Nuance Communications, Inc. v. Abbyy Software House et al

Filing 458

DISCOVERY ORDER re 451 Letter Brief, filed by Lexmark International, Inc., 450 Letter, filed by Nuance Communications, Inc., 449 Letter filed by Nuance Communications, Inc.. Signed by Judge Maria-Elena James on 7/10/2012. (cdnS, COURT STAFF) (Filed on 7/10/2012)

1
2
3
4

UNITED STATES DISTRICT COURT

5

Northern District of California

6
7

NUANCE COMMUNICATIONS, INC.,
No. C 08-02912 JSW (MEJ)
Plaintiff,

8
v.
9

ABBYY SOFTWARE HOUSE et al.,

ORDER ON PARTIES’ JOINT
DISCOVERY DISPUTE LETTERS
(RE: DKT. NOS. 449, 450, AND 451)

10
Defendants.
11
For the Northern District of California

UNITED STATES DISTRICT COURT

_____________________________________/
12
13

On June 15, 2012 — two weeks after fact discovery closed in this patent action — Plaintiff

14

Nuance Communications and Defendants ABBYY and Lexmark International filed three joint letters

15

addressing separate discovery disputes. Dkt. Nos. 449, 450, and 451. The Court addresses these

16

letters in turn below.

17

A. Nuance’s Request for Leave to File a Motion for Discovery Sanctions

18

In the first letter, Nuance seeks permission from the Court to file a Federal Rule of Civil

19

Procedure (“FRCP”) 37 motion for sanctions to remedy the alleged harm it suffered from ABBYY’s

20

discovery misconduct. Dkt. No. 449. Nuance outlines several transgressions on the part of

21

ABBYY, including ABBYY’s production of over 10,000 pages of documents after the close of

22

discovery and refusal to delay scheduled depositions or offer subsequent depositions to ameliorate

23

this late production. ABBYY refutes Nuance’s accusations and points out that Nuance would have

24

the opportunity to question witnesses about the recently produced documents at depositions

25

scheduled for the end of June 2012.

26

While ABBYY’s response has alleviated the Court’s concerns with respect to some of

27

Nuance’s allegations of discovery misconduct, several issues still remain. For instance, ABBYY

28

never explains why it produced e-mails from its CEO after the close of discovery — e-mails that

1

Nuance claims were highly relevant and responsive to earlier document requests. This unanswered

2

question, as well as some others, have persuaded this Court to GRANT Nuance leave to file a

3

motion for sanctions if it still believes one is warranted.

4

The Court notes that one of the sanctions Nuance seeks is an 8-week extension to the

5

discovery cut-off so that it could explore the issues raised by ABBYY’s late production of

6

documents. The undersigned, however, does not have the authority to make any changes to the

7

presiding judge’s trial schedule. UMG Recordings, Inc. v. Disco Azteca Distribs., Inc., 2006 WL

8

2034689, at *3 (E.D. Cal. July 18, 2006) (“Of course, the magistrate judge is not empowered to

9

modify the district judge’s scheduling order.”). Accordingly, if Nuance wishes to reopen discovery,
it must file such a request before the presiding judge.

11

B. Nuance’s Request to Strike Defendants’ Supplemental Disclosures

12
For the Northern District of California

UNITED STATES DISTRICT COURT

10

The parties’ second letter concerns ABBYY and Lexmark’s supplemental FRCP 26(a)

13

disclosures, which were served on Nuance after the close of business on the last day of fact

14

discovery. Dkt. No. 450. In these supplemental disclosures, Defendants identify 25 potential

15

witnesses for trial that were not included in their initial disclosures served in September 2008.

16

Nuance asks the Court to strike these witnesses because their untimely disclosure was neither

17

justified nor harmless. Defendants contend that they were not required to update their disclosures

18

since Nuance had learned about most of the witnesses through previous discovery and

19

correspondence.

20

Nuance’s position in the joint letter is misplaced. It argues that a party can never rely on

21

witnesses who were only disclosed during the discovery process and not officially identified through

22

supplemental disclosures.1 But that is not the law. Under FRCP 26(a), a party’s initial disclosures

23

must identify witnesses who are “likely to have discoverable information . . . that the disclosing

24

party may use to support its claims or defenses.” There is also an affirmative obligation to

25
26
27
28

1

See, e.g., Dkt. No. 450 at 3 (“Therefore, according to Defendants, Nuance already had
notice that these individuals had some relevant knowledge. But, of course, listing these 25 new
witnesses in Rule 26(a) disclosures is much different than these names being scattered through
various declarations, subpoenas, emails and interrogatory responses.”).
2

1

supplement these initial disclosures “in a timely manner” if they become incomplete or incorrect.

2

Fed. R. Civ. Pro. 26(e)(1)(A). Supplementation, however, is not mandatory “if the additional or

3

corrective information has [ ] been made known to the other parties during the discovery process or

4

in writing . . . .” Id.; see also Vieste, LLC v. Hill Redwood Dev., 2011 WL 2181200, at *3 (N.D. Cal.

5

June 3, 2011) (“The information regarding [the witnesses] thus ‘was made known to [Plaintiffs]

6

during the discovery process,’ per Rule 26(e)(1), which discharged Defendants’ duty to supplement

7

their disclosures with respect to these two individuals.”); Coleman v. Keebler Co., 997 F.Supp.

8

1102, 1107 (N.D. Ind. 1998) (“In fact, both the Advisory Committee and leading commentators

9

indicate that the incidental discovery, particularly during a deposition, of information ordinarily

10

Accordingly, Defendants are correct that they did not have to supplement their disclosures

12
For the Northern District of California

UNITED STATES DISTRICT COURT

11

subject to supplementation satisfies the Rule 26(e)(1) duty as sufficiently as a formal filing . . . .”).2

with respect to witnesses that had been identified earlier through the discovery process.3 The

13

question that remains is whether Defendants adequately disclosed the witnesses at issue before the

14

discovery cut-off. As other courts have recognized, merely mentioning the individual’s name at a

15

deposition or in a discovery response may not be enough to put the other party on notice that the

16

individual is being disclosed as a trial witness. See Vieste, 2011 WL 2181200, at *2 (striking

17

witnesses from supplemental disclosures because even though the deponent testified that the

18

witnesses were employees, she did not know if they had any information related to the case and a

19

subsequent interrogatory response further obscured the role played by the employees); Ollier v.

20

Sweetwater Union High Sch. Dist., 267 F.R.D. 339, 343 (S.D. Cal. 2010) (“Certainly the mere

21
22
23
24
25
26
27
28

2

A party that fails to disclose witnesses pursuant to FRCP 26 may be prohibited from using
that witness to supply evidence during any proceeding, unless that “failure was substantially
justified or is harmless.” Fed. R. Civ. Pro. 37(c)(1). The burden is on the party facing sanctions to
establish that its conduct was substantially justified or harmless. Yeti by Molly, Ltd. v. Deckers
Outdoor Corp., 259 F.3d 1101, 1107 (9th Cir. 2001).
3

Even though FRCP 26 allows parties to identify trial witnesses through the discovery
process, the Court notes that this is not good practice and parties should strive to always officially
supplement earlier disclosures as soon as it becomes warranted. See Schwarzer, Tashima &
Wagstaffe, Cal. Prac. Guide: Fed. Civ. Pro. Before Trial, ¶ 11:1249 (The Rutter Group 2011).
3

1

mention of a name in a deposition is insufficient to give notice to the opposing party that defendants

2

intend to present that person at trial.”). The Court, however, cannot analyze this issue because

3

Nuance based its request to strike the witnesses on the incorrect argument that FRCP 26 does not

4

permit disclosure through the discovery process or other writing — and not on whether Defendants

5

had adequately disclosed the witnesses at an earlier time. Thus, the Court does not address in this

6

order whether Defendants’ previous identification of the witnesses was sufficient. Nuance’s request

7

to strike the witnesses at issue based on the grounds that the supplemental disclosures were untimely

8

is DENIED. Nuance remains free to file another joint letter if it believes any of Defendants’

9

witnesses were not adequately disclosed during the discovery process or by other writing pursuant to
FRCP 26(e)(1)(A).4

11

C. Lexmark’s Request to Compel Nuance to Respond to Interrogatories

12
For the Northern District of California

UNITED STATES DISTRICT COURT

10

In the final letter, Lexmark moves to compel Nuance to respond to Lexmark interrogatories

13

numbers 18, 19, 20, and 21. Dkt. No. 451. Nuance argues that it cannot be compelled to respond to

14

these interrogatories because they — when properly counted, including the required subparts —

15

exceed the 25-interrogatory limit under FRCP 33(a)(1). Even though Nuance does not raise this

16

argument in the joint letter, the Court denies Lexmark’s request for another reason: it is untimely.

17

Under Civil Local Rule 37-3, the deadline to file a motion to compel discovery is seven days after

18

the discovery cut-off. Here, the presiding judge set the discovery cut-off for June 1, 2012. Dkt.

19

Nos. 336 and 339. Accordingly, any request to compel discovery responses should have been filed

20

by June 8, 2012. Lexmark offers no explanation for why it did not comply with this deadline. Its

21

request to compel answers to its interrogatories is therefore DENIED. See Kennedy v. Jackson Nat’l

22

Life Ins. Co., CV07-0371 CW (MEJ), Dkt. No. 277 (N.D. Cal. Sept. 21, 2010) (finding that the

23
24
25
26
27
28

4

Lexmark concedes that two of its newly identified witnesses (Todd Hamblin and Keith
Jones) were never revealed to Nuance during discovery. But, as Lexmark explains, these individuals
are recent replacements for a witness (William Lucas) who was identified earlier in an interrogatory
response but has now left the company. Considering these circumstances, Lexmark was
substantially justified with respect to the late disclosure of these two new witnesses. Because
Nuance has not moved to strike Hamblin and Jones on the grounds that Lucas was not adequately
disclosed in the interrogatory response, the Court does not consider this issue.
4

1

plaintiff’s request to compel production of certain documents was untimely pursuant to Civil Local

2

Rule 37-3 because it was not filed within seven days of the discovery cut-off).

3

IT IS SO ORDERED.

4
5

Dated: July 10, 2012

6
7

_______________________________

8

Maria-Elena James
Chief United States Magistrate Judge

9
10

12
For the Northern District of California

UNITED STATES DISTRICT COURT

11

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
5