Unwired Planet, LLC v. Google, Inc., No. 3:2012cv00504 - Document 479 (D. Nev. 2016)

Court Description: ORDER granting ECF No. 478 Unopposed Motion to Modify Stay of Discovery. Signed by Judge Miranda M. Du on 8/2/2016. (Copies have been distributed pursuant to the NEF - KR)

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Unwired Planet, LLC v. Google, Inc. Doc. 479 Case 3:12-cv-00504-MMD-VPC Document 478 Filed 07/29/16 Page 1 of 6 1 John P. Desmond (Nevada Bar No. 5618) JDesmond@dickinson-wright.com 2 DICKINSON WRIGHT 100 West Liberty Street, Suite 940 3 Reno, Nevada 89501 Telephone: (775) 343-7500 4 Facsimile: (775) 786-0131 5 Gregory P. Stone (admitted pro hac vice) gregory.stone@mto.com 6 Peter E. Gratzinger (admitted pro hac vice) peter.gratzinger@mto.com 7 Adam R. Lawton (admitted pro hac vice) adam.lawton@mto.com 8 MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor 9 Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 10 Facsimile: (213) 687-3702 11 Peter A. Detre (admitted pro hac vice) peter.detre@mto.com 12 Eric K. Chiu (admitted pro hac vice) eric.chiu@mto.com 13 Amy L. Greywitt (admitted pro hac vice) amy.greywitt@mto.com 14 MUNGER, TOLLES & OLSON LLP 560 Mission Street 15 San Francisco, CA 94105-2907 Telephone: (415) 512-4000 16 Facsimile: (415) 512-4077 17 Attorneys for Defendant GOOGLE INC. 18 19 UNITED STATES DISTRICT COURT 20 DISTRICT OF NEVADA 21 22 Unwired Planet LLC, Case No. 3:12-cv-504-MMD-VPC 23 UNOPPOSED MOTION TO MODIFY STAY OF DISCOVERY 24 Plaintiff, vs. 25 Google Inc., 26 Defendant. 27 AND RELATED COUNTERCLAIMS 28 31568529.2 UNOPPOSED MOTION TO MODIFY STAY OF DISCOVERY Dockets.Justia.com Case 3:12-cv-00504-MMD-VPC Document 478 Filed 07/29/16 Page 2 of 6 1 Google submits this unopposed motion to modify the stay of discovery in this case 2 (ECF No. 233 and ECF No. 472) for the limited purpose of serving the third-party document 3 subpoenas attached hereto as Exhibits A to C. The subpoenas are targeted to relevant, recently4 created documents concerning the sale of the patents at issue in this litigation. Because the 5 documents are in the possession of third parties, it is appropriate to modify the existing stay to 6 permit the attached subpoenas and ensure the preservation of these documents. The parties have 7 met and conferred, and Plaintiff Unwired Planet LLC (“Plaintiff”) does not oppose the requested 8 relief. Plaintiff reserves all of its rights to make objections to the subpoenas after the subpoenas 9 are served. 10 I. BACKGROUND 11 Plaintiff’s Complaint alleged infringement of ten patents. Discovery as to three of 12 those patents was stayed pending proceedings in the Patent and Trademark Office (“PTO”). ECF 13 No. 233 at 12. All seven of the remaining patents, as well as two of the three stayed patents, were 14 subsequently dismissed. ECF No. 371; ECF No. 451 at 7; ECF No. 472. The claims that remain 15 pending in this Court are Plaintiff’s claim of infringement for one of stayed patents, United States 16 Patent No. 7,024, 205 (the ’205 patent), as well as certain counterclaims. Pursuant to the Court’s 17 August 8, 2015 Partial Final Judgment, discovery and case deadlines as to the ‘205 patent remain 18 stayed. See ECF No. 472. On June 30, 2016, Plaintiff’s previous owner, Great Elm Capital Group, Inc. 19 20 (formerly Unwired Planet, Inc., and referred to herein as “Great Elm”) closed its sale of its 21 intellectual property business, including its ownership of Plaintiff, which in turn owns the patents 22 asserted in this case, to Optis UP, LLC, a subsidiary of PanOptis Holdings LLC. Ex. D. As 23 explained in Great Elm’s proxy statement filed with the SEC on May 25, 2016, the sale was the 24 culmination of a months-long process of Great Elm shopping the intellectual property assets of 25 Plaintiff to various potential purchasers. Ex. E at 26-31. In conjunction with the sale process, 26 Great Elm was advised by a firm called Black Stone IP to provide a valuation analysis of those 27 intellectual property assets and present them to the board of Great Elm. Id. at 31. 28 31568529.2 -1UNOPPOSED MOTION TO MODIFY STAY OF DISCOVERY Case 3:12-cv-00504-MMD-VPC Document 478 Filed 07/29/16 Page 3 of 6 1 The parties have met and conferred regarding the preservation of documents 2 associated with the transaction. Plaintiff has stated that “most, if not all, of the documents” are 3 “not in the possession, custody, or control of Unwired Planet LLC,” but rather, were retained by 4 Great Elm and Black Stone IP. Ex. F. Google also sent letters to Great Elm and Black Stone IP, 5 requesting confirmation that relevant documents relating to the valuation and sale of Plaintiff’s 6 intellectual property (including the patents in suit) were being preserved. Ex. G, H. Neither Great 7 Elm nor Black Stone IP responded. Gratzinger Decl. ¶ 3. 8 II. ARGUMENT 9 The Court has the inherent power to modify its stay order to allow for the limited 10 discovery sought by Google. The current stay pending PTO review of the ‘205 patent is 11 discretionary, and arose from the Court’s inherent authority to manage its own docket. See 12 Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (“Courts have inherent power to 13 manage their dockets and stay proceedings, including the authority to order a stay pending 14 conclusion of a PTO reexamination.”). As a necessary consequence, the Court also has the 15 inherent power to lift or modify that stay. See, e.g., World Chess Museum, Inc. v. World Chess 16 Fed’n, Inc., No. 2:13-CV-00345-RCJ, 2015 WL 2185997, at *2 (D. Nev. May 7, 2015) 17 (modifying stay pending parallel proceedings to permit limited discovery). The stay should be modified because the documents sought by Google are 18 19 potentially relevant to Plaintiff’s damages claims related to its claim for infringement of the ’205 20 patent. See, e.g., Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2012 WL 877125, at *3 21 (N.D. Cal. Mar. 15, 2012) (“Fair Value” analysis of patent portfolio prepared in connection with 22 patent acquisition was relevant to reasonable royalty analysis). Plaintiff has taken the position that 23 the documents are for the most part not in its possession, custody, or control, and the third parties 24 have not been responsive. Limited discovery through targeted third-party document subpoenas is 25 therefore an efficient and effective way to ensure that the documents are preserved. See, e.g., 26 Ervine v. S.B., No. 11 C 1187, 2011 WL 867336, at *2 (N.D. Ill. Mar. 10, 2011) (authorizing the 27 issuance of limited third-party discovery prior to identification of plaintiff, and noting that receipt 28 of subpoenas will put third parties on notice of their document preservation obligations). 31568529.2 -2UNOPPOSED MOTION TO MODIFY STAY OF DISCOVERY Case 3:12-cv-00504-MMD-VPC Document 478 Filed 07/29/16 Page 4 of 6 1 III. CONCLUSION 2 For the foregoing reasons, Google respectfully requests that the Court grant this 3 unopposed motion to modify the stay orders at ECF No. 233 and ECF No. 472 to permit Google to 4 issue the third-party document subpoenas attached hereto as Exhibits A to C. 5 6 DATED: July 29, 2016 MUNGER, TOLLES & OLSON LLP 7 By: /s/ Peter E. Gratzinger Peter E. Gratzinger Attorneys for Defendant Google Inc. 8 9 10 11 IT IS SO ORDERED: 12 13 14 UNITED STATES DISTRICT JUDGE 15 16 August 2, 2016 Dated: _____________________________ 17 18 19 20 21 22 23 24 25 26 27 28 31568529.2 -3UNOPPOSED MOTION TO MODIFY STAY OF DISCOVERY Case 3:12-cv-00504-MMD-VPC Document 478-9 Filed 07/29/16 Page 1 of 4 Case 3:12-cv-00504-MMD-VPC Document 478-9 Filed 07/29/16 Page 2 of 4 Case 3:12-cv-00504-MMD-VPC Document 478-9 Filed 07/29/16 Page 3 of 4 Case 3:12-cv-00504-MMD-VPC Document 478-9 Filed 07/29/16 Page 4 of 4

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