-WVG Jardin v. Datallegro Inc et al, No. 3:2011cv00087 - Document 19 (S.D. Cal. 2011)
Court Description: ORDER denying in part and granting in part Plaintiff's 1 Motion to Compel: The Court denies in part Plaintiff's motion as to document requests 1-10 and 12 and grants in part Plaintiff's motion as to requests 11, 13, and 14. However, Microsoft shall not be compelled to produce the documents until Judge Gonzalez's ruling on Defendants' summary judgment motion of invalidity. If Judge Gonzalez denies the motion, Microsoft shall produce the documents within four (4) court days of Judge Gonzalez's order. Signed by Magistrate Judge William V. Gallo on 5/9/11. (rlu)
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-WVG Jardin v. Datallegro Inc et al Doc. 19 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 13 14 15 16 CARY A. JARDIN, ) ) Plaintiff, ) ) v. ) ) DATALLEGRO, INC., et al., ) ) Defendants. ) ) _______________________________ ) 17 No. 11-CV-87-IEG(WVG) ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO COMPEL [DOC. NO. 1] This case appeared on the Court’s docket when the United 18 States 19 transferred Plaintiff’s motion to compel Microsoft, Inc., to respond 20 to 21 DATAllegro, Inc., et al., S.D. Cal. No. 08-CV-1462-IEG(WVG) (“2008 22 Case”). 23 Plaintiff’s motion to compel, which the Court finds suitable for 24 decision without oral argument. 25 reasons stated below, Plaintiff’s motion is GRANTED IN PART and 26 DENIED IN PART. 27 / / / 28 / / / District Plaintiff’s Court for requests the for Western document District production of in Washington Jardin v. The only issue for resolution in the instant case remains S.D. Cal. Civ. L. R. 7.1. 1 For the 11CV87 Dockets.Justia.com 1 I. BACKGROUND 2 Before Plaintiff’s claims were summarily adjudicated in 3 Defendants’ favor, he alleged patent infringement against Defendants 4 Frost and DATAllegro, Inc., which has been purchased by non-party 5 Microsoft, Inc. 6 with a subpoena duces tecum that sought various categories of 7 documents related to Microsoft’s purchase of DATAllegro. 8 it appears that Microsoft initially complied by producing some 9 documents, the company later refused to produce other documents it 10 found. 11 On September 30, 2010, Plaintiff served Microsoft Although in Washington. The instant motion to compel followed on December 20, 2010, 12 On January 14, 2011, the fully-briefed motion was transferred 13 to this Court after Plaintiff and Microsoft jointly moved for the 14 transfer. 15 consent[ed] to the transfer for the limited purpose of resolving the 16 pending discovery dispute,” (Doc. No. 11 at 2:3-4), and “agree[d] to 17 be bound by, and comply with, any order issued from [this Court],” 18 (id. at 2:19-3:1). 19 (Doc. Nos. 11-13.)1/ At that time, Microsoft “expressly On February 4, 2011, this matter was low-numbered to the 2008 20 Case. 21 discovery in the 2008 Case pending the outcome of a motion to 22 dismiss 23 DATAllegro, Inc. et al., S.D. Cal. No. 10-CV-2552-IEG(WVG) (“2010 24 Case”). On February 18, 2011, Defendants asked for a stay of that was pending in another related case, Jardin v. (Doc. No. 155.) 25 On March 23, 2011, the Court stayed discovery after hearing 26 arguments and deferred ruling on the present motion until the stay 27 28 1/ Page references to documents on the Court’s docket are to the CM/ECF pagination, not the document’s native pagination. 2 11CV87 1 lifted. 2 Judge Gonzalez ruled on Defendants’ motion to dismiss in the 2010 3 Case. (Doc. No. 188.) On April 12, 2011, the stayed lifted after (Doc. No. 205.) 4 II. 5 LEGAL STANDARD A motion to compel is appropriate when a party fails to 6 produce 7 subpoenaed. 8 compel compliance bears the burden of establishing that its document 9 requests satisfy the relevancy requirements of Rule 26(b)(1).2/ relevant, non-privileged documents Fed. R. Civ. P. 45(c)(2)(B)(i). that a party has The party seeking to See 10 Soto v. City of Concord, 162 F.R.D. 603, 610 (N.D. Cal. 1995) 11 (finding that a relevant matter is “any matter that bears on, or 12 that reasonably could lead to other matters that could bear on, any 13 issue that is or may be in the case.”). 14 federal discovery is broad. See Herbert v. Lando, 441 U.S. 153, 177 15 (1979); Epstein v. MCA, Inc., 54 F.3d 1422, 1423 (9th Cir. 1995) 16 (“[W]ide access to relevant facts serves the integrity and fairness 17 of the judicial process by promoting the search for truth.”). 18 broad scope of permissible discovery encompasses “any matter that 19 bears on, or that reasonably could lead to other matter that could 20 bear on, any issue that is or may be in the case.” 21 cese of Portland, 717 F. Supp. 2d 1120, 1126 (D. Or. 2010) (citing 22 Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)). Moreover, the scope of Doe v. Archdio- 23 24 25 26 27 28 2/ Rule 26's use of “relevant to the subject matter” is interpreted broadly, and includes information that might “reasonably assist a party in evaluating the case, preparing for trial, or facilitating settlement.” Moe v. Sys. Transp., Inc., 270 F.R.D. 613, 618 (D. Mont. 2010). Even if it would not be admissible at trial, relevant information may be discoverable if it “appears reasonably calculated to lead to the discovery of admissible evidence.” Fed. R. Civ. P. 26(b)(1). Hearsay or nonhearsay information relating to the credibility of witnesses or other evidence in the case may be relevant to the subject matter of the action. Oakes v. Halvorsen Marine Ltd., 179 F.R.D. 281, 284 (C.D. Cal. 1998); Ragge v. MCA/Universal Studios, 165 F.R.D. 601, 603-04 (C.D. Cal. 1995). 3 The 11CV87 1 Discovery is not limited to the merits of a case, “for a variety of 2 fact-oriented issues may arise during litigation that are not 3 related to the merits.” 4 controlling discovery, and [their] rulings will not be overturned in 5 the absence of a clear abuse of discretion.” 6 & Co., 816 F.2d 1406, 1416-17 (9th Cir. 1987). 7 After the moving Id. party Courts have “wide latitude in makes the Volk v. D.A. Davidson requisite showing of 8 relevance, the party opposing the discovery has the burden of 9 showing that it should be prohibited, as well as the burden of 10 clarifying, explaining, and supporting its objections. 11 Inc. 12 Blankenship v. Hearst Corp., 519 F.2d 418, 429 (9th Cir. 1975)). v. Trone, 209 F.R.D. 13 14 III. A. 455, 458 (C.D. Cal. 2002) DIRECTV, (citing DISCUSSION Relevancy Predicated on Plaintiff’s Former Claims 15 Plaintiff’s subpoena contains fourteen document categories. 16 Microsoft objected on the ground, inter alia, that the documents are 17 not relevant. 18 heavily on the following argument: 19 Microsoft relate to its evaluation of the accused technology and, at 20 a minimum, are relevant to Jardin’s proof of infringement and value 21 of the accused technology. 22 likewise 23 theories and defenses.” 24 argument is no longer valid in light of recent events in the 2008 25 Case. 26 Plaintiff’s current proffer of relevancy relies relevant to “[T]he documents identified by The other requested documents are Jardin’s damages theories, (Doc. No. 1 at 4:17-20.) infringement However, this On April 1, 2011, Judge Gonzalez granted in toto Defendants’ 27 motion for summary judgment of non-infringement. 28 On April 11, 2011, Judge Gonzalez denied Plaintiff’s motion for 4 (Doc. No. 191.) 11CV87 1 summary judgment of infringement. 2 resulted in the complete disposition of Plaintiff’s case. 3 result, any relevancy arguments that relate in any way to Plain- 4 tiff’s former claims (e.g., to establish damages and to prove 5 Defendants’ infringement of his technology) are now moot. 6 The foregoing (Doc. No. 197.) notwithstanding, this case These orders lives As a on, as 7 Defendants currently have two counterclaims for declaratory relief 8 pending against Plaintiff. 9 below, Defendants seek to invalidate various claims in Plaintiff’s (See Doc. Nos. 44, 45.) As explained 10 patent (“2008 Patent”) and render it unenforceable. 11 only the relevancy arguments that bear on the counterclaims remain 12 at issue. 13 B. As a result, Plaintiff’s Conclusory Statements Are Unpersuasive 14 Although the main thrust of Plaintiff’s motion is Microsoft’s 15 documents’ relevancy to infringement and damages, Plaintiff inserts, 16 seemingly as an afterthought, the following sentence at the end of 17 each argument section: 18 ness regarding the [2008 Patent], including long-felt need, failure 19 of others, and commercial success of the accused products.” 20 “[S]econdary considerations of non-obvious- Microsoft objects that these passages are conclusory and 21 unhelpful: 22 cient to meet Plaintiff’s burden of proving the relevance of his 23 requests.” 24 25 26 27 28 “This mere listing of unspecified factors is insuffi- (Doc. No. 8 at 9:1-2.) Microsoft continues: For instance, what exactly are Plaintiff’s equitable defenses resulting from Defendants’ infringement” (he never identifies them) and how could they possibly relate to documents Microsoft might have in its possession (he does not say)? And what do Microsoft’s documents have to do with the validity of Plaintiff’s patent? Moreover, the shotgun approach is not helpful to either Microsoft or the Court in determining whether the expense of conducting full custodial searches is warranted, and is precisely why Microsoft could not 5 11CV87 1 reach agreement with Plaintiff. Plaintiff, for the most part, makes no effort to align the requested materials with the alleged “defenses” he has not even identified or explain how exactly they would be relevant. 2 3 4 (Id. at ll. 2-10.) 5 Microsoft’s assessment. 6 representation that a “full custodial search” is necessary here is 7 inaccurate since it appears that Plaintiff has narrowed his requests 8 to documents that the so-called “Deal Team” produced or possessed. 9 Thus, Plaintiff’s requests, as narrowed during meet and confer 10 efforts, no longer ask Microsoft to search the records of all of its 11 employees. 12 cursory “shotgun” approach does not flesh out how the subpoenaed 13 documents are relevant to his “secondary considerations of non- 14 obviousness.” 15 Without Plaintiff’s adherence to the basic tenet of persuasive 16 writing (i.e., “show me, don’t tell me”), the Court is left to its 17 own devices to construct an argument that supports the documents’ 18 relevance. 19 conclusory statements do not satisfy his initial burden to show the 20 relevancy of the documents he seeks. 21 C. For the most part, the Court agrees with However, the Court notes that Microsoft’s In any event, Defendants are correct that Plaintiff’s Plaintiff’s Reply does not flesh out this argument. The Court declines to do so. As a result, these Frost’s Reduction of the Invention to Practice 22 Plaintiff’s motion contains a final argument, that documents 23 requests 11, 13, and 143/ are relevant because they bear on Defen- 24 dants’ counterclaim allegations that the 2008 Patent is invalid and 25 26 27 28 3/ Request 11 asks for “[a]ll Documents that were transferred by [law firm, McDermott, Will & Emory, LLP] related to DATAllegro, including, but not limited to, any documents transferred by MWE to Microsoft employee Rachel Frodsham.” Request 13 asks for “[a]ll Documents Concerning the prosecution of the following U.S.P.T.O. applications: 20050187977, 20060218190, and 20070299812.” Request 14 asks for “[a]ll Documents Concerning the following application numbers filed with the U.S.P.T.O.: 60/546,428; 11/059,510; 60/665,357; and 11/390,247.” 6 11CV87 1 unenforceable, and that Stuart Frost invented the disputed technol- 2 ogy before Plaintiff did. 3 claims to have invented what is claimed by the [2008 Patent] before 4 Jardin did, thereby rendering the [2008 Patent] invalid . . . .”) 5 (emphasis in original).) 6 documents “should include notes or other evidence regarding when 7 Frost conceived and reduced to practice Jardin’s claimed inven- 8 tions.” 9 document requests 11, 13, and 14 reasonably bear on issues raised by 10 (Doc. No. 1 at 14:3-4, 15:7-8 (“Frost Specifically, Jardin posits that the (Id. at 14:5-6, 15:9-10.) The Court concludes that Defendants’ counterclaims. 11 In the summary judgment motion of invalidity, Defendants 12 argue that filing timelines establish that the 2008 Patent antici- 13 pates Frost’s patent (“2010 Patent”), and the 2008 Patent is invalid 14 as a result. 15 Patent is prior art to the 2008 Patent. 16 true, application filing dates are not necessarily conclusive or 17 dispositive, as the United States currently embraces a first-to- 18 invent, not a first-to-file, patent system. 19 change this soon, the law as it stands now provides that “[a] person 20 shall be entitled to a patent unless”: 21 (Doc. No. 179-1 at 7-9.) Defendants claim the 2010 However, even if this is Although Congress may [B]efore such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. 22 23 24 25 26 35 U.S.C. § 102(g)(2). 27 his inventorship up to one year prior to his application filing 28 date. An inventor may “swear back” to establish See 35 U.S.C. § 102(b). Importantly, “prior conception of 7 11CV87 1 the invention by another does not defeat one’s right. 2 barrier is created by § 102(g) unless another has either actually 3 reduced the invention to practice or has constructively reduced it 4 to practice by filing a patent application.” 5 450, 454 (C.C.P.A. 1982). 6 In this case, timing matters. No possible In re Katz, 687 F.2d The 2008 Patent theoretically 7 could be sworn back to March 23, 2003. 8 been granted the 2010 Patent, Microsoft’s records may contain 9 relevant information regarding Frosts reducing the invention at 10 However, since Frost has issue to practice. 11 Because Section 102(g) does not invalidate the 2008 Patent 12 unless Frost “actually reduced the invention to practice,” a factual 13 dispute about the timing of Frost’s and Plaintiff’s reduction of the 14 invention to practice could exist. 15 summary judgment motion advances this argument. 16 at 10-11.) 17 1 at 14:3-7, 15:6-10.) 18 Microsoft’s possession may be relevant to the extent that they 19 potentially bear on this issue. 20 Plaintiff has satisfied his burden of showing the relevance of these 21 limited document requests. Plaintiff’s opposition to the (See Doc. No. 193 Plaintiff’s motion to compel does the same. (Doc. No. The Court finds that some documents in As a result, the Court finds that 22 Finally, Microsoft avers that it has “produced the file 23 histories of Mr. Frost’s patents,” lists Bates stamp numbers of 24 responsive documents it has apparently produced, and states that it 25 “is unclear what additional information Plaintiff seeks.” (Doc. No. 26 8 at 14:12-17, 15:9-10.) 27 Microsoft will suffer, and the Court finds that the company will not 28 suffer undue burden as a result of this limited Order. This weighs against the claimed burden 8 Of course, 11CV87 1 Microsoft need not produce duplicate documents. 2 extent that Microsoft’s search reveals un-produced, responsive 3 documents (e.g., among the McDermott, Will & Emory files), Microsoft 4 shall produce those additional documents. If Microsoft’s good-faith 5 search genuinely fails to uncover additional responsive documents, 6 then the company obviously has nothing left to produce, shall inform 7 Plaintiff, and file with the Court a declaration or other paper that 8 certifies as much. 9 IV. However, to the CONCLUSION 10 Based on the foregoing, the Court DENIES IN PART Plaintiff’s 11 motion as to document requests 1-10 and 12 and GRANTS IN PART 12 Plaintiff’s 13 Microsoft shall not be compelled to produce the documents until 14 Judge Gonzalez’s ruling on Defendants’ summary judgment motion of 15 invalidity. 16 responsive documents and prepare them for production. 17 Gonzalez denies the motion, Microsoft shall produce the documents 18 within four (4) court days of Judge Gonzalez’s order.4/ 19 IT IS SO ORDERED. 20 DATED: motion as to requests 11, 13, and 14. However, In the meantime, Microsoft shall diligently search for If Judge May 9, 2011 21 22 Hon. William V. Gallo U.S. Magistrate Judge 23 24 25 26 27 28 4/ Of course, if Judge Gonzalez grants Plaintiff’s pending motion to dismiss, the issue is moot and Microsoft need not produce anything. 9
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