presentations, or information obtained
from third-parties).” Id. at 4.
In response to these requests for production, Casale responds:
Casale . . . incorporates by reference its General Objections.
Casale . . . objects to this Request to the extent it seeks the production
of information protected by the attorney-client privilege, the work
product doctrine, or any other applicable privilege or immunity.
Casale . . . also objects to the definition of “Casale,” “you,” and “your”
as overly broad and unduly burdensome because it is not time limited
and by including both Casale US and Casale S.A. in the same
definitions, Topsoe disregards the fact that the Defendants are
separate entities. Casale . . . also objects to this Request to the extent
disclosure of responsive documents would violate Casale[’s] . . .
confidentiality obligations to third parties.
Id. at 2–5. Casale then states that, “[s]ubject to, and without waiving its General
and Specific Objections,” Casale either will produce all non-privileged responsive
documents or there are no responsive documents. Id.
As was the case with the objections to Interrogatory 4, I overrule the general
objections and the objection to the definition of “Casale” raised in response to
Requests for Production 17–19. I also overrule Casale S.A.’s objection that
“disclosure of responsive documents would violate Casale[’s] . . . confidentiality
obligations to third parties.” Dkt. 125 at 2–5. Casale cannot avoid the production
of responsive documents simply because it is has promised others that it will not
reveal certain information. The privilege objection is fine so long as Casale has
complied with the requirements of Rule 26(b)(5) and produced a privilege log
identifying the alleged privileged documents withheld.
Turning to the specific requests, Casale maintains that “Defendants have
produced all responsive non-privileged documents that they have identified” in
response to Requests for Production 17–19. Id. at 13–14 (quoting Dkt. 90 at 2). In
response, Topsoe contends that “it is not credible that the relatively small number
of responsive documents Casale has produced are exhaustive.” Dkt. 125 at 14. I do
not know if all responsive documents have been produced or not, but Casale’s
counsel certainly understands the importance of producing all responsive
documents. All responsive documents, if not already produced, should be
produced by January 31, 2025.
One more observation: Topsoe believes that Casale should have produced
documents in response to Requests for Production 17–19 relating to Topsoe’s 2009
FAI paper and presentation, as well as Topsoe’s work on the IFFCO Aonla plant.
Casale maintains that such documents are not responsive to these requests. At this
juncture, I cannot tell whether the document are or are not responsive to
outstanding discovery requests. To avoid any confusion, Topsoe can send specific
discovery requests aimed at uncovering documentation related to Topsoe’s 2009
FAI paper and presentation, as well as Topsoe’s work on the IFFCO Aonla plant.
The more specific a discovery request is, the better.
B. INFORMATION LEARNED AT EVENTS (INTERROGATORY 10, REQUESTS
FOR PRODUCTION 4, 16)2
Topsoe next asks me to order Casale to “search all document repositories for
documents responsive to the full scope of [Requests for Production] 4 and 16, and
produce all nonprivileged responsive documents.” Dkt. 125 at 45. Request for
Production 4 seeks “[a]ll documents relating to Casale’s attendance at any external
event (e.g., meeting symposium, seminar, or conference) where ammonia process
technology was discussed.” Id. at 43. Request for Production 16 asks for “[a]ll
documents relating to information about prior blue or low carbon ammonia
technology that Casale had access to by its attendance at an event (e.g., meeting,
symposium, seminar, or conference) where ammonia process technology was
discussed, including documents relating to any Topsoe information learned.” Id.
at 44.
Casale objects to these requests claiming, in part, that they are overly broad,
burdensome, and not proportional to the needs of the case. In particular, Casale
complains that the use of the phrase “relating to” renders these requests
impermissibly broad. I agree. See Sanchez Ritchie v. Energy, No. 10cv151, 2015
WL 12914435, at *2 (S.D. Cal. Mar. 30, 2015) (“A document request or
interrogatory is also overly broad or unduly burdensome on its face if it: (1) uses
an omnibus term such as ‘relating to’ or ‘concerning,’ and (2) applies to a general
category or group of documents or a broad range of information.” (quotation
omitted)); Leisure Hosp., Inc. v. Hunt Props., Inc., No. 09-cv-272, 2010 WL
3522444, at *3 (N.D. Okla. Sept. 8, 2010) (“Such ‘omnibus’ phrases as ‘relating to,’
‘referring to,’ or ‘concerning’ have been held objectionable unless whatever follows
that phrase is clearly and narrowly defined.” (collecting cases)). As Casale aptly

2 Casale has agreed to amend the responses to Interrogatory 10 as requested by Topsoe.
Casale has pledged to serve amended responses by the end of January. Topsoe wants
Casale to amend the discovery responses sooner than that. Given the holidays and the
normal hectic start everyone has to a new year, I will give Casale until January 31, 2025,
to amend the responses to Interrogatory 10.
notes: “[Request for Production 4], as plainly written[,] is incredibly burdensome.
It seeks every document reflecting travel plans, every email related to expense
reimbursements, and every working document related to any ammonia
presentation Casale S.A. has ever given.” Dkt. 125 at 51. “RFP 16 is not much better;
it seeks the same documents, just related to “blue or low carbon ammonia.” Id. As
a compromise, Casale agreed to produce all publications its employees received
from such conferences, which Casale keeps in an internal electronic repository.
This limitation is reasonable.
To be clear, Topsoe is certainly entitled to conduct additional discovery
aimed at uncovering documentation that is relevant and proportional to the needs
of this case. For example, Topsoe indicates that it wants to obtain “emails
discussing attendance . . . at conferences where [blue or low carbon] ammonia
processing was discussed.” Id. at 48. That request is reasonable. But that request
has not been made.
C. ROLE OF CASALE EMPLOYEES INVOLVED IN THE IFFCO PLANT
(INTERROGATORY 8 TO CASALE S.A.)
Interrogatory 8 to Casale S.A. states as follows:
Describe the role of each individual currently or formerly
employed by or who consulted for Casale who was involved in any way
in Casale’s work at the Indian Farmers Fertilizer Cooperative Ltd.
(IFFCO) fertilizer plant in Aonla, India or who received information
about that work, including by providing each person’s title and
whether they are a current or former employee or consultant, a
description of their involvement with the IFFCO fertilizer plant in
Aonla, India, and current and/or last known address and phone
number.
Id. at 53. In response, Casale S.A. first states a laundry list of objections, most of
which mirror objections raised in response to other discovery requests. For the
same reasons identified above, those objections are overruled. Casale S.A. also
objects to providing information in response to Interrogatory 8 on individuals who
contributed less than five man-hours to the IFFCO revamp project. I also overrule
that objection.
As far as substance is concerned, Casale S.A. provides a chart in response to
Interrogatory 8, which identifies employees’ titles, as well as their departmental
work (that is, their roles) on the project. See id. at 54–57. Casale S.A. also
specifically states: “Ermanno Filippi, Francesco Baratto, and Raffaele Ostuni were
not involved in the execution of the IFFCO revamp project. Given their positions
at Casale S.A., these individuals were aware of the existence of the IFFCO revamp
project, but they did not participate in the implementation of the IFFCO revamp
project.” Id. at 57. Topsoe complains that these three gentlemen were heavily
involved in the IFFCO project, and Casale S.A. should have provided more
information concerning the role these three individuals played in the IFFCO
project. I disagree. Casale S.A. has responded to this interrogatory as requested.
Topsoe does not like the response to the interrogatory, but as I already explained,
I am not telling Casale S.A. how it must answer a particular interrogatory. As
Casale S.A. correctly observes:
During the course of discovery, Topsoe will be free to notice the
depositions of Messrs. Filippi, Baratto, and Ostuni and ask them
about their involvement in the IFFCO Aonla plant revamp project and
whether Topsoe’s response to Interrogatory 8 is accurate. There is no
basis to compel more.
Id. at 62–63.
D. COMMERCIALIZATION, WORK, BIDDING, AND LICENSING OF CASALE’S
BLUE AMMONIA TECHNOLOGY AND CASALE US’S INVOLVEMENT IN
SAME (INTERROGATORY 11, JURISDICTIONAL INTERROGATORY 12).
1. Interrogatory 11
In Interrogatory 11, Topsoe asks Casale US to “[d]escribe in detail Casale’s
proposed, planned, or actual commercial implementations for an ammonia
process that falls within the claimed scope of the ’168 patent as issued on March
29, 2022.” Id. at 63. Casale US has refused to answer this interrogatory at all.
Casale US objects for a myriad of reasons, most of which have already been
addressed—and overruled—in connection with other discovery responses. Those
same rulings apply here. Casale US also insists that this interrogatory, in
particular, is “overly broad and unduly burdensome because it seeks information
irrelevant to the claims and defenses at issue in this lawsuit.” Id. at 63. Specifically,
Casale US claims that
proposed, planned, or actual commercial implementations for an
ammonia process covered by the claims of the ’168 patent are not
relevant to Topsoe’s allegations of inequitable conduct during the
prosecution of the ’168 patent, nor are they relevant to Topsoe’s
allegations related to communications with Topsoe’s and alleged
other parties related to the ’168 patent.
Id.
In seeking to compel a response to Interrogatory 11, Topsoe contends that
information about proposed, planned, or actual projects “relate to damages and to
injunctive relief for all claims.” Id. at 71. Topsoe also notes that Casale S.A. has
answered the same interrogatory in discovery, thus questioning why Casale US
should not have to also respond to this interrogatory. Fair points. Casale US’s
response is less than convincing. Casale US argues that “[a]ll of the information
Topsoe has requested can come from Casale S.A.’s forthcoming supplemental
response, which will be more fulsome than anything Casale US could provide as a
non-licensor of the patent.” Id. at 75. That might be true, but it does not excuse
Casale US from responding to a narrowly tailored discovery request aimed at
obtaining information “relevant to any party’s claim or defense.” FED. R. CIV. P.
26(b)(1). Casale US’s objections to Interrogatory 11 are overruled. Casale US is
ordered to respond to Interrogatory 11 by January 31, 2025.
2. Jurisdictional Interrogatory 12
Jurisdictional Interrogatory 12 asks Casale to “[d]escribe all Casale SA’s
bids, quotes, projects, work, contracts, or business within Texas, or elsewhere in
the United States, over the last five years, and the extent to which Casale US
assisted in such activities or acted on Casale SA’s behalf.” Dkt. 125 at 64. Casale
objects to this request for a variety of reasons, but provides a chart that lists
projects—by Casale S.A.’s project number, location, and start date—for “which
Casale S.A. has provided bids, quotes, projects, work, contracts, or other business
with Texas, or elsewhere in the United States, from March 29, 2022, to present.”
Id. at 65, 68.
To ensure all jurisdictional discovery issues were resolved before Topsoe’s
response to Casale S.A.’s Motion to Dismiss Amended Complaint was due, I
required the parties to submit a joint letter to the Court “outlining any outstanding
jurisdictional discovery issues” by September 16, 2024. Dkt. 43. The fact that
Topsoe now, more than three months after that deadline passed, seeks to compel
a response to a jurisdictional interrogatory is highly problematic. Deadlines exist
for a reason. They should be followed. For this reason alone, I will not compel
Casale to further respond to Jurisdictional Interrogatory 12.
Even if I were willing to address the merits of Topsoe’s argument, I do not
see how requiring Casale to provide detailed information about projects across the
country that have nothing to do with the particular technology at issue is relevant
to the merits of this case. Casale contends that “Casale S.A. has already clarified
which four projects could involve the technology in the ’168 patent and produced
the relevant documents related to those projects.” Dkt. 125 at 76.
As I have stated before, Topsoe is free to issue additional discovery requests
aimed at discovering information relevant to the issues involved in this lawsuit. If
Topsoe can craft a discovery request that seeks relevant information and is
proportional to the needs of this case, that request should be answered.
E. NOTES OF CASALE S.A.’S RULE 30(b)(6) DESIGNEE
At his deposition, Casale S.A.’s 30(b)(6) witness, Chief Financial Officer
Guido Matronola, referenced three pages of notes that he had taken. Matronola
reviewed one of those pages at his deposition to refresh his recollection. Casale S.A.
has produced that page but logged the other two pages of notes on its privilege log
as protected by the attorney-client and work product privileges. Topsoe moves to
compel Casale S.A. to produce those two pages of notes.
It is unclear from the record exactly why the notes were created. Matronola
testified at his deposition that “I have some notes taken by myself about the
summary of the document that I have been revising.” Dkt. 125-22 at 15. When
asked directly whether the notes reflect conversations he had with his co-workers
to prepare for his deposition testimony, Matronola first responded: “No. I took
some notes about my revision of the document just to point out to something that
again, I thought was useful for this deposition.” Id. Seconds later, Topsoe’s counsel
asked again whether Matronola took notes of the conversations he had with his co-
workers. This time around, Matronola answered: “Yes. About not the content of
the conversation, but the main events, I mean, for example, the fact that [a co-
worker] was contacted by [a third-party].” Id. These quoted passages represent the
entirety of the evidentiary record concerning the notes.
“When considering a federal claim, federal courts apply federal common
law, rather than state law, to determine the existence and scope of a
privilege.” Coughlin, 946 F.2d at 1159. “The attorney-client privilege is the oldest
of the privileges for confidential communications known to the common law.”
Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). It shields from disclosure
confidential communications between an attorney and client. See id. Meanwhile,
the work product privilege, which is codified in the Federal Rules of Civil
Procedure, provides that “a party may not [ordinarily] discover documents and
tangible things that are prepared in anticipation of litigation or for trial by or for
another party or its representative (including the other party’s attorney,
consultant, surety, indemnitor, insurer, or agent).” FED. R. CIV. P. 26(b)(3)(A).
Casale, as the party asserting the attorney-client and work product
privileges, has the burden of demonstrating their applicability. See Hodges, Grant
& Kaufmann v. U.S. Gov’t, Dep’t of the Treasury, I.R.S., 768 F.2d 719, 721 (5th Cir.
1985) (“The burden of demonstrating the applicability of the privilege rests on the
party who invokes it.”). As one court has noted:
A general allegation of privilege is insufficient to meet this burden.
Instead, a clear showing must be made which sets forth the items or
categories objected to and the reasons for that objection. The
proponent must provide sufficient facts by way of detailed affidavits
or other evidence to enable the court to determine whether the
privilege exists. Although a privilege log and an in camera review of
documents may assist the court in conducting its analysis, a party
asserting the privilege still must provide a detailed description of the
materials in dispute and state specific and precise reasons for their
claim of protection from disclosure. In fact, resort to an in
camera review is appropriate only after the burdened party has
submitted detailed affidavits and other evidence to the extent
possible.
Navigant Consulting, Inc. v. Wilkinson, 220 F.R.D. 467, 473–74 (N.D. Tex. 2004)
(cleaned up).
Here, Casale falls woefully short of meeting its burden. Instead of offering
competent evidence in support of each of the essential elements necessary to
support a claim of the attorney-client or work product privileges, Casale makes
sweeping, unsupported statements. See Dkt. 125 at 84 (“On his own initiative, Mr.
Matronola took notes about conversations he had with his colleagues concerning
specific details relevant to this case, including circumstances not responsive to any
of Topsoe’s 30(b)(6) topics for which Casale S.A. designated Mr. Matronola.”); id.
at 87 (“[T]he notes do contain information from discussions with counsel, made in
anticipation of litigation, while seeking legal advice, and related to this lawsuit
post-filing of the Complaint.”). This will not do. Simply asserting that the notes are
privileged and protected from disclosure is wholly insufficient to meet Casale’s
burden to support a claim of privilege. See In re Boeing Co., No. 21-40190, 2021
WL 3233504, at *2 (5th Cir. July 29, 2021) (“[B]are conclusory statements offered
by” the party asserting a privilege are insufficient.); Judicial Watch, Inc. v. U.S.
Dep’t of Homeland Sec., 841 F. Supp. 2d 142, 153 (D.D.C. 2012) (A proponent of a
privilege claim “must offer more than just conclusory statements, generalized
assertions, and unsworn averments of its counsel.”).
Although Casale has failed to adduce sufficient evidence to establish its
claim of privilege, I ordered Casale to produce the notes for in camera review. I did
this out of an abundance of caution, thinking that inspecting the notes myself
might shed some light on the privilege issue. Alas, nothing on the face of the notes
indicates that they are privileged. Because Casale failed to offer any competent
evidence necessary to support a claim of privilege, the notes must be produced.
F. LIMITATION TO ’168 PATENT (GLOBAL)
Finally, Topsoe requests that Casale “supplement its interrogatory
responses and document production to provide the requested information and
documents relating to the ’168 patent family, as opposed to just the ’168 patent.”
Dkt. 125 at 88. I will deny this request, but not for the reasons that Casale raises.
Casale argues that because Topsoe cannot show the ’168 patent’s foreign
counterparts are invalid in this lawsuit, “Topsoe can have no unfair competition
claims related to its assertion,” meaning that any documents concerning the ’168
patent’s foreign counterparts are irrelevant. Id. at 92. Whether that is true or not,
“threats of foreign patent litigation are sufficient to create a reasonable
apprehension of a suit for an infringement of a similar U.S. patent,” which is
required for a justiciable declaratory patent claim. CyberOptics Corp. v. Yamaha
Motor Co., No. 3-95-1174, 1996 WL 673161, at *14 (D. Minn. July 29, 1996). Thus,
Casale’s arguments about the validity of Topsoe’s Lanham Act claim and the
enforceability of the ’168 patent’s foreign counterparts do not suffice to show that
information and documents relating to the ’168 patent family are irrelevant.
Casale also argues that “Topsoe’s concerns related to Casale S.A.
‘overlooking’ relevant documents by limiting its search to documents related to the
’168 Patent are unfounded” because, in making this argument, “Topsoe relies on a
document that Casale S.A. produced that only references the ’067 Patent, and not
the ’168 Patent,” meaning Casale “has produced what Topsoe seeks.” Dkt. 125 at
93 & n.12. This argument is somewhat persuasive, but given Casale’s flat-out
refusal to search for information and documents relating to the ’168 patent family,
it is anecdotal at best.
I will deny Topsoe’s request because, on its face, it is too broad. As I have
already mentioned in this opinion, the use of the term “relating to” makes a request
objectionable on its face as overly broad when used to describe a general category
or group of documents. Moreover, Topsoe references “the ’168 patent family,” but
then goes on to discuss solely “the ’067 European counterpart patent that Casale
explicitly referenced in its letter.” Id. at 88. I will not order discovery relating to a
family of patents when “relating to” on its own is already overbroad, and it is not
clear what documents would fall within “the family.”
CASALE’S COMPLAINTS
A. TOPSOE’S PRIVILEGE LOG
Casale’s first complaint is that Topsoe has not provided sufficient
information to describe documents listed on its December 6, 2024 privilege log.
Casale asks Topsoe to identify:
(a) which individuals listed on its privilege log are attorneys providing
legal advice, including attorneys providing legal advice for third
parties; (b) the underlying basis for the privilege it is claiming covers
its communications with the third parties listed on its privilege log;
(c) the nature and scope of the common interest between Plaintiff and
these third parties; and (d) the date(s) Plaintiff entered into a joint
defense agreement with each third party.
Id. at 94–95. More to the point, Casale demands that such information be provided
within five days of this Order.
Topsoe does not oppose providing the information requested by Casale.
Given the holidays, Topsoe just asks for more than five days from the date of this
Order to provide such information. I find it quite ironic that when the parties seek
information (Topsoe seeking an amended answer to Interrogatory 10; Casale
seeking additional information for the privilege log), they are adamant that such
information must be turned over immediately. But when the shoe is on the other
foot (Casale amending its answer to Interrogatory 10; Topsoe providing additional
information for its privilege log), the parties ask for additional time to comply with
their discovery obligations. What is good for the goose is good for the gander. I
gave Casale until the end of January 2025 to amend its answer to Interrogatory 10.
I will give Topsoe until January 31, 2025, to provide the additional information
related to its privilege log.
B. CASALE S.A.’S REQUEST FOR PRODUCTION 5
Casale S.A.’s Request for Production 5 requests “[a]ll Documents and things
that refer or relate to Communications, whether to or from suppliers or customers
or any other person, that relate to blue ammonia technology.” Id. at 99. Topsoe
objects on a number of grounds, including that the request is “overbroad and
disproportionate to the needs of this case, as it seeks information not relevant to
the claims in this case.” Id.
This request is, on its face, vastly overbroad and not proportional to the
needs of this case. In the joint discovery letter, Topsoe does an excellent job of
laying out exactly why this request is all-encompassing and unduly burdensome. I
will not repeat all those arguments here. Suffice it to say that this request would,
as worded, require the production of “every communication Topsoe has ever had
with any third party—specifically including customers and suppliers—concerning
blue ammonia technology in any way.” Id. at 103. Topsoe’s overbroad and
disproportionate objection is sustained.
Casale S.A. asserts that it is “entitled to explore what evidence confirms or
refutes” Topsoe’s contention “that it invented the subject technology first.” Id. at
101. Maybe so. But Request for Production 5 is not a narrowly tailored request
aimed at discovering such information. Casale S.A. is certainly entitled to serve a
targeted request to obtain such information, but it must be proportional to the
needs of the case.
C. CASALE S.A.’S REQUEST FOR PRODUCTION 13
Casale S.A.’s Request for Production 13 asks for “[a]ll Documents and
Communications that refer or relate to licenses or prospective licenses executed or
negotiated (even if not consummated) or considered relating to any blue ammonia
technology created, installed, repaired, or improved by Topsoe.” Id. at 109. Casale
S.A. argues that responsive documents “are relevant to establishing the market for
blue ammonia in relation to Topsoe’s unfair competition claims,” “relate to
Topsoe’s damages,” and “show when and how Topsoe was marketing its
technology.” Id. at 110, 111.
Topsoe concedes that the blue ammonia licenses in place are relevant, and
it has apparently already produced such licenses dating back to 2021. Topsoe
indicates that it will “conduct a reasonable search for any additional blue ammonia
licenses prior to 2021.” Id. at 112. Topsoe’s complaint with Request for Production
13 is that it is incredibly broad and burdensome. I concur. This request “does not
just require identification of offers to license (which would itself be prohibitive),
but of all documents ‘that refer or relate to . . . prospective licenses executed or
negotiated (even if not consummated) or considered.’” Id. at 113. I will state it
again: the use of the term “relating to” makes a request objectionable on its face as
overly broad when used to describe a general category or group of documents.
Topsoe’s overbroad and disproportionate objection is sustained.
D. CASALE S.A.’S REQUEST FOR PRODUCTION 14
Request for Production 14 requests “[a]ll Documents and Communications
that refer or relate to proposals and presentations made by Topsoe to third parties
related to blue ammonia technology.” Id. at 116. Casale S.A. objects to this request
for several reasons, including that it is “overbroad and unduly burdensome, as it
requests information that is not relevant and is disproportionate to the needs of
this case.” Id.
This request is similar to Request for Production 13, but, as Topsoe points
out, “it is even broader because it demands all documents that refer or relate to
presentations as well, seeking all documents ‘that refer or relate to proposals and
presentations made by Topsoe to third parties related to blue ammonia
technology.’” Id. at 118. For the same reasons I have sustained the overbroad
objections to Requests for Production 5 and 13, I sustain the same objection to
Request for Production 14.
E. CASALE S.A.’S REQUEST FOR PRODUCTION 15
Request for Production 15 asks for “[a]ll Documents supporting, refuting, or
otherwise concerning Topsoe’s allegations in Paragraph 5 of the Complaint that “in
2019 Casale filed for a U.S. patent application claiming to have ‘invented’ features
of a low carbon ammonia process that had been used in Topsoe’s own process for
decades.” Id. at 119.
Topsoe objects to this request for the following reasons:
Topsoe incorporates by reference its general objections. Topsoe
objects to this Request to the extent it seeks the production of
information protected by the attorney-client privilege, the work
product doctrine, or any other applicable privilege or immunity,
including the joint defense privilege. Topsoe objects to this Request’s
reference to documents “supporting, refuting, or otherwise
concerning” its allegation as vague, ambiguous and unduly
burdensome in the context of this request. Topsoe objects to this
Request as overbroad to the extent it calls for documents relating to
Casale’s alleged invention and the filing of its associated patent
claims, as this information is in Casale’s possession and/or is more
accessible to Casale.
Id.
By now, it should come as no surprise that I overrule the general objections
raised by Topsoe as wholly improper. Next, I sustain the vague, ambiguous, and
unduly burdensome objections with respect to the term “otherwise concerning.”
That phrase is, for all practical purposes, meaningless. It offers no guidance to the
answering party on what documents to search for and produce. See Mackey v. IBP,
Inc., 167 F.R.D. 186, 197–98 (D. Kan. 1996) (stating that omnibus “phrases often
require the answering party to engage in mental gymnastics to determine what
information may or may not be remotely responsive”). As explained above, the
privilege objection is fine so long as Topsoe has complied with the requirements of
Rule 26(b)(5) and produced a privilege log identifying the alleged privileged
documents withheld.
I do, however, think this request is appropriate to the extent it seeks
documents supporting or refuting Topsoe’s allegations in Paragraph 5 of the
Complaint that “in 2019 Casale filed for a U.S. patent application claiming to have
‘invented’ features of a low carbon ammonia process that had been used in
Topsoe’s own process for decades.” Dkt. 125 at 119.
* * *
I thank the parties for their hard work over the holidays preparing the
detailed submission outlining the current discovery disputes. I look forward to
assisting the parties in the event any future discovery disputes arise.
SIGNED this 17th day of January 2025.

______________________________
ANDREW M. EDISON
UNITED STATES MAGISTRATE JUDGE

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10784204. Public record. Not legal advice.