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Paice, LLC v. Hyundai Motor Co.

United States District Court for the District of Maryland

July 7, 2014, Decided; July 11, 2014, Filed

CIVIL NO. WDQ-12-499

Opinion

MEMORANDUM OPINION AND ORDER

Now pending before the Court is intervenor Toyota's Motion for a Protective Order (ECF No. 177) and Plaintiffs' Motion to Compel Non-Party Toyota to Comply with Subpoenas (ECF No. 251).

This Court granted non-party Toyota  [*2] Motor Company and its affiliates' (collectively "Toyota") motion to intervene (ECF No. 111) in order to oppose Defendants' then pending motion to compel (ECF No. 108). (ECF No. 112). Defendants' motion to compel sought certain Toyota litigation materials from Plaintiff Paice's prior collateral litigation with Toyota ("Paice-Toyota litigation"), such as expert reports (including technical, damages, and other reports), expert deposition transcripts, materials cited in those reports and transcripts, and settlement agreements, which Defendants had sought in their request for production of documents. (ECF No. 108). On April 4, 2014, the Court entered a stipulation and order (ECF No. 171), wherein Defendants withdrew their motion to compel and Toyota agreed to produce certain of the aforementioned litigation documents. (ECF No. 171). Notably, however, the stipulation provided that Toyota would not produce to Defendants the Settlement Agreement which resolved the Paice-Toyota litigation ("Paice-Toyota Settlement Agreement" or "Agreement"). (ECF No. 171, 13). Subsequently, Defendants expressly withdrew their document request directed to the Settlement Agreement or to the disclosure of its  [*3] terms. (ECF No. 177, Ex B). Defendants also abandoned in their motion to compel (ECF No. 184), certain financial documents from Plaintiffs essentially revealing the monetary terms of the Paice-Toyota Settlement Agreement. (ECF No. 244, 3). Nonetheless, thereafter, Paice stated its intention to "disclose the Settlement Agreement in litigation pursuant to the terms of Section 5.9(b)(1)[of the Settlement Agreement]." (ECF No. 177, Exh. A). Consequently, Toyota filed the present motion for a protective order seeking to prohibit Paice from disclosing and using the Paice-Toyota Settlement Agreement in the present case. Briefing is complete. (ECF Nos. 186, 209). A hearing was held on this motion on May 13, 2014. At the May 13, hearing, the Court stated its tentative conclusion that, as a matter of contract law, Paice had contracted away its right to disclose and use the Settlement Agreement in this instant litigation against Hyundai.

Thereafter, on May 14, 2014, Paice and Abell served subpoenas on Toyota Motor Corporation and Toyota Motor Sales, USA ("Toyota") (ECF No. 235) requesting production of the 2010 Settlement Paice-Toyota Agreement. (ECF No. 251). Toyota objected to the subpoenas.  [*4] Paice and Abell filed a motion to compel non-party Toyota to comply with the subpoenas (ECF No. 251). Briefing is now complete on that motion as well. (ECF No. 251, 282, 304, 321).

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2014 U.S. Dist. LEXIS 95042 *

PAICE, LLC, et al., Plaintiffs v. HYUNDAI MOTOR COMPANY, et al., Defendants.

Subsequent History: Reconsideration denied by, Motion granted by, in part, Motion denied by, in part Paice LLC v. Hyundai Motor Co., 2014 U.S. Dist. LEXIS 154254 (D. Md., Oct. 29, 2014)

Prior History: Paice LLC v. Hyundai Motor Co., 2013 U.S. Dist. LEXIS 46963 (D. Md., Mar. 27, 2013)

CORE TERMS

settlement agreement, patent, settlement, discovery, license, confidentiality, federal circuit, royalty, damages, terms, infringement, confidentiality provision, disclosure, disclose, rights, protective order, motion to compel, discoverability, assign, parties, motion for a protective order, documents, factors, courts, district court, right to use, patent law, contracted, subpoenas, lawsuit

Business & Corporate Compliance, Contracts Law, Types of Contracts, Settlement Agreements, Civil Procedure, Settlements, Settlement Agreements, General Overview, Contracts Law, Contract Interpretation, Federal & State Interrelationships, Choice of Law, Breach, Intent, Patent Law, Damages, Patentholder Losses, Reasonable Royalties, Discovery & Disclosure, Discovery, Protective Orders, Discovery, Beneficiaries, Types of Third Party Beneficiaries, Intended Beneficiaries, Ownership, Conveyances, Assignments, Standards of Performance, Assignments, Preliminary Considerations, Erie Doctrine, Licenses