Autodesk Inc. v. Dassault Systemes Solid Works Corporation

Filing 84

ORDER REGARDING MOTIONS TO COMPEL. Signed by Judge Alsup on October 21, 2009. (whalc2, COURT STAFF) (Filed on 10/21/2009)

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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 MICHAEL A. JACOBS (CA SBN 111664) J. THOMAS MCCARTHY (CA SBN 034728) DAVID E. MELAUGH (CA SBN 219477) LYNN M. HUMPHREYS (CA SBN 168062) NATHAN B. SABRI (CA SBN 252216) JACQUELINE BOS (CA SBN 243938) MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: 415.268.7000 Facsimile: 415.268.7522 Attorneys for Plaintiff AUTODESK, INC. CLAUDE M. STERN (CA SBN 96737) EVETTE D. PENNYPACKER (CA SBN 203515) ANDREA PALLIOS ROBERTS (CA SBN 228128) ZACHARY M. FABISH (CA SBN 247535) QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 555 Twin Dolphin Drive, Suite 560 Redwood Shores, California 94065 Telephone: (650) 801-5000 Facsimile: (650) 801-5100 Attorneys for Defendant DASSAULT SYSTÈMES SOLIDWORKS CORPORATION IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA AUTODESK, INC., a Delaware corporation, Plaintiff and Counterclaim-Defendant, v. DASSAULT SYSTÈMES SOLIDWORKS CORPORATION, a Delaware corporation, Defendant and Counterclaim-Plaintiff. Case No. C-08-04397 WHA [PROPOSED JOINT] ORDER REGARDING MOTIONS TO COMPEL [PROPOSED JOINT] ORDER REGARDING MOTIONS TO COMPEL Case No. C-08-04397 WHA sf-2752272 1 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 Autodesk, Inc. ("Autodesk") and Dassault Systèmes SolidWorks Corporation filed letter motions on October 5 and 6, 2009, seeking discovery relief and two associated motions to file documents under seal. Docket Nos. 60, 63, 64, 65, 66, 67 and 74. Pursuant to the Court's October 7, 2009 order (Docket No. 68), the parties held a meet and confer on October 13, 2009, at 8:00 a.m. On October 13, 2009, at 11:00 a.m., the parties reported to the Court that they had resolved the issues in the letter motions. The resolution of each of these letter motions is set forth below. 1. SolidWorks' Letter Motion Dated October 5, 2009 (Docket No. 60) was resolved as follows: Documents Regarding Functions and Interoperability of Autodesk's Software and ThirdParty Software Both parties agree to exchange methodologies (including search terms where used) used to prepare "bug reports." If the methodology used by Autodesk is not satisfactory, the parties agree to further meet and confer. DWG Marketing Documents Autodesk will supplement its response to SolidWorks' Interrogatories 2 and 3 to fully set forth the chronology of Autodesk's use and promotion of DWG as a trademark and/or brand. Autodesk will supplement its response to SolidWorks' Interrogatory 25 to describe the categories or types of documents that it claims or will claim existed at some stage, related to the topics referenced in Interrogatory No. 25, but are no longer in existence, what became of the documents and when (to the best of Autodesk's ability) those documents ceased to be in existence. Autodesk will provide these supplemental interrogatory responses no later than 48 hours prior to the deposition of Chris Bradshaw. DWG Valuation and RealDWG Licensee Information Autodesk represented that no valuation of the "DWG brand" exists. Autodesk produced a list of RealDWG licensees and will provide SolidWorks with a declaration containing a written explanation of what the list represents. [PROPOSED JOINT] ORDER REGARDING MOTIONS TO COMPEL sf-2752272 2 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 2. Autodesk's Letter Motion Dated October 6, 2009 Requesting Discovery Relief (Docket No. 63) was resolved as follows: SolidWorks' Document Collection SolidWorks has agreed to run searches of the following terms: DWG and Autodesk DWG and Inventor DWG and AutoCAD DWG and IV DWG and ACAD DWG and INV DWG and A'CAD in the archived and live email accounts of: Gary Amadon Fred Koehler James Morgan Vajrang Parvate Joe Rousseau Victor Voloboy Ian Baxter Anne-Sylvie Hervo Bob Noftle Graham Rae Terry Sherman Vladimir Yoffe William Doll Fielder Hiss John Nolin Efrat Ravid Gopal Shenoy Bob Zuffante Chris Garcia John McEleney Austin O'Malley Stuart Reid Jim Wilkinson (referred to collectively as the "Email Custodians") and all electronic documents of: Graham Rae Efrat Ravid Vladimir Yoffe Vajrang Parvate (referred to collectively as the "Edocs Custodians) and will produce or appropriately log all documents dated in 2003 and 2004 that result from these searches. SolidWorks' counsel represents that Mr. Kelly's archived and live email and electronic documents were searched for the term "DWG" and SolidWorks has produced or logged all documents dated or created in 2003 or 2004 responsive to this search and that referred to Autodesk, any Autodesk product (including as ADSK, ACAD, A'CAD, IV, or INV). SolidWorks' counsel represents that Ms. Kozikowski was asked to search archived and live email and electronic documents for the term "DWG" and, to the extent any were located, SolidWorks has produced or logged or will produce or log all documents dated or created in 2003 or 2004 responsive to this search and that referred to Autodesk, any Autodesk product (including as ADSK, ACAD, A'CAD, IV, or INV). [PROPOSED JOINT] ORDER REGARDING MOTIONS TO COMPEL sf-2752272 3 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 3. The parties agreed that there is an assumption that this further production by SolidWorks will not open further discovery or lead to further depositions. Autodesk's Document Requests and Interrogatories SolidWorks' outside counsel represents that it reviewed every document in its current document collection responsive to a search for the term "copy" (with root expander) within either three or five words of Autodesk or AutoCAD and did not locate any documents discussing copying Autodesk marketing. SolidWorks agreed to respond to Autodesk Interrogatory 3 regarding SolidWorks' purchases of DWG, Autodesk, AutoCAD, or ACAD as search engine keywords for the webpages www.dwgseries.com, www.dwggateway.com, and www.dwgnavigator.com, so long as Autodesk produces documents sufficient to show its purchases of "SolidWorks" as an online advertising keywords (Request for Production No. 128). SolidWorks has agreed to run searches of the following terms: DWG R14 DWG 2004 DWG 2007 DWG 2010 in the archived and live email accounts of the Email Custodians and also the electronic documents of the Edocs Custodians and will produce or appropriately log all documents dated from June 1, 2004 through the present that result from these searches and that relate to DWGseriesTM, DWGgatewayTM, DWGeditor®, DWGnavigator, or DWGviewer. Requests for Admission Autodesk will provide color physical images of SolidWorks' webpages Autodesk needs authenticated. SolidWorks will, barring unusual circumstances, authenticate images of the webpages Autodesk provides in physical form, that reflect SolidWorks' websites, or will not challenge their authenticity at trial. Autodesk's Letter Motion Dated October 6, 2009 requesting deposition attendance by SolidWorks' witness Laura Kozikowski (Docket No. 65) was resolved as follows: Autodesk may take a two-hour supplemental deposition of Ms. Kozikowski in the Boston area before October 22, 2009. The deposition will be limited to documents [PROPOSED JOINT] ORDER REGARDING MOTIONS TO COMPEL sf-2752272 4 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 5. 4. produced by SolidWorks in August 2009,specifically documents within the Bates range SW0029151 to SW0042899 as well as any previously redacted documents within the Bates range SW0011169-SW0024572 that were produced in August 2009, within the context of topic 6 of Autodesk's April 10, 2009 30(b)(6) deposition notice . Autodesk's Letter Motion Dated October 6, 2009 requesting access to Autodesk's employee Eric Anderson (Docket No. 64) was resolved as follows: Autodesk may take a deposition of up to one day of Mr. Anderson before October 27, 2009. The deposition will be limited to questions about Mr. Anderson's employment with SolidWorks and SolidWorks. SolidWorks will also be permitted equal time to examine Mr. Anderson on the date of the deposition. SolidWorks Letter Motion Dated October 6, 2009 requesting further deposition testimony by Autodesk witness, Carl White, and responses to SolidWorks' Interrogatories 24 and 25 (Docket No. 67) was resolved as follows: Autodesk will provide a corporate representative to testify at deposition by October 22, 2009, or will provide a statement under oath that responds to the following questions: 1) Please authenticate ADSK 007541. 2) Please confirm whether the two Jonnie Real cartoon advertisements both relate to Inventor. 3) At any time Autodesk was running the Jonnie Real cartoon advertisements and for a two-month period afterward, was Autodesk cognizant of how its Inventor sales were being affected by those advertisements? 4) Was anyone at Autodesk monitoring whether there was an Inventor sales impact as a result of the Jonnie Real advertisements? 5) If yes, what was the reaction to the sales impact resulting from the Jonnie Real advertisements? 6) Again, if the answer to question no. 4 is yes, did the impact on Inventor sales affect whether to run (or not run) the Jonnie Real advertisements again? [PROPOSED JOINT] ORDER REGARDING MOTIONS TO COMPEL sf-2752272 5 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 6. As explained in paragraph 1, above, Autodesk will supplement its response to Interrogatory No. 25 to describe all documents that it claims existed at some stage, but are no longer in existence. Autodesk's and SolidWorks' Motions to File Under Seal (Docket Nos. 66 and 74) were resolved by Court orders issued on October 15, 2009. RESPECTFULLY SUBMITTED: Dated: October 16, 2009 MICHAEL A. JACOBS J. THOMAS MCCARTHY LYNN M. HUMPHREYS DAVID E. MELAUGH JACQUELINE BOS NATHAN SABRI MORRISON & FOERSTER LLP Dated: October 16, 2009 CLAUDE M. STERN EVETTE PENNYPACKER ANDREA PALLIOS ROBERTS ZACHARY M. FABISH QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP By: /s/ Michael A. Jacobs MICHAEL A. JACOBS Attorneys for Plaintiff AUTODESK, INC. By: /s/ Claude M. Stern CLAUDE M. STERN Attorneys for Defendant DASSAULT SYSTÈMES SOLIDWORKS CORPORATION October 21, 2009. DATED: ___________________________ UNIT ED ER N [PROPOSED JOINT] ORDER REGARDING MOTIONS TO COMPEL sf-2752272 F D IS T IC T O R A C LI FO 6 ERED _____________________________ O ORD IT IS S HONORABLE WILLIAM ALSUP UNITED STATES DISTRICT JUDGE up liam Als dge Wil Ju S IT IS SO ORDERED S DISTRICT TE C TA R NIA RT U O NO RT H

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