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June 5, 2003


The opinion of the court was delivered by: John M. Facciola, Magistrate Judge


This case has been referred to me by Judge Roberts pursuant to LCvR 72.2(a) for the resolution of all discovery disputes. Currently pending before me are: National Semiconductor's Motion for Protective Order & Pre-Trial Ruling to Limit Discovery (99-146);*fn1 Ramtron's Motion to Compel Complete And Substantive Responses To Its First Set Of Interrogatories And Its First Set Of Requests To Admit (99-146) and Ramtron's Second Motion to Compel Complete And Substantive Responses, Discovery Requests, And Related Depositions (03-61). For the reasons stated in this Memorandum Opinion, these motions are granted in part and denied in part.


Ramtron International Corporation ("Ramtron") filed this 35 U.S.C. § 146*fn2 proceeding to seek a reversal of the Board of Patent Appeals and Interferences' ("Board") final decisions awarding priority of invention to National Semiconductor Corporation ("NSC"). These proceedings were interference proceedings said by NSC to be "process[es] to determine who was the first to invent an invention described in a patent and/or patent application involving two or more parties claiming inventorship." Motion of Defendant National Semiconductor Corporation for Protective Order and Pre-Trial Ruling to Limit Discovery Regarding the Scope of the 35 U.S.C. § 146 Proceeding at 1 ("NSC Motion"). Ramtron claims priority under a man named Eaton and NSC claims priority under a man named Evans.

The Discovery at Issue

There are two sets of discovery responses at issue, the discovery propounded in case number 02-2456 and the discovery propounded in 99-146. In 02-2456 Ramtron propounded 115 Requests to Admit and 13 Interrogatories. In case number 99-146, Ramtron propounded 20 Requests to Admit and 12 Interrogatories.

NSC objects to many of these requests for generic and specific reasons. By "generic," I mean that a particular objection is asserted to more than one of Ramtron's demands. I will deal with them first and then turn to the more specific objections that NSC makes to certain interrogatories in addition to its generic objections. Before I do, I must deal with whether the Court should require any greater response where NSC has provided a qualified response to the Requests to Admit.

Requests to Admit

NSC neither admitted nor denied some of Ramtron's Requests to Admit and gave qualified denials or admissions to the rest. The difference in the nature of NSC's responses has different consequences for the additional judicial action Ramtron seeks.

The Federal Rules of Civil Procedure permit the following responses to such a request: (1) an objection on the grounds that the matter demanded to be admitted is beyond the scope of discovery permitted by Fed.R.Civ.P. 26(b)(1), i.e., the admission sought will yield neither admissible evidence nor information that "appears reasonably calculated to lead to the discovery of admissible evidence;" (2) an admission; (3) a denial; (4) a detailed explanation why the matter can be neither admitted nor denied; or (5) a good faith qualified admission that admits certain matters, if possible, but denies or gives a qualified answer to the rest. FED. R. CIV. P. 36(a).

The Rule further provides:

The party who requested the admissions may move to determine the sufficiency of the answers or objections. Unless the court determines that an objection is justified, it shall order that an answer be served. If the court determines that an answer does not comply with the requirements of the rule, it may order that the matter is admitted or that an amended answer be served.
FED. R. CIV. P. 36(a).

There is, however, another grant of authority that has to be considered for an asserted deficiency in responding to a Request to Admit. Fed.R.Civ.P. 37(c)(2) provides:

If a party fails to admit the genuineness of any document or the truth of any matter as requested under Rule 36, and if the party requesting the admissions thereafter proves the genuineness of the document or the truth of the matter, the requesting party may apply to the court for an order requiring the other party to pay the reasonable expenses incurred in making that proof, including reasonable attorney fees. The court shall make the order unless it finds that (A) the request was held objectionable pursuant to Rule 36(a), or (B) the admission sought was of no substantial importance, or (C) the party failing to admit had reasonable ground to believe that the party might prevail on the matter, or (D) there was other good reason for the failure to admit.
FED. R. CIV. P. 37(c)(2).

The two Rules, read together, suggest the proper disposition of any objection based on anything other than an admission or denial. First, that the matter to be admitted is neither admissible nor likely to lead to admissible evidence is legitimate grounds for objection, but the court may overrule that objection and order an answer. Second, if the party does not provide any of the responses permitted by the Rule, i.e., a denial, an admission, a qualified admission, or a truthful explanation why it can neither admit nor deny the Request, the court may require the party to do so.

But, if the answering party has either indicated that it can neither admit nor deny the requested admission or has provided a qualified answer, the appropriate judicial response is much less clear. The premise of any motion to compel would have to be a lack of good faith in making such a response. Requests to Admit are not a discovery device, however. Lakehead Pipe Line Co. Inc., v. American Home Assurance Co., 177 F.R.D. 454, 458 (D.Minn. 1997). They are designed to narrow the issues for trial. Given their purpose, the federal courts express their concern when they breed additional litigation because one party is dissatisfied with the answer of the other. In Foretich v. Chung, 151 F.R.D. 3 (D.D.C. 1993), for example, a defendant in a defamation case demanded that the plaintiff admit that he was a public figure. When he denied that he was, the other party insisted that the court examine the truthfulness and legitimacy of his denial. The court, however, declined the invitation, explaining that "there is simply no provision of the Federal Rules allowing a party to litigate a denied request for an admission at this stage of the proceedings." Id. at 5.*fn3

When one party questions the truthfulness, bona fides, or legal legitimacy of a qualified denial or admission, the court is confronted with the obligation to resolve the question presented. That encourages more litigation, the converse of the purpose behind permitting one party to demand the other to admit the truth of a certain statement. One is hard pressed to understand why the Federal Rules of Civil Procedure should be interpreted to reach such a perverse result. A much more natural reading of the Rules permits the party responding to a request to admit to, as it were, roll the dice and to deny all such requests, running the risk that if his opponent proves all those facts he will have to pay for it, unless he can escape under the auspices of Fed.R. Civ. P. 37(c)(2). There is nothing in any of the Rules, including Rule 11, that condemns such a practice. In fact, if a request for admission is viewed as nothing more than what it is, a request that a certain fact be stipulated, then it has to be conceded that the common law has never required one party to stipulate to any fact. While the Federal Rules modify that by forcing one party to pay when she refuses to stipulate and her opponent is put to her proof, they certainly cannot be construed as requiring a court to examine into the reason why a party will not stipulate.

If that is so, then, a fortiori, a qualified denial or admission cannot require a court to inquire into the bona fides of the person uttering it. The cost shifting remedy provided by Fed.R. Civ. 37(c)(2) suffices. Hence, the validity, or bona fides, of a qualified answer to a request for admission must await the trial to see if the party forced to prove what was not admitted can meet the requirements of that rule. Doe v. Mercy Hospital Corp., 1999 U.S. Dist. LEXIS 13347 at *45 (E.D.Pa. Sept. 13, 1993) ("[T]he remedy for an insufficient or inaccurate response to a Request for Admission lives exclusively within Rule 37(c)."). As a result, I will not compel any further response by NSC where it has provided a qualified denial or admission to a Request for Admission. See Lakehead Pipe Line Co., 177 F.R.D. at 457 (qualified responses to Request for Admissions expressly approved).

I now turn to those Requests to Admit that NSC neither ...

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