Oracle Corporation et al v. SAP AG et al

Filing 729

Declaration of Jason McDonell in Support of 728 MOTION in Limine Defendants' Motions in Limine Declaration of Jason McDonell in Support of Defendants' Motions in Limine filed bySAP AG, SAP America Inc, Tomorrownow Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U, # 22 Exhibit V, # 23 Exhibit W, # 24 Exhibit X, # 25 Exhibit Y, # 26 Exhibit Z, # 27 Exhibit AA, # 28 Exhibit BB, # 29 Exhibit CC)(Related document(s) 728 ) (Froyd, Jane) (Filed on 8/5/2010)

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Oracle Corporation et al v. SAP AG et al Doc. 729 Att. 20 EXHIBIT T Dockets.Justia.com Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 1 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 This matter is before the Court on Plaintiffs' Motion to Compel Non-Party Seth Ravin to Answer Deposition Questions, and to Compel Non-Party Rimini Street, Inc. to Produce Documents in Response to Oracle's Subpoena (#1), filed on August 21, 2009; Defendants' Response to Plaintiffs' Motion to Compel (#25), filed September 14, 2009; Non-Party Seth Ravin's and Non-Party Rimini Street's Opposition to Oracle's Motion to Compel (#26), filed September 14, 2009; Response of NonParty Seth Ravin and Non-Party Rimini Street to SAP's Response to Oracle's Motion to Compel (#31) filed September 17, 2009; and Plaintiffs' Reply Memorandum in Support of Motion to Compel (#34), filed September 24, 2009. The Court conducted a hearing in this matter on October 6, 2009. FACTUAL AND PROCEDURAL BACKGROUND The motion before this Court is ancillary to a civil action between Plaintiffs Oracle USA, Inc., et.al. ("Oracle") and Defendants SAP AG, et.al. ("SAP") pending in the United States District Court for the Northen District of California, Case No. 07-CV-016547 PJH (EDL). Oracle has sued SAP in that action for copyright infringement, violations of the Computer Fraud and Abuse Act, trespass, intentional and negligent economic interference and other claims. Oracle's motion in this Court seeks to compel Non-Parties Seth Ravin and Rimini Street to provide testimony and documents relating to ORACLE USA, INC, et. al., ) ) Plaintiffs, ) ) vs. ) ) SAP AG, et. al., ) ) Defendants. ) __________________________________________) Case No. 2:09-cv-01591-KJD-GWF UNITED STATES DISTRICT COURT DISTRICT OF NEVADA ORDER Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 2 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 whether Rimini Street has infringed or is infringing on Oracle's copyrighted software. Oracle claims that this discovery is necessary to refute SAP's defense to Oracle's lost profits damages claim. Oracle alleges that it "sells enterprise software which performs many of the business process functions its customers need to run their businesses. When customers license this software, they also have the annual option of purchasing support for the software from Oracle." Motion to Compel (#1), page 3. In 2005, Defendant SAP acquired a company called TomorrowNow, Inc. which competed with Oracle by providing "third-party" software for Oracle's customers at 50 percent of Oracle's pricing for such services. Oracle alleges that SAP and TomorrowNow were able to provide such services by unlawfully infringing on Oracle's copyrighted software. Seth Ravin is the former President of TomorrowNow. Oracle alleges that Mr. Ravin conceived TomorrowNow's business model that infringes upon Oracle's copyrighted software. Shortly after SAP acquired TomorrowNow in 2005, Ravin left its employ and started another third party support provider, Rimini Street, Inc. ("Rimini"). Although Oracle has not sued Rimini or Mr. Ravin for copyright infringement or related claims, Oracle believes that Rimini uses the same or a substantially similar business model that TomorrowNow/SAP used. In support of its allegations, Oracle has attached excerpts from Rimini Street's website, Motion (#1), Exhibit "H", and an April 11, 2008 article about Mr. Ravin and Rimini from a publication known as CIO. According to the author of that article, "[i]n 2002, Ravin and fellow PeopleSoft veteran Andrew Nelson cofounded TomorrowNow, which has the exact same business model as Rimini Street." Id., Exhibit "G." As part of its damage claims against SAP, Oracle seeks recovery of lost profits for customers that would have stayed with Oracle if TomorrowNow/SAP had not lured them away through its 50 percent discount price. Oracle alleges that Rimini has attracted many of the same customers who dealt with TomorrowNow/SAP, by offering a similar discount. According to Oracle: SAP claims that Oracle may not recover lost profits for these customers, on the grounds that Oracle would not have received maintenance payments from them even if TomorrowNow had never existed - i.e., TomorrowNow did not cause the loss, as evidenced by customers' decision to sign up with Rimini. Motion (#1), page 4. ... 2 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 3 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ... ... ... Oracle argues that this defense rests on the assumption that Rimini is a lawful competitor. If, however, Rimini is also an infringer upon Oracle's software, then SAP cannot argue that it is a legitimate competitor whose availability destroys the causal link in Oracle's lost profits claim. SAP describes its defense to Oracle's lost profits claims as follows: Defendants have several defenses to Plaintiffs' alleged lost profits claims. Those defenses include the position that Defendants cannot be held liable for any of Plaintiffs' alleged lost profits attributable to Plaintiffs' customers once they left TN [TomorrowNow] and either moved to Rimini or another third-party support provider, or continued use of their software in some other manner without buying maintenance support from Plaintiffs. Defendants' Response to Plaintiffs' Motion to Compel (#25), page 3. SAP further asserts that "[t]he details of Rimini's business model and whether Plaintiffs believe it is legal or not have no bearing on Defendants' loss profits defenses or any other issues in the underlying case." Id. Rimini Street is a Nevada corporation whose headquarters office is located in Nevada. It also has an office in Pleasanton, California. Mr. Ravin is a Nevada resident. On or about February 2, 2009, Oracle served Mr. Ravin with a subpoena issued by the United States District Court for the District of Nevada which commanded him to appear for deposition on March 17, 2009 in Las Vegas. The subpoena also commanded him to produce records relating to TomorrowNow prior to the deposition. Motion (#1), Exhibit "K". On March 31, 2009, counsel for Oracle, SAP and Mr. Ravin appeared before Magistrate Judge LaPorte in the Northern District of California for a discovery conference in the underlying lawsuit. See Motion (#1), Exhibit "M," "Order Following Discovery Conference." During that conference, Judge LaPorte authorized an additional three and one-half hours for Mr. Ravin's deposition. The issue whether Plaintiffs should be permitted to question Mr. Ravin about Rimini Street was also discussed during the discovery conference. Judge LaPorte stated: [T]he Rimini thing seems to me to have some relevance, not as much as what happened at TomorrowNow, but enough that I'm not ruling it off limits, but I think you have to all discuss what are the sort of trade secret 3 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 4 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Id., page 21. issues. That I haven't thought about and that was just raised today and I don't have any particular position on that.1 Opposition to Motion to Compel (#28), Exhibit "S," page 18. Judge LaPorte indicated, however, that the protective order already in place between Plaintiffs and Defendants might be sufficient to cover trade secret concerns arising from inquiry into Rimini's business. Id. Mr. Ravin's counsel also argued that it was not proper for Oracle to question Mr. Ravin about Rimini's possible infringement since it was not a party to the action. The court responded by noting that unless Mr. Ravin invoked the Fifth Amendment, "I don't thing you have some freedom to conceal trademark, copyright infringement." Id., page 21. In response to counsel's statement that Oracle had made threats against Mr. Ravin or Rimini, the court further stated: I don't find that very pervasive (sic) and he is central, but I do think the bulk of the deposition should be focused on the TomorrowNow part of it. I mean the damages is much smaller part of it, and its only a small part of the damages picture as a whole anyway. So I mean if Oracle were to suddenly spend, you know, the majority of its time on Rimini, then that would suggest to me that they have different motives in the litigation. The court's subsequent April 2, 2009 discovery order states: Some testimony regarding Rimini Street appears relevant to damages. The parties shall meet and confer with Mr. Ravin's counsel to address any issues regarding trade secrets or other potentially confidential information which may be well satisfied by the existing protective order in this case. Motion (#1), Exhibit "M", pages 1-2. Mr. Ravin's deposition was subsequently taken in California on May 21, 2009. Mr. Ravin refused to answer certain questions regarding Rimini's business which are set forth at pages 9-11 of Plaintiffs' Motion. Plaintiffs have redacted those questions in their filed motion, presumably because they may contain trade secret or confidential proprietary information. Plaintiffs have, however, This Court has only been provided with the last five pages of the hearing transcript. See Plaintiff's Motion (#1), Exhibit "N"; Non-Party Ravin/Rimini's Opposition to Motion to Compel (#28), 27 Exhibit "S." It is not clear to what extent this issue was discussed earlier in the hearing. It does not 28 appear, however, that the parties submitted written briefs on the issue prior to the discovery conference. 26 4 1 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 5 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 provided the Court, in camera, with an unredacted copy of the motion and the excerpts from Mr. Ravin's deposition testimony. See Motion (#1), pages 9-11. On May 18, 2009, Oracle also served Rimini Street with a subpoena duces tecum issued from the District of Nevada for production of the following: 1. Documents sufficient to show Rimini Street's business model, including whether Rimini Street currently relies on or has ever relied on copies of customer's licensed Oracle software to provide software support; 2. Documents sufficient to show what automated tools Rimini Street has used to download material from any Oracle customer support website, including protocols to any automated tools; and 3. All "checklists" or other Documents drafted, revised, or maintained by Beth Lester to track [certain redacted information], as testified to by Beth Lester in her deposition at pages 76:6-771:1 and 77:18-25. . . Motion (#1), Exhibit "L". Rimini Street has also objected to these requests on the grounds that they are irrelevant to the pending lawsuit, seek pre-litigation discovery from Rimini and are unduly burdensome. Motion (#1), Exhibit "R". Mr. Ravin and Rimini also argue that the protective order in the underlying lawsuit does not adequately protect their confidential information and documents. DISCUSSION 1. Whether Plaintiffs' Motion to Compel Should be Transferred to the Court in Which the Action is Pending. This Court first addresses whether the Plaintiffs' motion to compel should be transferred or remitted to the Northern District of California. Rules 37(a) and 45(c) of the Federal Rules of Civil Procedure provide that motions to compel compliance with a subpoena or to quash a subpoena served on a non-party in a district other than the one where the action is pending, should be brought in the issuing district. Federal courts are divided on whether the court that issued the subpoena can transfer the motion to the district court in which the action is pending. United States v. Star Scientific, Inc., 205 F.Supp.2d 482, 486 n. 4 (D. Md. 2002) notes that the Eighth and Tenth Circuits support such transfers. See In re Digital Equip. Corp., 949 F.2d 228, 231 (8th Cir. 1991) and Peterson v. Douglas County Bank & Trust Co., 940 F.2d 1389, 1391 (10th Cir. 1991). The Seventh and District of Columbia Circuits, 5 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 6 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 however, hold that the transfer of discovery disputes is inappropriate under the plain language of the rules. See In re Sealed Case, 141 F.3d 337, 342 (D.C.Cir. 1998) and In re Orthopedic Bone Screw Prod. Liab. Litig., 79 F.3d 46, 48 (7th Cir. 1996). Courts which recognize the authority to transfer discovery motions also state that transfer should only be ordered in certain circumstances. Melder v. State Farm Mutual Automobile Ins. Co., 2008 WL 1899569 *4 (N.D. Ga. 2008), states that such circumstances "include the non-party's consent to the transfer, designated Multi-District Litigation ("MDL"), a lack of inconvenience to the non-party, and a determination that the complexity of the underlying litigation and discovery disputes made it appropriate for the forum court to handle the dispute." (citations omitted). In CMC Interconnect Technologies, Inc. v. Fairchild Semiconductor Corp., 2009 WL 539674 (D. Ariz. 2009), the court transferred a motion to quash subpoena to the district court in which the action was pending because the dispute concerned the relevancy of the information sought, the information had been a subject of an injunction hearing in the lawsuit and the parties' briefs cited extensively to the docket in the lawsuit. The magistrate judge in the district where the lawsuit was pending had also issued at least one discovery ruling on the information that was the subject of the subpoena. Most of the foregoing factors support the transfer of this motion to the Northern District of California. There have been a number of prior discovery disputes between Oracle and SAP relating to whether Rimini's business activities are relevant in the pending lawsuit. See Reply (#34), pages 1, 5-8. The issue whether Mr. Ravin may be questioned about Rimini during his deposition was also addressed by Judge LaPorte during the March 31st discovery conference. She concluded that some testimony about Rimini Street appears relevant to damages and should be permitted. Judge LaPorte is probably still in a better position than this Court to set the appropriate boundaries for further discovery concerning Rimini in the pending action. Mr. Ravin and Rimini Street would not be materially inconvenienced if the motion to compel was transferred to the Northern District of California. Rimini Street maintains an office in Pleasanton, California and their counsel are located in Palo Alto, California. Mr. Ravin's deposition was also taken in the Northern District of California. During the October 6th hearing on this Motion, however, Mr. Ravin and Rimini objected to transferring the Motion to the Northern District of California. Oracle also requested that this Court 6 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 7 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 decide the motion to avoid further delay or re-litigation of the motion. Defendant SAP took no position on the issue of transfer. Although the Court could arguably transfer this motion notwithstanding the Non-Parties' objection, transfer is probably not appropriate when the parties in the pending action do not request transfer. Accordingly, this Court will decide the Motion to Compel on its merits. 2. Relevance of Plaintiffs' Deposition Questions and Requests for Production. Oracle argues that the deposition testimony it seeks from Mr. Ravin and the documents that it has subpoenaed from Rimini are relevant to rebut SAP's causation defense to its lost profits claim. Oracle relies on the general statement in Polar Bear Products, Inc. v. Timex Corp., 384 F.3d 700, 708 (9th Cir. 2004), that 17 U.S.C. 504(b) requires a causal link between the infringement and the monetary remedy sought for recovery of both actual damages and profits. Polar Bear reaffirmed the principle that a plaintiff must establish this causal connection and that the requirement is akin to tort principles of causation and damages. According to Oracle, SAP is attempting to refute its lost profits claim by arguing that Oracle cannot show that the customers who did business with TomorrowNow would have contracted with Oracle instead of with one of the other third party support providers including Rimini. Oracle contends that SAP cannot rely on Rimini's existence as a third party competitor if it is also an infringer of Oracle's copyright. Oracle therefore argues that it is entitled to obtain discovery regarding whether Rimini is also infringing on Oracle's software. Oracle argues that the relevancy of this discovery is supported by Micro Motion v. Kane Steel Co., 894 F.2d 1318 (Fed.Cir. 1990), on which Ravin and Rimini rely in opposing the motion. Micro Motion was a patent infringement action in which plaintiff sought recovery for lost profits. The Federal Circuit noted that where a patentee produces or sells a product or service covered by the patent claims, it may seek to recover damages on a theory of lost profits. Under this theory, the patentee must show that, but for the infringement, it would have made the infringer's sales. The court noted that causation is most easily found under this theory where only two companies, the patentee and the infringer, are in the market. The court further stated: Where there is evidence of a third party competitor, the lost profits theory would appear to be non-viable inasmuch as the third party could have made the sale rather than the patentee. Under such circumstances there appears to be no possible causation. However, such is not the law. 7 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 8 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Patentees have successfully urged modifications to the basic damage theory so as to cover situations other than the simple two-supplier market. There is precedent for finding causation despite an alternative source of supply if that source is an infringer or puts out a noninfringing product that is an unacceptable alternative or has insignificant sales. (citations omitted). Micro Motion, 894 F.2 at 1322. Oracle argues by analogy that a similar analysis should apply in a copyright infringement action where the plaintiff seeks to recover lost profits and the defendant alleges a causation defense based on the existence of third party competitors. The plaintiff in Micro Motion alleged that the defendant's flow meters infringed on its three patents. The plaintiff served subpoenas to take the depositions of five other non-party companies which competed with plaintiff and defendant in selling flow meters. The subpoenas required the non-party competitors to produce seven categories of documents or things. K-Flow, one of the alleged competitors, moved to quash the subpoena. The district court denied the motion on the grounds "that the other courts addressing the same issues against other competitors had generally upheld Micro Motion's discovery requests and because "the Federal Circuit had counseled that an ancillary court should be `especially hesitant' to pass judgment on relevancy, citing Truswal Sys.Corp. v. Hydro-Air Eng'g, Inc., 813 F.2d 1207, 1212, 2 USPQ2d 1034, 1038 (Fed.Cir. 1987)." Micro Motion, 894 F.2d at 1321. In reversing the denial of the motion, the Federal Circuit stated that even if relevant, discovery is not permitted when no need is shown or compliance would be unduly burdensome, or the harm to the person from whom the discovery is sought outweighs the need of the person seeking discovery of the information. Micro Motion, 894 F.2d at 1323, citing Fed.R.Civ.Pro. 26(b)(1) (other citation omitted). The court noted that the issues of liability and damages had previously been bifurcated in the patent infringement case and that a jury had initially found for the defendant on the infringement claim. After a new trial was granted, the parties agreed to additional discovery to update the evidence on damages. The Federal Circuit noted that prior to the first jury trial, the plaintiff had apparently been ready to proceed to trial on its damages claims without the evidence it now sought from third party competitors. In analyzing the discovery sought from the third party competitors, the court stated: 8 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 9 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 How many products will be involved is not calculable precisely from the record before us, but we note that Micro Motion requested information about a dozen specifically identified models in its nonparty subpoenas. Thus, this "complex" suit against Exac could be turned into an absolute quagmire of proofs concerning a dozen or so other products that are related to the main suit only with respect to damages. Micro Motion, 894 F.2d, at 1324. The Federal Circuit noted that there was no evidence that plaintiff had informed the trial court that it "expected to have the jury resolve additional mini-infringement trials on each competing product under each of its patents and, if these efforts were unsuccessful, to go on to make findings of their unacceptability." Id. The court stated that if the trial court had been informed of plaintiff's intentions, it "could and, very likely, would have required a preliminary showing of the viability and practicability of plaintiff's various theories, particularly before authorizing discovery against a wholly uninvolved nonparty." Id. Finally, in rejecting the reasonableness of the discovery the court stated: In particular, Micro Motion asserted entitlement to discovery of information concerning each competitor's business simply because it may seek to prove lost profit damages. If this position were correct, a patentee could, in virtually every infringement suit, immediately obtain discovery from all possible competitors by merely filing a complaint asking for damages against one. And, of course, the alleged infringer in such case would have the same right. While we do not suggest that discovery is being used in this case simply to harass a competitor, the possibility for such abuse of discovery is readily apparent. Id., at 1324-25. Fed.R.Civ.Pro. 26(b) was amended in 2000 to narrow the general scope of discovery to any nonprivileged matter that is relevant to any party's claim or defense. In EEOC v. Caesars Entertainment, Inc., 237 F.R.D. 428, 431-32 (D. Nev. 2006), the court stated that the purpose of the amendment to Rule 26(b) was not only to narrow the scope of discovery, but also to address the rising costs and delay of discovery. Although the amendments "do not dramatically alter the scope of discovery," they require a greater degree of scrutiny by the courts in weighing the relevance versus the burden of the discovery. In deciding whether to restrict discovery under Rule 26(b)(2), "the court should consider the totality of the circumstances, weighing the value of the material sought against the burden of providing it, and taking into account society's interest in furthering the truth-seeking function in the particular case before the court. (citations omitted.)" Id. The 2000 amendment to the scope of 9 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 10 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 discovery under Rule 26(b) provides further support for limiting discovery against non-parties who are, at most, only tangentially related to a pending lawsuit. Courts analyzing Micro Motion reach different conclusions based on the facts of their respective cases. In Heraeus Inc. v. Solar Applied Material Technology Corp., 2006 WL 2067859 *2 (N.D. Cal. 2006), the court quashed a subpoena served on a non-party competitor of the plaintiff and defendant. The court found that plaintiff's damages theories were no more crystalized than those of the patentee in Micro Motion. There was little information before the court about the market in which plaintiff, defendant and the non-party movant operated to support a finding of need for the information. The court noted, for example, that if there are dozens of competitors in the market, then plaintiff's chances of ever proving causation would be substantially less than if there were only three players. In such circumstances, the concerns raised by Micro Motion would be even more magnified. In Negotiated Data Solutions LLC v. Dell, Inc., 2009 WL 733876 (N.D. Cal. 2009), the plaintiff sought discovery from a non-party whose computer chips were used in the manufacture of defendant's allegedly infringing computers. In denying the motion to quash, the court cited Truswal Sys.Corp. v. Hydro-Air Eng'g, Inc., 813 F.2d 1207, 1212, 2 USPQ2d 1034, 1038 (Fed.Cir. 1987) and Gonzales v. Google, Inc., 234 F.R.D. 674, 681 (N.D.Cal. 2006), that the court in the ancillary proceeding should be hesitant to pass judgment on what constitutes relevant evidence and where relevance is in doubt, the court should be permissive. In distinguishing Micro Motion, the court noted that the discovery sought from the non-party bore directly on the accused functions in the defendant's computer chips. It is unknown whether the district court in the pending lawsuit will allow Oracle to pursue a lost profits claim at trial similar to that which the plaintiff in Micro Motion asserted. The magistrate judge in that case has indicated, however, that there is at least a potential basis for such a claim which justified some questioning about Rimini Street during Mr. Ravin's deposition. Mr. Ravin is allegedly the person who conceived TomorrowNow's infringing business model and he was the president of TomorrowNow up until shortly after its sale to Defendant SAP. After leaving TomorrowNow, Mr. Ravin apparently formed Rimini Street which also provides third support services for Oracle's customers. This evidence suggests that Rimini Street's business model is similar to TomorrowNow's. Oracle claims that Rimini Street's website and the CIO article provide additional reason to believe that 10 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 11 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Rimini Street engages in the same type of business conduct as TomorrowNow that allegedly infringes upon Oracle's copyrighted software. Given Mr. Ravin's involvement with both TomorrowNow and Rimini Street, it cannot be said he and Rimini Street are " wholly uninvolved non-parties" in the same sense that the competitors in Micro Motion or Heraeus were. This Court is also not persuaded that Defendant SAP's response to Oracle's Motion demonstrates that discovery sought by Plaintiffs is irrelevant. SAP has not disavowed an intention to raise Rimini's position as a "third party supporter" as a defense to Plaintiffs' lost profits claim. See Defendant's Response (#25), page 3. SAP's assertion that the legality of Rimini's business model is irrelevant to its damages defense does not make it so. The ambivalent nature of SAP's position is also demonstrated by its statement that if the Court allows Plaintiffs to obtain certain discovery from Rimini, then SAP will also seek certain unspecified discovery from Rimini. Judge LaPorte clearly did not intend to permit Plaintiffs to engage in "full-blown" infringement discovery from Rimini as if it was a defendant. While this Court has not been provided with the full transcript of Mr. Ravin's deposition, the Court infers that the parties, as well as Mr. Ravin and his counsel, understand the factual elements of Plaintiffs' infringement claim against SAP and TomorrowNow. Plaintiffs should therefore be allowed to examine Mr. Ravin in regard to whether Rimini's business model and third party support services to Oracle's customers are substantially similar or dissimilar from those of TomorrowNow. The questions set forth on pages 9 and 10 of Plaintiffs' Motion to Compel (#1) appear relevant to this inquiry and are not unduly burdensome. Plaintiffs' and Defendants' counsel may also have some reasonable follow-up questions in regard to whether Rimini conducts its business in substantially the same manner as TomorrowNow. The Court will, however, limit further examination of Mr. Ravin to a period of one hour each by Plaintiffs' and Defendants' counsel, not including any time that may be expended Mr. Ravin's counsel or the other party in asserting objections. 2 The deposition excerpts provided to the Court indicate that Plaintiffs' counsel may have intended to question Mr. Ravin about the services or support that Rimini provides to each of its 81 27 customers who were formerly TomorrowNow customers. See Motion (#1), pages 10-11. The deposition 28 time authorized by the Court obviously precludes such individualized questioning. In any event, Plaintiffs and Defendants are not permitted to engage in such detailed customer-by-customer questioning 26 11 2 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 12 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Following the March 31st discovery conference, Plaintiffs served Rimini with a subpoena duces tecum and request for production for documents. Consistent with Judge LaPorte's decision that discovery regarding Rimini in the pending lawsuit should be limited, this Court will not require Rimini to produce documents responsive to Oracle's subpoena requests unless Mr. Ravin intends to testify that Rimini's business model or practices vis a vis support for Oracle's customers are materially or substantially different from TomorrowNow's business model or conduct. In such circumstances, Rimini should, prior to the deposition, produce documents within the scope of Plaintiffs' requests for production in the subpoena duces tecum which may either confirm or contradict his testimony. The Court also finds that those requests are not otherwise unduly burdensome. The Court therefore denies Plaintiffs' motion to compel production of documents requested pursuant to the subpoena duces tecum, subject to the foregoing condition. 3. Whether the Protective Order in the Underlying Case is Sufficient to Protect Rimini's Trade Secrets or Proprietary Information. Mr. Ravin and Rimini argue that the protective order in the underlying action is insufficient to protect them from disclosure of their trade secret or proprietary information. During the March 31st hearing, Judge LaPorte indicated that the existing protective order was probably sufficient to protect Rimini's trade secrets or proprietary information. She instructed the parties' and Mr. Ravin's counsel to further meet and confer, however, regarding any modification of the protective order that might be necessary to protect Rimini Street's legitimate rights. She also indicated that the parties could apply to her for a further protective order as it relates to Rimini, if necessary. Opposition to Motion to Compel (#28), Exhibit "S," page 21. It appears to this Court that Rimini's interests are adequately protected under the protective order in the underlying case so long as Mr. Ravin and Rimini are timely notified by Plaintiffs or Defendants of any intention to introduce their testimony or documents that may constitute protected trade secrets or proprietary information in regard to a motion or at trial. Mr. Ravin and Rimini should ... 28 of Mr. Ravin. 12 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 13 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 be given adequate notice so that they can move for an order in the pending action to protect their trade secrets or confidential information. CONCLUSION Based on the foregoing, this Court concludes that the limited examination of non-party Seth Ravin regarding Rimini Street is justified in accordance with Magistrate Judge Laporte's verbal orders in the discovery conference on March 31, 2009 and in her written "Order Following Discovery Conference", Motion (#1), Exhibit "M." The Court concludes, however, that Rimini Street should not be required to respond to Plaintiffs' subpoena duces tecum for production of documents unless Mr. Ravin intends to testify that Rimini Street's business model and the manner in which it provides support to Oracle customers is substantially different than that provided by Defendants SAP and TomorrowNow. The Court further finds that the protective order in the underlying action is sufficient to protect the interests of Mr. Ravin and Rimini Street so long as they are promptly notified by the parties in that action of any intention to use their testimony or documents. Accordingly, IT IS HEREBY ORDERED that Plaintiffs' Motion to Compel Non-Party Seth Ravin to Answer Deposition Questions, and to Compel Non-Party Rimini Street, Inc. to Produce Documents in Response to Oracle's Subpoena (#1) is granted, in part, and denied, in part, as follows: 1. Plaintiffs' motion is granted in regard to its request that Seth Ravin be required to answer questions at deposition concerning Rimini. The examination of Mr. Ravin shall be limited to a period of one hour each by Plaintiffs' and Defendants' counsel, not including any time that may be expended by Mr. Ravin's counsel or the other party in asserting objections. 2. Plaintiff's motion to compel Rimini Street to produce documents pursuant to the subpoena duces tecum is denied, subject to the condition that if Mr. Ravin intends to testify that Rimini's business model or practices vis a vis support for Oracle's customers are materially or substantially different from TomorrowNow's, then Rimini is ordered to produce documents within the scope of Plaintiffs' requests for production at least seven (7) days prior to the resumption of the deposition. IT IS FURTHER ORDERED that Plaintiffs and Defendants shall promptly notify Mr. Ravin and/or Rimini Street of any intention to introduce or use Mr. Ravin's testimony regarding Rimini Street 13 Case 2:09-cv-01591-KJD-GWF Document 38 Filed 10/13/09 Page 14 of 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 or any documents that Rimini Street may hereafter produce in the pending lawsuit in the Northern District of California so that Mr. Ravin and/or Rimini Street can timely file a motion to intervene in that case in order to protect their legitimate interests as may appear warranted. DATED this 13th day of October, 2009. ______________________________________ GEORGE FOLEY, JR. United States Magistrate Judge 14

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