IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

SHENZHEN HAPPY VAPING 

TECHNOLOGY LTD.,

Plaintiff,

v.

LOGIC TECHNOLOGY DEVELOPMENT 

LLC, and

JAPAN TOBACCO INTERNATIONAL 

U.S.A., INC.,

Defendants.

CIVIL ACTION NO. 0:22-cv-61407-RS

DEFENDANTS’ MEMORANDUM IN OPPOSITION TO PLAINTIFF’S MOTION TO

COMPEL DEFENDANTS TO RESPOND TO PLAINTIFF’S

FIRST SET OF REQUESTS FOR PRODUCTION

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TABLE OF CONTENTS

I. FACTUAL AND PROCEDURAL BACKGROUND........................................................ 1

A. The Complaint and Pending Motions..................................................................... 1

B. Plaintiff’s First Set of Discovery Requests............................................................. 2

C. The Parties’ Meet-and-Confer ................................................................................ 3

II. ARGUMENT...................................................................................................................... 3

A. Plaintiff’s Motion is Time-Barred Under Local Rule 26.1(g)(2)(A)(i) and 

Fails to Comply with the Formality Requirements of the Local Rules .................. 3

B. Plaintiff’s Motion is Improper Under the Federal Rules of Civil Procedure 

in View of the Procedural Posture of This Case ..................................................... 5

C. Plaintiff’s Discovery Requests Improperly Seek Jurisdictional Discovery 

to Support Plaintiff’s Opposition to Defendants’ Motion to Dismiss .................... 7

D. Plaintiff’s Speculation is Irrelevant to the Requested Relief................................ 10

III. CONCLUSION................................................................................................................. 10

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TABLE OF AUTHORITIES

Page(s)

Cases

Blue Water Innovations, LLC v. Vevazz, LLC,

No. 6:20-cv-774-Orl-78DCI, 2020 WL 6828950 (M.D. Fla. Oct. 29, 2020)......................9, 10

Habersham Plantation Corp. v. Molyneux,

No. 10-61526-CIV, 2011 WL 1832782 (S.D. Fla. May 5, 2011)..............................................4

Manno v. Healthcare Revenue Recovery Grp., LLC,

No. 11-61357-CIV, 2012 WL 1409532 (S.D. Fla. Apr. 23, 2012)............................................4

TC Heartland LLC v. Kraft Foods Grp. Brands LLC,

137 S. Ct. 1514 (2017)...............................................................................................................6

United Techs. Corp. v. Mazer,

556 F.3d 1260 (11th Cir. 2009) .................................................................................................9

Vision Media TV Grp., LLC v. Forte,

724 F. Supp. 2d 1260 (S.D. Fla. 2010) ................................................................................9, 10

Wai v. Rainbow Holdings,

315 F. Supp. 2d 1261 (S.D. Fla. 2004) ......................................................................................6

Statutes

28 U.S.C. § 1400(b).........................................................................................................................6

Other Authorities

Fed. R. Civ. P. 26.....................................................................................................................5, 6, 8

Fed. R. Civ. P. 34.............................................................................................................................6

S.D. Fla. L.R. 26.1 .......................................................................................................................3, 4

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Defendants Logic Technology Development LLC (“Logic”) and Japan Tobacco 

International U.S.A., Inc. (“JTI USA”) (collectively, “Defendants”) respectfully oppose

Plaintiff’s Motion to Compel Defendants to Respond to Plaintiff’s First Set of Requests for 

Production (ECF 38). 

I. FACTUAL AND PROCEDURAL BACKGROUND

A. The Complaint and Pending Motions

Plaintiff filed its Complaint (ECF 1) on July 28, 2022, alleging patent infringement of U.S. 

Patent No. 9,924,744 (the ’744 patent) by the Logic Pro device. ECF 1, ¶¶ 19-33. On December 

15, 2022, Defendants filed a Motion to Dismiss for Improper Venue or to Transfer Venue (ECF

13) (“Defendants’ Motion to Dismiss”), supported by sworn affidavits, and explaining that none 

of the Florida addresses identified in the Complaint is a “regular and established place of business” 

of either Defendant, which maintain a principal office in New Jersey. See ECF 13. Plaintiff filed 

its Response to Defendants’ Motion to Dismiss (ECF 17) (“Response”) on December 29, 2022,

followed by an Amended Complaint (ECF 21) on January 5, 20231. These filings alleged a novel 

joint enterprise theory for patent venue that continued to rely on the same addresses in Florida as 

the original Complaint. See ECF 21. In its Response, Plaintiff proposed venue-related discovery

only if the Court found that venue was not proper. ECF 17 at 6, 11 (“If this Court does not find 

that venue is proper based on the facts herein, then Plaintiff respectfully requests that this Court 

allow Plaintiff an opportunity to conduct discovery on the relevant issues.”). This informal request 

was supported by only a single citation to another district’s standard for obtaining jurisdictional 

 

1 Defendants renewed its Motion to Dismiss as to Plaintiff’s Amended Complaint on January 17, 

2023. See Defendants’ Notice to Reassert Motion to Dismiss for Improper Venue or to Transfer 

Venue (ECF 24).

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discovery. Id. Plaintiff never formally moved for venue-related discovery, and the Court never 

ruled on this informal request, which Defendants opposed. See ECF 25. 

Defendants filed a Motion to Stay Discovery and Other Deadlines (ECF 30) (“Motion to 

Stay”) on February 17, 2023. In its response to the Motion to Stay, Plaintiff again reiterated its 

improper request for jurisdictional discovery and stated that “[d]elay of discovery causes 

unnecessary delay and deprives Plaintiff and this Court of important facts that are not only relevant 

to the merits of this case, but also to the issue of venue, which is pending before this Court.” ECF 

31 at 8. 

B. Plaintiff’s First Set of Discovery Requests

On February 6, 2023, while Defendants’ Motion to Dismiss was pending, and before this 

Court ruled on Plaintiff’s informal request for jurisdictional discovery, Plaintiff served its First Set 

of Requests for Production (“Plaintiff’s RFPs”). ECF 30-1. Plaintiff’s RFPs included an expansive 

set of requests for production, seeking documents covering a period of over 10 years, physical 

samples of Defendants’ products, and information regarding the officers and corporate relatedness 

of various corporate entities related to the Defendants. See, e.g., ECF 30-1 at RFPs 36, 37, 39.

In view of Plaintiff’s improper discovery requests, Defendants served Responses and 

Objections to Plaintiff’s RFPs (“Defendants’ Responses and Objections”) on March 8, 2023. ECF 

38-9. Among other things, Defendants objected to the requests for being premature and improperly

seeking jurisdictional discovery. Specifically, Defendants’ objections stated:

Defendants further object to the discovery requests as premature 

and improper. Plaintiff never sought leave to serve jurisdictional 

discovery and Plaintiff’s informal request for jurisdictional 

discovery in its December 29, 2022, Opposition to Defendants’ 

Motion to Dismiss, which is improper and Defendants opposed, 

has not yet been ruled on by the Court. Because the discovery 

requests propounded by Plaintiff include numerous requests for 

production that seek jurisdictional discovery, the discovery 

requests are premature and improper.

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ECF 38-9 at 3. Additionally, Defendants generally objected to each of Plaintiff’s RFPs “as 

premature in that it seeks information prior to the start of discovery.” See, e.g., ECF 38-9 at 8. 

On March 23, 2023, Plaintiff, via email, indicated its intent to narrow the scope of its 

discovery requests. See ECF 38-2. However, Plaintiff continued to request production of the same 

expansive subject matter covered by its initial RFPs. Id. Plaintiff continued to seek electronically 

stored information (“ESI”) related to non-asserted patents and searches for fifteen (15) custodians,

many of which were identified in Plaintiff’s opposition to Defendants’ Motion to Dismiss. Id.

C. The Parties’ Meet-and-Confer

On November 10, 2022, the Court ordered the parties to prepare and file a Joint Scheduling 

Report. ECF 10. The parties met and conferred on scheduling-related issues, and subsequently 

submitted a Joint Scheduling Report. ECF 11. The parties discussed Plaintiff’s intent to amend its 

pleadings, Defendants’ seeking of dismissal of the action for improper venue, and other 

scheduling-related topics. 

II. ARGUMENT

A. Plaintiff’s Motion is Time-Barred Under Local Rule 26.1(g)(2)(A)(i) and 

Fails to Comply with the Formality Requirements of the Local Rules

As an initial matter, Plaintiff is not entitled to relief because the Motion to Compel (ECF 

38) is untimely. Local Rule 26.1(g)(2)(A)(i), S.D. Fla. L.R., prescribes a specific time period for 

filing discovery-related motions:

A party must submit any discovery dispute to the Court by service 

of a motion . . . within the time periods set forth in (i)-(iv), as 

applicable:

(i) for a discovery dispute relating to a written response or 

objection to a discovery request or to a privilege log, a party shall 

submit the dispute within twenty-eight (28) days of service of the 

written response or objection that is the subject of the dispute.

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(emphasis added). Here, Defendants served objections to Plaintiff’s RFPs on March 8, 2023, 

clearly challenging the requests as premature and improper. See ECF 38-9 at 41-43. Plaintiff

acknowledged this, stating that “Defendants provided blanket objections to the First Set of RFPs 

and refused to provide a single document.” ECF 38 at 6. Fully aware of Defendants’ objections to 

its production requests, Plaintiff had until April 5, 2023 to file any motions to compel discovery. 

However, Plaintiff failed to do so in a timely manner and submitted its Motion to Compel on April 

24, 2023—19 days late. See ECF 38 at 13.

Local Rule 26.1(g)(2)(B), S.D. Fla. L.R., specifically provides a penalty for late filings:

Failure to submit a discovery dispute to the Court within the time periods set forth 

in (A)(i)-(iv), absent a showing of good cause, may, in the Court’s discretion, 

constitute grounds for denial of the requested relief.

Plaintiff does not even attempt to make a showing of good cause for its late filing. See ECF 

38. Courts in this district have repeatedly denied motions to compel when the moving party fails 

to provide “a valid reason to excuse the untimely filing.” See Manno v. Healthcare Revenue 

Recovery Grp., LLC, No. 11-61357-CIV, 2012 WL 1409532, at *3 (S.D. Fla. Apr. 23, 2012) 

(denying motion to compel for being three days late without a valid excuse); Habersham 

Plantation Corp. v. Molyneux, No. 10-61526-CIV, 2011 WL 1832782, at *4 (S.D. Fla. May 5, 

2011) (striking entire motion to compel as untimely). Because Plaintiff did not move to compel 

within 28 days of receipt of Defendants’ objections and failed to provide any excuse for its late 

filing, this Court should deny the motion in its entirety.

Additionally, Plaintiff’s motion fails to comply with Local Rule 26.1(g)(3), S.D. Fla. L.R., 

which provides that “a discovery motion . . . [is] limited to ten (10) pages.” See ECF 38 (presenting 

12 pages of argument). This local rule is not discretionary. Consequently, Plaintiff’s failure to 

comply with it provides a further ground for striking its motion.

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B. Plaintiff’s Motion is Improper Under the Federal Rules of Civil Procedure in 

View of the Procedural Posture of This Case

Furthermore, Plaintiff’s service of its first set of RFPs was in violation of Fed. R. Civ. P. 

26 (d)(1), which provides that “[a] party may not seek discovery from any source before the parties 

have conferred as required by Rule 26(f).” The parties have not discussed or submitted a complete 

discovery plan pursuant to Rule 26(f)(3) addressing the case-specific discovery details prescribed 

therein. In view of this procedural posture, Plaintiff’s service of requests for production was 

improper. 

Moreover, Plaintiff’s demand that Defendants respond “within 30 days” of this untimely 

service (ECF 30-1 at 1) is improper under Fed. R. Civ. P. 34(b)(2)(A), which states that responses 

to such early requests are not due until “30 days after the parties’ first Rule 26(f) conference.” The 

prescribed time period for response has not yet elapsed—or even begun—because a Rule 26(f) 

conference has not yet occurred. Plaintiff never grapples with the timing requirements set forth in 

the Federal Rules, focusing instead on only discovery scope. See, e.g., ECF 38 at 8 (setting forth 

the standards for discovery content but overlooking the legal authority setting forth the timing 

requirements).

During the meet-and-confer for this motion, Plaintiff’s counsel took the position that Rule 

26(f) has been satisfied by the parties’ discussions prior to submitting the Joint Scheduling Report 

(ECF 11). But as the Joint Scheduling Report shows, the parties’ discussions focused on

scheduling-related issues, and Defendants maintained their position that venue is improper in this 

District. ECF 11. Also, the parties did not present a “discovery plan [that] state[s] the parties’ 

views and proposals on” the specific discovery issues set forth in Rule 26(f)(3), such as any issues 

regarding electronic discovery or the production of privileged documents. Accordingly, while the 

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parties met-and-conferred to discuss a proposed schedule, a discovery plan was not submitted with 

the Scheduling Report, nor has the Court ordered the parties to develop and submit one at this time.

Plaintiff also argues on the superfluous pages of its motion that “Defendants cannot use 

dispositive motions as a basis to refuse discovery.” ECF 38 at 15. But Plaintiff misses the point. 

The procedural posture of this case reinforces why Fed. R. Civ. P. 26 and 34 are in place to 

safeguard against premature discovery requests. Defendants have moved to dismiss or transfer on 

the threshold jurisdictional issue of whether Plaintiff brought this case in an improper venue. See 

ECF 13. The motion issupported by several sworn declarations and is particularly likely to succeed 

on the merits because “[o]n a motion to dismiss based on improper venue, the plaintiff has the 

burden of showing that venue in the forum is proper,” which Plaintiff has not done here. See Wai 

v. Rainbow Holdings, 315 F. Supp. 2d 1261, 1268 (S.D. Fla. 2004). Even Plaintiff’s Amended 

Complaint relies on the same jurisdictionally deficient facts as the original one, despite Defendants’

earlier explanation as to why none of the Florida addresses constitute a “regular and established 

place of business” of either Defendant—a requirement to show patent venue. See ECF 13 at 1; 

ECF 25 at 5-7; see also TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 

1517-21 (2017); 28 U.S.C. § 1400(b). Because Defendants’ Motion to Dismiss (ECF 13) is

meritorious and case dispositive, Defendants further moved for a stay of all discovery and pending 

deadlines in this case until after this Court has ruled on Defendants’ Motion to Dismiss. See ECF 

30. In view of the Motion to Stay, which is fully briefed, Plaintiff’s motion to compel is repetitive 

and wastes judicial resources, as it essentially repeats the same issues addressed in the Motion to 

Stay. This is improper and demonstrates the Plaintiff’s disregard of the rules and lack of any facts 

or plausible theory to support patent venue in Florida. Further, the prohibitions in the Federal Rules 

of Civil Procedure on early discovery requests, like those presented by Plaintiff here, are 

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particularly necessary in cases with this procedural posture. The Court should not be burdened 

resolving discovery disputes in a case with threshold jurisdictional deficiencies and where 

Defendants have not yet even answered the Amended Complaint.

C. Plaintiff’s Discovery Requests Improperly Seek Jurisdictional Discovery to 

Support Plaintiff’s Opposition to Defendants’ Motion to Dismiss

Plaintiff’s discovery requests improperly seek jurisdictional discovery despite failing to 

follow the requisite procedures to seek leave from the Court to obtain it. See, e.g., ECF 30-1 at 

RFPs 1-10 (seeking documents related to the duties of certain individuals), RFPs 12-15 (seeking 

documents related to the corporate relationship between JTI USA and Logic); ECF 38-2 at 2 

(seeking email and document discovery for the individuals implicated in Plaintiff’s venue-based 

theories and organizational charts for companies related to Defendants). These requests are both 

procedurally improper, as Plaintiff never formally requested jurisdictional discovery, and outside 

the scope of discoverable information, as they are not relevant to any of Plaintiff’s claims or 

defenses.

Under the guise of traditional discovery, Plaintiff’s motion seeks this Court’s permission 

to engage in a fishing expedition for jurisdictionally favorable information to establish patent 

venue where it does not exist. For example, Plaintiff seeks “[a]ll documents and things relating to 

the roles and responsibilities and performance of duties of” several individuals that Plaintiff

speculates have executive duties at multiple entities related to the Defendants. See, e.g., ECF 30-

1 at 7-12; see also ECF 17 at 4-5, 8 (discussing same individuals named in discovery requests in 

opposition to motion to dismiss for improper venue). Plaintiff also seeks documents related to 

alleged “agreements and understandings” between various corporate entities and alleged 

interrelationships between them. Id. at 10-11. Even Plaintiff’s purported informal discovery 

requests continue to seek this type of jurisdictional information. See, e.g., ECF 38-2 at 2 (seeking 

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ESI searches for the same individuals implicated in Plaintiff’s joint enterprise theory in its 

opposition to Defendants’ motion to dismiss).

This type of jurisdictional discovery is outside the scope of Fed. R. Civ. P. 26 (b)(1), as the 

information sought is not “relevant to any party’s claim or defense.” That is, it is irrelevant to 

Plaintiff’s cause of action for patent infringement. Plaintiff’s attempts to characterize its requests 

in broad strokes to urge an opposite conclusion are unfounded. For example, characterizing the 

requests in part as “email searches of key individuals in the case” does not mask the undeniable 

fact that Plaintiff selected the identified individuals based on their alleged import to Plaintiff’s 

joint enterprise theory of patent venue. See ECF 17 at 4-5, 8 (identifying same individuals from 

the discovery requests in opposition to motion to dismiss); ECF 31 at 9 (identifying same 

individuals from the discovery requests in Plaintiff’s opposition to motion to stay).

Even Plaintiff’s revised informal discovery requests seek documents well beyond the scope 

of its substantive allegations in the Amended Complaint. Certain requests, for example, seek 

production of documents discussing not only the asserted ’744 patent, but also “related 

applications and publications.” ECF 38-2 at 2. Plaintiff’s motion explicitly reveals that this is 

“information relevant to the issue of whether venue is proper in this District,” not to the issue of 

patent infringement. ECF 38 at 10. Plaintiff is undeniably attempting to abuse traditional discovery 

mechanisms to fish for facts to support a non-existent basis for venue in this District. See id. at n. 

1 (“Plaintiff should, at a minimum, be allowed to engage in discovery on this issue [patent 

venue].”).

While there is a proper procedure for obtaining the type of jurisdictional discovery Plaintiff 

seeks, Plaintiff did not follow it. See United Techs. Corp. v. Mazer, 556 F.3d 1260, 1280-81 (11th 

Cir. 2009) (affirming district court’s denial of jurisdictional discovery where the plaintiff never 

Case 0:22-cv-61407-RS Document 42 Entered on FLSD Docket 05/15/2023 Page 11 of 14
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formally moved the district court for jurisdictional discovery, but, instead, buried such requests in 

its briefs as a proposed alternative to dismissal). Instead, Plaintiff first “request[ed] limited venuerelated discovery to investigate the related corporate entities of Defendants” in passing in its

Response to Defendants’ Motion to Dismiss. See ECF 17 at 6, 11. Defendants opposed this 

informal request in its Reply supporting its Motion to Dismiss, pointing out that Plaintiff had not 

met its burden of “provid[ing] the Court with some showing establishing the need for” venuerelated discovery, Vision Media TV Grp., LLC v. Forte, 724 F. Supp. 2d 1260, 1267 n.3 (S.D. Fla. 

2010), and “set[ting] forth the specific information sought that will establish jurisdiction,” Blue 

Water Innovations, LLC v. Vevazz, LLC, No. 6:20-cv-774-Orl-78DCI, 2020 WL 6828950, at *4 

(M.D. Fla. Oct. 29, 2020). See ECF 25. While the Court has not yet ruled on Plaintiff’s informal 

request for jurisdictional discovery, it is nevertheless procedurally and substantively improper, 

warranting its denial. See United Techs. Corp. v. Mazer, 556 F.3d 1260, 1280-81 (11th Cir. 2009)

(affirming district court’s denial of jurisdictional discovery where the plaintiff never formally 

moved the district court for jurisdictional discovery, but, instead, buried such requests in its briefs 

as a proposed alternative to dismissal).

Undeterred by its failure to properly request the jurisdictional discovery it desires, Plaintiff 

nevertheless served its first set of RFPs on Defendants, attempting to use traditional discovery 

mechanisms to obtain the venue-related discovery it failed to properly request earlier. Plaintiff was 

required to seek leave and demonstrate that it is entitled to venue-related discovery, which it never 

did. See Blue Water, 2020 WL 6828950 at *4-5; Vision Media, 724 F. Supp. 2d at 1267. Plaintiff 

cannot just unilaterally declare that it “should, at a minimum, be allowed to engage in discovery 

on this [venue-related] issue” without following the proper procedures for requesting leave and a 

Court order sanctioning it.

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D. Plaintiff’s Speculation is Irrelevant to the Requested Relief

In its motion, Plaintiff speculates as to the merits of its asserted patent infringement claim 

and the potential damages in this case. See ECF 38. These allegations are neither supported by the 

factual record nor relevant to the requested relief. For example, while Plaintiff argues that the 

allegedly “infringing vaping device looks almost identical to Figure 1 of the ’744 Patent,” it also 

acknowledges that “Defendants introduced a redesigned version,” and is silent with respect to any 

allegations specific to the later version. See ECF 38 at 5. Plaintiff also speculates that “significant 

damages” are at stake but relies on incomplete data and cartridge sales of the redesigned product

in reaching this conclusion. Id. at 11-12. Regardless of the accuracy of Plaintiff’s allegations, they 

are irrelevant to the requested relief and cannot excuse Plaintiff’s untimely request for 

jurisdictional discovery and its failure to follow the proper procedures for obtaining such 

discovery. Further, as addressed above, Plaintiff’s motion is repetitive and wastes judicial 

resources in view of the pending Motion to Stay, as well as Defendants’ Motion to Dismiss, which 

addresses the threshold jurisdictional deficiencies with Plaintiff’s case.

III. CONCLUSION

For the foregoing reasons, Defendants respectfully request that this Court deny Plaintiff’s 

Motion to Compel Defendants to Respond to Plaintiff’s First Set of Requests for Production. 

Dated: May 15, 2023 Respectfully submitted, 

KLUGER, KAPLAN, SILVERMAN, 

KATZEN & LEVINE

By: /s/Terri Ellen Tuchman Meyers 

Terri Ellen Tuchman Meyers

tmeyers@klugerkaplan.com

Fla. Bar No. 881279

Marissa Reichel

mreichel@klugerkaplan.com

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Fla. Bar No. 1016190

201 S. Biscayne Boulevard, Suite 2700

Miami, Florida 33131

Telephone: (305) 379-9000

FINNEGAN, HENDERSON, FARABOW,

GARRETT & DUNNER, LLP

C. Gregory Gramenopoulos (admitted pro 

hac vice)

c.gregory.gramenopoulos@finnegan.com

Kelly Horn (admitted pro hac vice)

Kelly.Horn@finnegan.com

Matthew Ritter (admitted pro hac vice)

Matthew.Ritter@finnegan.com

901 New York Avenue, NW

Washington, DC 20001

Telephone: (202) 408-4000

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