Netflix, Inc. v. Blockbuster, Inc.

Filing 163

Netflix, Inc. v. Blockbuster, Inc.

Doc. 163

Case 3:06-cv-02361-WHA

Document 163

Filed 03/13/2007

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ALSCHULER GROSSMAN LLP Marshall B. Grossman (No. 35958) William J. O'Brien (No. 99526) Tony D. Chen (No. 176635) Dominique N. Thomas (No. 231464) The Water Garden 1620 26th Street Fourth Floor, North Tower Santa Monica, CA 90404-4060 Telephone: [phone] Facsimile: 310-907-2000 Email: [e-mail] [e-mail] [e-mail] [e-mail] Attorneys for Defendant and Counterclaimant, Blockbuster Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA NETFLIX, INC., a Delaware corporation, Plaintiff, vs. BLOCKBUSTER INC., a Delaware corporation, DOES 1-50, Defendants. AND RELATED COUNTER ACTION. CASE NO. C 06 2361 WHA (JCS) BLOCKBUSTER'S MOTION TO ENLARGE TIME FOR DEPOSITION OF MARC RANDOLPH AND ANY RELATED MOTION Hearing Date: Time: Courtroom: Judge: Hon. William H. Alsup Complaint Filed: April 4, 2006 N/A under L.R. 63(d), 7-11(c)

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NOTICE OF MOTION AND MOTION PLEASE TAKE NOTICE that Defendant and Counterclaimant, Blockbuster Inc., hereby moves for an extension of the deadline under the Court's Case Management Order for the purpose of deposing Marc B. Randolph and for any motion necessary to procure his deposition. This motion is made under Civ. L. R. 6-3 and 7-11 based on this notice and motion, the declaration below in support thereof, all pleadings and papers filed herein, oral argument of counsel if a hearing is scheduled by the Court, and any other materials that may be submitted at such a hearing. DATED: March 13, 2007 ALSCHULER GROSSMAN LLP By /S/ William J. O'Brien Attorneys for Defendant and Counterclaimant, Blockbuster Inc.

DECLARATION IN SUPPORT OF MOTION 1. In its initial disclosures under Rule 26 of the Federal Rules of Civil Procedure, as well as in its subsequent amended initial disclosures, Netflix listed Marc B. Randolph as one of the witnesses "likely to have discoverable information that Netflix may use to support its claims or defenses . . . ." Specifically, Netflix identified Mr. Randolph as having "[i]nformation regarding U.S. Patents 6,584,450 and 7,024,381 [the patents-in-suit in this case], including information regarding research and development work relating and prosecution." (Netflix's Initial Disclosures ¶ 17; Netflix's Amended Initial Disclosures ¶ 20.) Netflix did not provide an address, telephone number or other contact information for Mr. Randolph pursuant to Rule 26, instead saying that he "may be contacted only through counsel at Keker & Van Nest LLP, 710 Sansome Street, San
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Francisco, California 94111, [phone]." 2. Mr. Randolph is one of the three named inventors on each of the patents-in-suit. He was formerly chairman and president of Netflix and thereafter evidently maintained a close relationship with the company, remaining on its board of directors and serving as its "Executive Producer" for a number of years. 3. On October 3, 2000, Mr. Randolph signed a declaration submitted to the United States Patent and Trademark Office "acknowledg[ing] the duty to disclose information which is known to [him] to be material to patentability in accordance with Title 37, Code of Federal Regulations, Section 1.56." Mr. Randolph identified himself in the declaration as a United States citizen residing in Santa Cruz, California. 4. This declaration was filed with the applications for both of the patents-in-suit. However, Mr. Randolph and the other named inventors failed to submit any prior art whatsoever to the Patent and Trademark Office during the pendency of the application for Netflix's first, '450 patent. In addition, Blockbuster contends that Netflix and the inventors withheld known material prior art in connection with the '381 "continuation" patent. 5. Mr. Randolph also signed an October 14, 2005, declaration in support of the application for the '381 patent, attempting to avert rejection of claims of that application by the Patent Office. The declaration indicates that it was signed by Mr. Randolph at Santa Cruz, California. 6. Based on Netflix's Initial Disclosures, counsel for Blockbuster believed that they could and should contact Mr. Randolph only through Netflix's counsel, Keker & Van Nest. On February 21, 2007, in the course of personally meeting with Netflix's attorneys, I attempted to arrange for Mr. Randolph's deposition in this case, presenting them with a deposition notice and subpoena directed to Mr. Randolph and proposing the date of March 13 for his deposition. Netflix's counsel stated at that time that they needed to ascertain Mr. Randolph's
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whereabouts and would get back to Blockbuster about the arrangements for his deposition. 7. In a letter of February 26, I again requested a response from Netflix about Mr. Randolph's deposition. Thereafter, Netflix's counsel advised me that Mr. Randolph now lives in Italy. I inquired whether Netflix's counsel would accept service of a subpoena on Mr. Randolph and was told that Netflix would find out and advise me. 8. In a letter of March 7, 2007, Netflix's counsel responded that Mr. Randolph "has not authorized us to accept service of a subpoena." Following up in a March 8, 2007, telephone call, I was advised by counsel that Mr. Randolph has no plans to be in the United States for "many months" and that he "said no" to authorizing them to accept service. I pointed out that Netflix's initial disclosures had indicated that he could be contacted only through Netflix's counsel, and asked them to seek Mr. Randolph's cooperation in appearing for a deposition in Italy. 9. On the evening of March 12, 2007, Netflix's counsel sent Blockbuster's counsel a fax (which did not reach me until this morning) indicating that "Mr. Randolph, who is no longer with Netflix and resides abroad, has no interest in sitting for a deposition." 10. As a result of the foregoing, Blockbuster is unexpectedly faced with the prospect of securing Mr. Randolph for a deposition in Italy but currently has no address for Mr. Randolph other than the offices of Keker & Van Nest in San Francisco. Blockbuster intends to move for a subpoena for Mr. Randolph's deposition as a U.S. national under 28 U.S.C. § 1783(a) and arrange for service of the subpoena on Mr. Randolph in accordance with the provisions of the Federal Rules of Civil Procedure relating to service of process on a person in a foreign country. See 28 U.S.C. § 1783(b); Fed. R. Civ. P. 4(f); Klesch & Co. v. Liberty Media Corp., 217 F.R.D. 517, 523 (D. Col. 2003). 1
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Alternatively, Blockbuster could seek letters rogatory ­ see Fed. R. Civ.
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11.

As a co-inventor for the patents-in-suit, Marc Randolph is

expected to have unique and potentially important information relevant to this case, and Blockbuster would be seriously prejudiced by being deprived of his testimony. Mr. Randolph's testimony is likely to be particularly important on the issue of inequitable conduct, since he is one of the three co-inventors who failed to submit any prior art whatsoever during the pendancy of the application for the '450 patent despite their acknowledged disclosure obligations under 37 C.F.R. § 1.56. 12. The requested time alteration would not require any other changes in the schedule for the case. On March 12, 2007, the Court granted Netflix's motion for extension of its deadline to file discovery motions. 13. In addition to my multiple contacts with Netflix's counsel as recounted above, my colleague Dominique Thomas attempted to reach them today to obtain a stipulation, but was unsuccessful in reaching them in the time available. I declare under the penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on March 13, 2007, at Santa Monica, California.

/S/ William J. O'Brien

P. 28(b)(3); 28 U.S.C. § 1781 ­ but it appears that proceeding under § 1783 will be more expeditious. Blockbuster also intends to directly contact Mr. Randolph and attempt further to secure his voluntary cooperation.
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