Princeton Digital Image Corporation v. Microsoft Corporation, No. 2:2011mc00202 - Document 1 (W.D. Wash. 2011)
Court Description: MOTION to Compel Microsoft Corporation to Respond to Subpoena, by Petitioner Princeton Digital Image Corporation. (Attachments: # 1 PROPOSED Order Granting Motion to Compel, # 2 PROPOSED Protective Order, # 3 Declaration of Jeffrey S. Pollack, # 4 Certificate of Service, # 5 E-mail Requesting New Case) Noting Date 1/13/2012. (JS) (Entered: 12/29/2011)
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Princeton Digital Image Corporation v. Microsoft Corporation Doc. 1 1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 8 9 10 11 12 13 PRINCETON DIGITAL IMAGE CORPORATION, Petitioner, MICROSOFT CORPORATION, Respondent. 16 17 [Original action pending in U.S. District Court for the Eastern District of Texas, PDIC v. Canon, Case No. 2:10-cv-29 JRG] v. 14 15 NO. PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA NOTE ON CALENDAR: January 13, 2012 18 19 20 21 22 23 24 25 26 27 PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 Dockets.Justia.com 1 I. INTRODUCTION 2 Princeton Digital Image Corporation (“PDIC”) moves to compel Microsoft Corporation 3 (“Microsoft”) to respond to PDIC’s subpoena issued in connection with the litigation captioned 4 Princeton Digital Image Corporation v. Canon, Inc., et al., No. 10-00029, currently pending in 5 the Eastern District of Texas (the “Underlying Litigation”). 6 PDIC has made every effort to address and resolve Microsoft’s objections to the 7 subpoena, and certifies that it has complied with Fed. R. Civ. P. 37(a)(1) and CR 37(a)(1)(A). 8 After meeting with Microsoft on November 7, 2011, PDIC drafted and sent Microsoft a 9 proposed Protective Order to address any confidentiality concerns Microsoft might have 10 regarding the documents and information sought by PDIC. PDIC also offered to withdraw 11 various document requests and modify others to address Microsoft’s objections based upon 12 alleged burden. 13 For its part, Microsoft has not addressed any of PDIC’s concessions or offers to 14 compromise. Instead, several weeks after meeting with PDIC, Microsoft reversed course and 15 stated, for the first time, that it would not even consider producing documents or testifying in 16 response to PDIC’s subpoena because the Underlying Litigation was purportedly stayed by an 17 Order entered in that case on October 13, 2011 – weeks before the parties initially met and 18 conferred. 19 Microsoft’s belated argument that the Underlying Litigation was stayed is incorrect. 20 The October 13, 2011 Order merely suspended selected court-ordered deadlines in the 21 Underlying Litigation (e.g., the filing of claim construction briefs) while the court considered 22 the defendants’ motion to transfer venue. Thus, the parties in the Underlying Litigation have 23 continued to engage in discovery, including the taking of depositions months after the October 24 13, 2011 Order was entered. 25 Microsoft’s shifting tactics show that its only interest is to delay its response to PDIC’s 26 subpoena and obstruct PDIC’s ability to discover relevant information to support its claims 27 against Microsoft’s customer, Hewlett-Packard Company (“HP”), a defendant in the PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 1 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 1 Underlying Litigation. This is plainly improper. Left with no valid objection to PDIC’s 2 subpoena, Microsoft should be compelled to produce documents and testify in response to the 3 subpoena. 4 II. BACKGROUND 5 A. 6 On September 27, 2011, PDIC served Microsoft with a subpoena seeking to discover The Underlying Litigation 7 information relevant to its claims against HP in the Underlying Litigation. (See the Declaration 8 of Jeffrey S. Pollack (the “Pollack Decl.”) ¶ 3, and Subpoena, a copy of which is attached to the 9 Pollack Decl. as Exhibit “A.”) At issue is whether HP infringes the following patents owned 10 by PDIC: U.S. Patent No. 4,813,056 (“the ‘056 Patent”), which teaches a method and 11 apparatus of encoding image data into a JPEG file, and U.S. Patent No. 4,860,103 (“the ‘103 12 Patent”), which teaches a method and apparatus for automatic gain control and/or exposure 13 control for digital image processing. 14 There is no dispute that HP sells computers to consumers that come pre-packaged with 15 software programs that encode image data into a JPEG file, and thus potentially infringe the 16 ‘056 Patent. Those programs are sold or provided to HP by various software manufacturers, 17 including Microsoft. 18 The functionality incorporated into this software is relevant to PDIC’s claims against 19 HP. However, HP has referred PDIC to Microsoft to obtain the relevant source code and 20 technical documents, such as schematics and flowcharts, for that software. PDIC must 21 therefore seek this information from Microsoft. 22 23 24 25 B. Microsoft’s Refusal To Produce Documents Or Testify In Response To PDIC’s Subpoena Despite PDIC’s Efforts To Address Microsoft’s Objections Microsoft served its objections to PDIC’s subpoena on October 11, 2011, refusing to produce any of the documents requested by PDIC and refusing to testify regarding any of the 26 27 PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 2 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 1 topics noticed by PDIC. (See Pollack Decl. ¶ 4, and Objections to Subpoena, a copy of which 2 is attached to the Pollack Decl. as Exhibit “B.”) On October 31, 2011, PDIC requested a meet-and-confer with Microsoft to address and 3 4 resolve Microsoft’s objections. (See Pollack Decl. ¶ 5, and Letter from Jeffrey S. Pollack to 5 Jesse J. Camacho dated October 31, 2011, a copy of which is attached to the Pollack Decl. as 6 Exhibit “C.”) The parties subsequently met and conferred via telephone on November 7, 2011 7 and discussed Microsoft’s objections. (See Pollack Decl. ¶¶ 6-7, and Letter from Jeffrey S. 8 Pollack to Jesse J. Camacho dated November 14, 2011, a copy of which is attached to the 9 Pollack Decl. as Exhibit “D.”) Following this meet-and-confer, PDIC made a good faith effort 10 to address Microsoft’s objections, making numerous concessions and offers to compromise. 11 (Id. ¶¶ 7-10 and Exh. “D.”) To address any confidentiality concerns Microsoft might have, PDIC sent Microsoft a 12 13 proposed Protective Order. (Id. ¶¶ 7-8 and Exh. “D.”) And, to address Microsoft’s objections 14 related to burden, PDIC agreed to withdraw three document requests – Requests 2, 5, and 8 – 15 and to narrow others.1 (Id. ¶ 9.) Specifically, PDIC agreed to narrow the timeframe set forth in 16 its Document Requests. (Id.) And where PDIC’s document requests sought “all documents” or 17 “any and all documents,” PDIC agreed to limit its requests to “documents sufficient to identify” 18 or “documents sufficient to refer to or reflect” the information sought. (Id.) 19 Microsoft has not addressed any of PDIC’s concessions or offers to compromise. 20 Instead, several weeks after meeting with PDIC, Microsoft reversed course, stating, for the first 21 time, that it would not even consider responding to PDIC’s subpoena. (See Pollack Decl. ¶ 22 11 and Email dated December 7, 2011 from Jesse J. Camacho to Jeffrey S. Pollack, a copy of 23 24 25 26 27 1 These concessions and compromises were made by PDIC with the expectation that Microsoft would produce documents responsive to PDIC’s document requests. Although PDIC reserved the right to seek full compliance with its subpoena should Microsoft refuse to produce documents, PDIC stands by its original concessions and offers to compromise in this motion, except as otherwise stated herein. In moving to compel Microsoft to produce documents responsive to only certain of the requests contained in PDIC’s subpoena and to testify at deposition regarding only certain of the topics listed in the subpoena, PDIC does not waive the right to seek, at a later date, Microsoft’s full compliance with the subpoena. SAVITT BRUCE & WILLEY LLP PRINCETON DIGITAL IMAGE CORPORATION’S MOTION 1425 Fourth Avenue Suite 800 TO COMPEL MICROSOFT CORPORATION TO RESPOND Seattle, Washington 98101-2272 TO SUBPOENA - 3 (206) 749-0500 No. 1 which is attached to the Pollack Decl. as Exhibit “E.”) Microsoft did so on the purported basis 2 that an order entered in the Underlying Litigation on October 13, 2011 – weeks before the 3 parties’ initially met and conferred – had stayed the Underlying Litigation. (Id.) As discussed above and as set forth below in greater detail, the Underlying Litigation is 4 5 not stayed. (Id.) This is merely a tactic by Microsoft to delay its obligation to produce 6 documents and be deposed. Accordingly, for these and the reasons that follow, Microsoft 7 should be compelled to produce documents and testify in response to PDIC’s subpoena. 8 III. 9 10 11 12 13 14 15 16 17 ARGUMENT A. The Underlying Litigation Is Not Stayed; Microsoft Is Required To Respond To PDIC’s Subpoena Microsoft’s assertion that the Underlying Litigation is stayed is demonstrably wrong. On October 13, 2011, the following order was entered in the Underlying Litigation: It is therefore ORDERED that in light of the Order granting Defendants’ Motion to Transfer Venue [Dkt. No. 143], the Court hereby suspends any and all pending deadlines pursuant to the Local Patent Rules and the Court’s Docket Control Order [Dkt. No. 69] and Discovery Order [Dkt. No. 70] until such time as the Court has ruled on PDIC’s Motion for Reconsideration [Dkt. No. 146] of the Order granting Defendants’ Motion to Transfer Venue. 18 (See October 13, 2011 Order, a copy of which is attached to the Pollack Decl. as Exhibit “F”) 19 (emphasis added). The effect of this order is that the parties do not have to comply with the 20 deadlines previously set by the Court (e.g. the filing of claim construction briefs). As case law 21 from the Eastern District of Texas – where the Underlying Litigation is pending – shows, the 22 intent of this order is not to stay discovery. Mass. Inst. of Tech. v. Abacus Software, 2004 U.S. 23 Dist. LEXIS 30049, at *9 (E.D. Tex. Sept. 29, 2004) (holding that order “suspending the then- 24 current scheduling order . . . did not stay discovery.”); accord Tree of Life Distrib. Co. v. 25 National Enters., 1998 U.S. Dist. LEXIS 17980, at *7 (D.V.I. Nov. 5, 1998) (“the mediation 26 order did not ‘stay’ the case; it simply ‘suspended’ all deadlines pending mediation.”). 27 Accordingly, the parties in the Underlying Litigation continue to conduct discovery, as PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 4 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 1 evidenced by the fact that PDIC conducted the deposition of Defendant Xerox International 2 Partners on December 1, 2011 – almost two months after the October 13, 2011 Order was 3 entered. (See Pollack Decl. ¶ 13.) 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 B. Microsoft Should Be Compelled To Produce Documents And Be Deposed In Response To PDIC’s Subpoena 1. The Standard for Third Party Discovery In determining whether to enforce a subpoena under Rule 45 of the Federal Rules of Civil Procedure, “the Court needs to balance (1) the relevance of the information sought in the underlying case, (2) the requestors’ need for the information from the subpoenaed source, (3) the burden on the source to produce the information, and (4) the harm, if any, that disclosure of the requested information would have on the source.” Norex Petroleum Limited v. Chubb Ins. Co., No. 04-281, 2005 U.S. Dist. LEXIS 19127, at *3-4 (D.D.C. Mar. 9, 2005); Gonzales v. Google, Inc., 234 F.R.D. 674, 680 (N.D. Cal. 2006) (“a court determining the propriety of a subpoena balances the relevance of the discovery sought, the requesting party's need, and the potential hardship to the party subject to the subpoena.”). “Relevancy for discovery purposes is construed broadly to encompass “any matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in a case.” EEOC v. Wal-Mart Stores, Inc., 2011 U.S. Dist. LEXIS 133051, at *11 (E.D. Wash. Sept. 21, 2011); Florer v. Johnson-Bales, 2009 U.S. Dist. LEXIS 104617, at *6 (W.D. Wash. Oct. 20, 2009) (same). 2. Microsoft Should Be Compelled To Produce Source Code Regarding Software That Microsoft Provided Or Sold To HP And That Practices The Claims Of PDIC’s ‘056 Patent (Requests 1 and 3) PDIC’s claims against HP arise, at least in part, from PDIC’s assertion that computers 24 sold by HP come pre-packaged with Microsoft software that generates JPEG image files in a 25 manner that infringes the claims of the ‘056 Patent. Because the JPEG encoding functionality 26 is embodied in the algorithms contained in the source code corresponding to the Microsoft 27 PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 5 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 1 software products, the source code will provide information that is relevant to PDIC’s claims 2 against HP in the Underlying Litigation. Those trained in reading source code can learn from it exactly how a program operates 3 4 and, therefore, whether it practices the claims of the patents in-suit. Courts have accordingly 5 found, in patent infringement cases, that source code is highly relevant and discoverable. 6 Forterra Sys. v. Avatar Factory, 2006 U.S. Dist. LEXIS 63100, at *3-5 (N.D. Cal. Aug. 22, 7 2006) (granting motion to compel source code in its entirety, finding source code to be relevant 8 in patent infringement action); In re Google Litig., 2011 U.S. Dist. LEXIS 9924, at *21 (N.D. 9 Cal. Jan. 27, 2011) (holding that “there is no serious question” that source code for product 10 accused of infringement is discoverable). PDIC understands that at least one product that Microsoft provides or sells to HP that 11 12 encodes data into a JPEG file in an infringing manner is the Microsoft Scanner and Camera 13 Wizard. However, PDIC has imperfect knowledge regarding the identity and functionality of 14 all of Microsoft’s software products. There are likely other such products that PDIC is unaware 15 of which incorporate the same (or substantially similar) JPEG encoding functionality as the 16 Scanner and Camera Wizard. Thus, PDIC requested that Microsoft produce the following: 1. The source code (in a form readable by a source code editor tool) for all versions of the Microsoft Scanner and Camera Wizard that you sold or otherwise provided directly or indirectly to HP for use on computers offered for sale, sold or imported in the United States from 2004-2008. 17 18 19 20 21 22 23 (Exh. “A” to the Pollack Decl.) Microsoft has no valid objections to producing this source code. Any such objections 24 25 26 27 3. All versions of all source code (in a form readable by a source code editor) for encoding data into a JPEG file format and/or And decoding JPEG files for each JPEG Software Product2 identified in response to Request No. 2. were addressed and resolved by PDIC following the parties’ meet-and-confer. Specifically, 2 “JPEG Software Product” is defined as “any software product that incorporates the functionality to encode data into a JPEG file format and/or the functionality to decode JPEG files, including without limitation the Microsoft Scanner and Camera Wizard and any and all Microsoft software applications and Microsoft operating systems.” SAVITT BRUCE & WILLEY LLP PRINCETON DIGITAL IMAGE CORPORATION’S MOTION 1425 Fourth Avenue Suite 800 TO COMPEL MICROSOFT CORPORATION TO RESPOND Seattle, Washington 98101-2272 TO SUBPOENA - 6 (206) 749-0500 No. 1 Microsoft objected to producing documents responsive to Requests 1 and 3 beyond the ‘056 2 Patent’s expiration date and without a protective order. (See Exh. “B” to the Pollack Decl.) 3 These objections were addressed and resolved by PDIC’s agreement to limit the timeframe of 4 its document requests to January 1, 2004 – December 8, 2007, and by the Protective Order 5 PDIC drafted and offered to enter into with Microsoft. (See Pollack Decl. ¶¶ 8-9 and Exh. 6 “D.”) Microsoft has raised no objection to the Protective Order drafted by PDIC. The Court 7 should therefore enter the Protective Order and compel Microsoft to produce source code.3 With respect to Request 3, Microsoft raised two additional objections: (1) that Request 8 9 3 was overly broad because PDIC did not identify the specific products for which it was 10 seeking source code; and (2) that PDIC’s request for “source code . . . for encoding data into a 11 JPEG file format and/or decoding JPEG files” was overbroad because, as Microsoft interprets 12 it, the ‘056 Patent does not pertain to decoding JPEG files. (See Exhs. “B” and “D” to the 13 Pollack Decl.) PDIC has satisfied its initial burden of identifying which of Microsoft’s numerous 14 15 products encode JPEG files. PDIC has provided ample information regarding the relevant 16 JPEG encoding functionality to guide Microsoft’s identification of products that include that 17 functionality. Certainly, Microsoft is familiar enough with its own products and their 18 functionality to be able to readily identify which of them encode JPEG files in a manner that is 19 the same as, or substantially similar to, how the Microsoft Scanner and Camera Wizard 20 implements JPEG image file encoding. Even so, in an effort to alleviate any undue burden on 21 3 22 23 24 25 26 27 The objections referenced above are the only ones that Microsoft has raised to Request 1 in PDIC’s subpoena. Accordingly, there should be no further obstacle to producing source code related to the Microsoft Scanner and Camera Wizard. In Forterra Systems v. Avatar Factory, supra, the producing party, like Microsoft, “claim[ed] undue burden from the risk of inadvertent disclosure if the highly confidential and proprietary source code is produced.” 2006 U.S. Dist. LEXIS 63100, at *4. The court held that this did not constitute a valid ground on which to resist discovery because “[a] court may order that ‘confidential information not be revealed or be revealed only in a designated way.’” Id. (citing Fed. R. Civ. P. 26(c)(7)). Here, PDIC has drafted and presented Microsoft with a proposed Protective Order to which Microsoft has asserted no objection. (See Pollack Decl. ¶ 8 and Exh. “D.”) PDIC requests that the Court enter that Protective Order and compel the production of source code responsive to PDIC’s subpoena. In conjunction with this motion, PDIC is submitting a version of the proposed Protective Order (1) that has been reformatted to comply with CR 10, and (2) the first paragraph and signature block of which have been modified to reflect the fact that Microsoft has not stipulated to the order’s entry. The proposed Protective Order being submitted today is otherwise identical to Exhibit D to the Pollack Declaration. SAVITT BRUCE & WILLEY LLP PRINCETON DIGITAL IMAGE CORPORATION’S MOTION 1425 Fourth Avenue Suite 800 TO COMPEL MICROSOFT CORPORATION TO RESPOND Seattle, Washington 98101-2272 TO SUBPOENA - 7 (206) 749-0500 No. 1 Microsoft, PDIC identified the following Microsoft products for which it seeks source code 2 based upon the ability of those products to incorporate, edit or save JPEG images: (i) Microsoft 3 Word; (ii) Microsoft PowerPoint; (iii) Microsoft Paint; (iv) Windows Photo View; (v) 4 Microsoft Office; (vi) Windows Media Center; and (vii) Microsoft Excel. (See Pollack Decl. ¶ 5 10 and Exh. “D.”) Not even this limitation on the scope of PDIC’s subpoena prompted Microsoft to 6 7 produce source code. Instead, having once again obtained the concessions it requested from 8 PDIC, Microsoft argued that even this short list of products was overbroad.4 (See Exh. “E” to 9 the Pollack Decl.) Microsoft’s position is untenable. Microsoft is best suited to know and, 10 indeed, should know the functionality of its own products and be able to produce source code 11 related thereto. Thus, having rejected PDIC’s reasonable compromise on this issue, Microsoft 12 should be compelled to produce source code for all of the products it provided or sold to HP 13 during the relevant timeframe that can encode data into JPEG files. 14 3. 16 Microsoft Should Be Compelled To Produce The Revision History For Source Code Related To The Software Products Microsoft Provided Or Sold To HP, Which Practice The Claims Of PDIC’s ‘056 Patent (Request 6) 17 The revision history for source code also is discoverable. Netbula, LLC v. Chordiant 15 18 Software, Inc., 2009 U.S. Dist. LEXIS 131547, at *4 (N.D. Cal. Dec. 16, 2009); see also 19 LaserDynamics, Inc. v. Asus Computer Int’l, 2009 U.S. Dist. LEXIS 3878, at *16 (E.D. Tex. 20 Jan. 21, 2009) (ordering production of drafts or revisions to source code). 21 Revisions to Microsoft’s source code will show whether and how Microsoft’s products 22 changed over time, including whether they may have practiced the claims of the ‘056 Patent at 23 one point in time but not at another. Source code revisions can also show if Microsoft’s 24 25 26 27 4 Microsoft complains that PDIC included Microsoft Office alongside products that are offered as part of Microsoft Office. (See Exh. “E” to the Pollack Decl.) This does not make PDIC’s request overly broad. Instead, it highlights how Microsoft holds all of the cards in this action. Microsoft knows its products and what they do. Thus, its demand that PDIC identify which of its products encode JPEG files is absurd. Microsoft also complains that PDIC has not identified what version of software it is looking for. (Id.) But PDIC already informed Microsoft that the scope of its subpoena is from January 1, 2004 – December 8, 2007. Thus, PDIC seeks all versions of Microsoft’s software that encode JPEG files provided or sold to HP during the relevant timeframe. SAVITT BRUCE & WILLEY LLP PRINCETON DIGITAL IMAGE CORPORATION’S MOTION 1425 Fourth Avenue Suite 800 TO COMPEL MICROSOFT CORPORATION TO RESPOND Seattle, Washington 98101-2272 TO SUBPOENA - 8 (206) 749-0500 No. 1 products always possessed the ability to encode JPEG files or if that functionality was added by 2 Microsoft later. Either way, source code revisions may constitute evidence of, among other 3 things, the “utility and advantages of” PDIC’s patents “over old modes and devices,” and “the 4 benefit of those who have used” PDIC’s patented invention, all of which is relevant to PDIC’s 5 damages claim in the Underlying Litigation. Georgia-Pacific Corp. v. United States Plywood 6 Corp., 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970). Accordingly, Microsoft should be 7 compelled to produce documents responsive to the following: 8 9 10 11 6. Any and all documents which refer to or reflect any revisions or changes to the source code for the JPEG Software Products identified in response to Request No. 2 that were requested by HP. (Exh. “A” to the Pollack Decl.) 12 Once again, Microsoft has no valid objections to producing the documents requested by 13 PDIC. Any such objections were addressed and resolved by PDIC following the parties’ meet- 14 and-confer. Specifically, Microsoft objected to this request claiming that the phrase “any and 15 all documents” was overbroad. (See Exh. “D” to the Pollack Decl.) In response, PDIC agreed 16 to limit this request to “documents sufficient to refer to, reflect and identify all revisions or 17 changes to source code” for the software products Microsoft provided or sold to HP during the 18 relevant timeframe that can encode JPEG files. (Id.) This includes Microsoft’s source code 19 revision history. Accordingly, Microsoft should be compelled to produce documents and 20 source code responsive to this request. 21 4. Microsoft Should Be Compelled To Produce Technical Documents Illustrating The Manner In Which Its Products Operate (Request 4) 22 In addition to source code, PDIC is entitled discover technical documents, such as 23 schematics and flow charts, that illustrate or describe the manner in which Microsoft’s products 24 encode JPEG files. See Automated Merch. Sys. v. Crane Co., 2011 U.S. Dist. LEXIS 122166, 25 at *27-28 (N.D. W. Va. Oct. 21, 2011) (ordering production of schematics); Implicit Networks, 26 Inc. v. Microsoft Corp., 2009 U.S. Dist. LEXIS 115708, at *3 (N.D. Cal. Nov. 23, 2009) 27 PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 9 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 1 (ordering production of documents describing functionality of accused product); 2 LaserDynamics, Inc., 2009 U.S. Dist. LEXIS 3878 at *16 (ordering production of schematics 3 describing functionality of accused process). Microsoft should, therefore, be compelled to 4 produce documents responsive to the following: 5 6 7 8 9 10 4. All documents that illustrate and/or describe the manner in which each JPEG Software Product identified in response to Request No. 2 encodes data into a JPEG file format and/or decodes a JPEG file, including documents that identify the codewords employed to encode data into a JPEG file format and/or to decode a JPEG file. (Exh. “A” to the Pollack Decl.) As with the document requests discussed above, any objections Microsoft may have had 11 to producing documents responsive to this request were addressed and resolved by PDIC 12 following the parties’ meet-and-confer. Similar to Request 6, discussed above, Microsoft 13 objected to Request 4 claiming that the request for “all documents” was overbroad. (See Exh. 14 “D” to the Pollack Decl.) PDIC addressed and resolved this objection, agreeing to limit its 15 request to “documents sufficient to identify the information requested.” (Id.) This includes 16 technical documents, schematics, and flow charts. Accordingly, Microsoft should be 17 compelled to produce documents responsive to this request. 19 Microsoft Should Be Compelled To Produce Documents Related To The Patents In Suit And The Underlying Litigation (Requests 7 and 9) 20 Microsoft should also be compelled to respond to the following document requests and 18 21 22 23 24 5. to produce documents that relate to the patents-in-suit and the Underlying Litigation: 7. All documents which refer or relate to this lawsuit, the Patentsin-Suit, Princeton Digital or Princeton Digital Image Compression 25 26 And 9. Any and all documents which refer or relate to a request and/or inquiry for documents made by HP, in the time period 2010 to present relating to or for purposes of this lawsuit. (Exh. “A” to the Pollack Decl.) 27 PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 10 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 1 Any documents Microsoft possesses regarding the Underlying Litigation or PDIC are 2 relevant and discoverable. Such documents may reflect, among other things, information 3 regarding the utility of the patents-in-suit, their profitability, and their ability to promote the 4 sale of other products. Georgia-Pacific Corp., 318 F. Supp. at 1119-20. 5 Documents reflecting any inquiry from HP relating to the Underlying Litigation may 6 contain similar analyses. Moreover, they are relevant and discoverable to show what products 7 Microsoft and HP believe may encode JPEG files and practice the claims of the ‘056 Patent. 8 Accordingly, Microsoft should be compelled to produce documents responsive to these 9 requests. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 6. Microsoft Should Be Compelled To Be Deposed Regarding The Topics Related To The Document Requests Set Forth Above Because Microsoft refused to produce any documents responsive to PDIC’s subpoena, PDIC postponed Microsoft’s subpoenaed deposition with the expectation that “once Microsoft produces documents and makes source code available for inspection it will make a witness available to be deposed on the deposition topics noticed.” (See Exh. “D” to the Pollack Decl.) Due to Microsoft’s refusal to produce any documents, this issue was left unresolved. To ensure that the parties are not back before the Court after Microsoft is compelled to produce documents and source code to PDIC, PDIC requests at this time that Microsoft also be compelled to testify regarding the following deposition topics, each of which relates to the document requests discussed above: (1) Topic 1 (The identity and operation of each JPEG Software Product sold or provided to HP); (2) Topic 2 (the individuals who designed and programmed the JPEG Software Product sold or provided to HP); (3) Topic 3 (circumstances surrounding any and all revisions or changes to each JPEG Software Product); (4) Topic 6 (the circumstances surrounding any and all requests and/or inquiries for documents made by HP); and (5) Topic 7 (the identity, source and authenticity of each document or thing (including source code) produced in response to PDIC’s document requests). (Subpoena at Deposition Topics 1-3 & 6-7, Exh. “A” to the Pollack Decl.) PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 11 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500 1 2 3 4 IV. CONCLUSION For each of the foregoing reasons, PDIC respectfully requests that the Court grant its Motion to Compel and order the relief requested herein and in the enclosed form of Order. DATED: December 29, 2011. 5 SAVITT BRUCE & WILLEY LLP 6 7 By 8 9 10 11 12 /s/ Duncan E. Manville David N. Bruce, WSBA #15237 Duncan E. Manville, WSBA #30304 1425 Fourth Avenue, Suite 800 Seattle, Washington 98101-2272 Telephone: 206.749.0500 Facsimile: 206.749.0600 Email: dbruce@jetcitylaw.com Email: dmanville@jetcitylaw.com Attorneys for Princeton Digital Image Corporation 13 OF COUNSEL: 14 15 16 17 18 19 20 21 22 DUANE MORRIS LLP Gregory M. Luck, P.C. Thomas W. Sankey, P.C. Wesley W. Yuan Diana M. Sangalli 1330 Post Oak Blvd, Suite 800 Houston, Texas 77056-3166 Telephone: 713.402.3900 Facsimile: 713.583.3901 Email: gmluck@duanemorris.com Email: twsankey@duanemorris.com Email: wwyuan@duanemorris.com Email: dmsangalli@duanemorris.com Jeffrey S. Pollack 30 South 17th Street Philadelphia, PA 19103-4196 Telephone: 215.979.1299 Facsimile: 215.689.4942 Email: jspollack@duanemorris.com 23 24 25 26 27 PRINCETON DIGITAL IMAGE CORPORATION’S MOTION TO COMPEL MICROSOFT CORPORATION TO RESPOND TO SUBPOENA - 12 No. SAVITT BRUCE & WILLEY LLP 1425 Fourth Avenue Suite 800 Seattle, Washington 98101-2272 (206) 749-0500
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