McKeon Rolling Steel Door Co., Inc. v. U.S. Smoke & Fire Corp.

Case Information

Plaintiff's time to produce damages documents is extended until one week after Defendants complete their document production. The deadline for completing the 30(b)(6) deposition of USS&F is extended until two weeks after Defendants complete their document production. USS&F shall complete its documentation by November 27, 2024. USS&F shall respond by letter to Plaintiff's request for sanctions and for an updated project chart by November 25, 2024. The deadline for expert discovery is extended until February 5, 2025. VIA ECF

United States Magistrate Judge

United States District Court Date: 11/21/2024

Southern District of New York New York, NY

500 Pearl St.

New York, New York 10007-1312

Re: McKeon Rolling Steel Door Co., Inc. v. U.S. Smoke & Fire, Inc., et al.

Case No. 1:23-cv-08720-ALC/RFT (S.D.N.Y.)

Dear Judge Tarnofsky:

We represent plaintiff McKeon Rolling Steel Door Co., Inc. (“MRSD”) in the above action. As

detailed herein, MRSD seeks an Order (1) requiring defendant U.S. Smoke & Fire, Inc. (“USS&F”)

to show cause why it should not be sanctioned for the violation of two of the Court’s document

production Orders [ECF No. 73, 90]; (2) compelling USS&F’s production of documents not yet

produced; and (3) extending deadlines as set forth below. See, e.g., Erdman v. Victor , 345 F.R.D.

60, 61–62 (S.D.N.Y. 2024) (issuing order to show cause as to “why [party] should not be

sanctioned pursuant to Fed. R. Civ. P. 16(f)(1)(C) for failing to comply with a Court order or failing

to timely apply to extend a Court-ordered deadline”).

Background On August 30, 2024, the Court issued an Order directing Defendants to produce, for the relevant

products, specifications, price quotations, and subcontracts, and documents sufficient to establish

revenues from USS&F’s sales of UL 10B projects [ECF No. 73]..

On October 31, 2024, MRSD brought a second motion to compel [ECF No. 87]. At the 30(b)(6)

deposition of USS&F, USS&F’s designee produced a list of approximately 78 UL 10B projects

(the “USS&F Project Chart”), which identified categories of documents such as specifications,

price quotations, and subcontracts, approximately 40 or so of which had not been produced.

Further, USS&F’s witness represented that its revenues for each project are set forth in price

quotations. USS&F had, as of the deposition, produced only about half of the quotations for the

UL 10B projects listed on the USS&F Project Chart.

In response to MRSD’s second motion to compel, the Court issued an Order on November 7,

2024 [ECF No. 90], directing defendants to complete their document production by November 11,

2024, and certify the completion of the production; directing MRSD to produce damages

documents by November 22, 2024; and ordering resumed depositions of the 30(b)(6) witnesses

to be completed by November 27, 2024.

LEGAL\74200076\1 3 WTC 175 Greenwich Street 55th Floor New York, NY 10007 212.509.9400 800.437.7040 212.509.9492 Fax cozen.com MRSD requires the list of UL 10B projects on which USS&F supplied fire curtains, fire shutters or

fire doors so that it can determine which projects MRSD bid on and which were lost to USS&F.

See Merck Eprova AG v. Gnosis S.p.A ., 760 F.3d 247, 265 (2d Cir. 2014) (“In a false-advertising

case such as this one, actual damages under section 35(a) can include…profits lost by the plaintiff

on sales actually diverted to the false advertiser”). MRSD requires documents sufficient to

establish the revenues Defendants received from their UL 10B-certified products so as to

establish the Defendants’ profits on sales of UL 10B-certifed products. See Nike, Inc. v. StockX

LLC , No. 22-CV-0983 (VEC), 2024 WL 3361411, at *13 (S.D.N.Y. July 10, 2024) (In a false

advertising case, “Court may ‘award a defendant's full profits,’ not just those directly tied to the

violation”) (citing Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 262 (2d Cir. 2014)).

Thus. MRSD’s production of damages documents hinges on the production from USS&F.

USS&F Production in Response to November 7 th Order On November 11th, USS&F produced more than 15,000 pages of documents not previously

produced. As directed by the Court, Defendants’ counsel also sent a certification stating: “The

following signature certifies all document productions made by the ASA, USSF and Sadeghian

defendants in response to all requests made to them by the plaintiff.”

MRSD wrote to Defendants on November 15, 2024, to identify deficiencies in the production. In

particular, the production did not include the missing specifications, price quotations, and

subcontracts. USS&F made an additional production of documents on Saturday, November 16 th

five days after the deadline to complete production.

Yesterday, November 19 th , the parties participated in a meet and confer concerning MRSD’s

intent to raise these issues with the Court. Defendants’ counsel advised, for the first time, that he

had learned that no documents from the 2024 year had been included in the production made by

USS&F and that an additional document production would therefore be made. MRSD sought

information on documents for the approximately 40 or so projects that were shown on the USS&F

Project Chart but had not been produced. Defendants’ counsel insisted that if specifications, price

quotations and subcontracts had not been produced, the projects had not, in fact, been awarded

to USS&F (despite the presence of these projects on the USS&F Project Chart).

Shortly after the call, Defendants’ counsel advised first, that he was incorrect and that the items

in the USS&F Project Chart for which there had been no production may have been projects that

were awarded to USS&F; and second, that even more documents had been located and not

produced and would be forthcoming. Today, November 20 th , Defendants’ counsel admitted that

Defendants’ production was deficient and stated that, tomorrow (November 21 st ), USS&F would

produce all missing documents - which MRSD has been requesting for weeks, including the

missing specifications, price quotations, and subcontracts.

Defendants made two additional productions and promised another production of pivotal

documents – documents MRSD does not possess yet- after it already certified that it produced all

relevant documents. These circumstances make it very difficult for MRSD to confirm that all

relevant documents have been produced, even now.

The parties had scheduled the resumed deposition of defendant Guardian for Friday, November

22 nd and MRSD is prepared to proceed with that deposition.

Concerning USS&F, however, MRSD respectfully submits that USS&F’s discovery violations

have unfairly burdened MRSD and made compliance with the rest of the Court’s schedule

extremely difficult (and, if documents have not been produced, impossible) to meet. MRSD is

producing by Friday its damages documents concerning price erosion. It is not, however, in a

position to produce documents concerning sales lost to USS&F because USS&F has not

produced information concerning those sales. In addition, USS&F has stymied MRSD’s efforts

to prepare for USS&F’s resumed 30(b)(6) deposition, currently scheduled for November 27 th

because of this ongoing failure to complete its document production.

But that is not all. In addition to violating the Court’s Orders on the two motions to compel, USS&F

has further impeded MRSD’s compliance with Friday’s deadline and its ability to prepare for

USS&F’s deposition by imposing the following conditions on MRSD.

USS&F Should be Required to Provide the City and State of Projects MRSD has, for weeks, requested that USS&F add a column to the USS&F Project Chart to identify

the physical location of the project, without which MRSD is unable to cross-reference the projects

with its own projects, which may have different reference names. MRSD submits that the usual

rule that a party is not required to create documents not in existence should be modified here.

USS&F should be required to provide this information in a concise format, rather than making

MRSD’s attorneys search for project locations in 15,000 pages of documents and in Defendants’

promised production, because (1) USS&F did not produce these documents before USS&F’s

30(b)(6) deposition on October 18 th when they should have been produced; and (2) because

USS&F has marked all of the specifications and price quotations – where the project locations

are usually found – as HIGHLY CONFIDENTIAL.

The Physical Locations of Projects is Not Highly Confidential. At USS&F’s deposition, USS&F produced the USS&F Project Chart as CONFIDENTIAL under

the Protective Order. USS&F is now taking the position that the project information provided to

MRSD at USS&F’s deposition as CONFIDENTIAL is now HIGHLY CONFIDENTIAL and cannot

be shared with MRSD’s client representative.

Even if MRSD’s attorneys are able to review the more than 15,000 pages of documents to locate

project locations (which it is attempting to do but which it has been stymied in doing because of

the way documents have been produced and because it is missing documents which have yet to

be produced), USS&F is now taking the position that MRSD’s counsel may not share the project

locations with MRSD, even though those are publicly available facts shared by USS&F in its

advertisements, for example, and even though the USS&F Project Chart has already been

supplied to MRSD on a CONFIDENTIAL basis. Cf. Red Rock Sourcing LLC v. JGX , LLC , No. 21-

CV-1054-JPC, 2022 WL 3904097, at *1 (S.D.N.Y. Aug. 30, 2022) (A party “shall have the right to

designate as ‘Attorneys' Eyes Only’ any information, document, or thing, or portion of any

document or thing that contains highly sensitive technical, financial, competitive, or personnel

information, which is not generally known by third parties”).This is absurd and, if allowed to stand,

would require MRSD’s counsel to review MRSD’s business records to engage in this cross-

referencing exercise, something that MRSD’s counsel is not qualified to do and should not have

to do at this late date.

* * *

From the outset of this case, USS&F has stated over and over that it is a small company, “not like

MRSD,” and that it cannot spend more money on this case. Enough is enough with this narrative.

MRSD is not a huge company. It, too, is a relatively small, family-owned business, which is

headquartered on Long Island. Defendants’ delays and obfuscations in discovery have

unnecessarily driven up the legal fees in this case to a degree that would be felt by any company,

large or small.

As the sole and direct result of the above-stated conduct, MRSD seeks an Order:

(1) To show cause why USS&F should not be sanctioned for the failure to complete its document production by November 11, 2024, in accordance with the Court’s Order [ECF No. 90], and the inaccurate certification submitted by Defendants’ counsel; (2) Directing USS&F to complete its document production by a date certain; (3) Extending the Friday, November 22 nd deadline by which MRSD must produce its damages documents to a date one (1) week after USS&F actually completes its document production;

(4) Directing USS&F to provide the previously produced USS&F Project Chart to MRSD, updated with all additional projects not previously listed and setting forth the city and state of each project;

(5) Extending the date of the resumed 30(b)(6) deposition of USS&F to a date two (2) weeks following the actual completion of USS&F’s document production; and (6) Extending the deadline for the completion of expert discovery and the filing of summary judgment motions by one (1) month in recognition of the delay and drawn-out fact discovery necessitated by USS&F’s conduct.

We are available for a conference with the Court and thank the Court in advance for its

consideration.

Respectfully submitted,

COZEN O'CONNOR

/s/ Lisa A. Ferrari

By: Lisa A. Ferrari

Cc: Counsel of Record (via ECF)

Case Details

Case Name: McKeon Rolling Steel Door Co., Inc. v. U.S. Smoke & Fire Corp.

Court Name: District Court, S.D. New York

Date Published: Nov 21, 2024

Docket Number: 1:23-cv-08720

Court Abbreviation: S.D.N.Y.