Procongps, Inc. v. Star Sensor Technology, LLC., et al.,

Filing 92

ORDER RE: MOTIONS TO COMPEL PRODUCTION OF DOCUMENTS AND INTERROGATORY ANSWERS 85 86 87 88 89 (Illston, Susan) (Filed on 10/29/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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PROCONGPS, INC.,

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Plaintiff,

United States District Court
For the Northern District of California

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No. C 11-03975 SI
ORDER RE: MOTIONS TO COMPEL
PRODUCTION OF DOCUMENTS AND
INTERROGATORY ANSWERS

v.
STAR SENSOR, LLC, et al.,

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Defendants.

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Plaintiff ProconGPS, Inc. (“Procon”) filed two letter briefs requesting the Court to compel

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defendants Star Sensor, LLC, and Skypatrol, LLC, to produce certain documents as requested by

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plaintiff. Skypatrol has also filed a letter brief requesting the Court to compel Procon to produce certain

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documents and respond to certain interrogatories. Having considered the papers submitted by the

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parties, the Court GRANTS plaintiff’s and defendant’s requests.

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1.

Procon Motion re: Star Sensor’s Responsive Documents

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Procon seeks an order compelling Star Sensor to produce all of the documents that it agreed to

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produce in response to Procon’s first document production request. Procon asserts that Star Sensor has

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only produced documents in response to Request for Production (“RFP”) No. 1, although it has also

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agreed to produce documents in response to RFP Nos. 2, 4, 7-13, 15-44, and 46-50. Dkt 85, Exh. 2.

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Star Sensor had objected that Procon’s definition of “GPS Products” was overly broad. See id.,

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RFP Nos. 3, 5, 6, 14, 45. However, the parties have since agreed on a narrower definition of “GPS

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Products.” Dkt 88 at 1. With this new definition taken into account, Star Sensor has agreed to the

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production of documents in response to Procon’s RFP Nos. 1-50.

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Star Sensor had also objected to producing certain documents dating earlier than July 7, 2011,

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because it contended that Procon was barred from seeking damages past that date. Procon argues that

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it is entitled to seek damages for the last six years under 35 U.S.C. § 286. Without conceding the merits

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of Procon’s argument, Star Sensor has stated that it intends to produce documents that are no longer

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limited to the time period of July 7, 2011.

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Accordingly, Star Sensor is ORDERED to produce documents responsive to Procon’s Request

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for Production Nos. 1-50, incorporating the agreed narrower definition of “GPS Products,” and for the

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last six years prior to the filing of the suit.

United States District Court
For the Northern District of California

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2.

Procon Motion re: Star Sensor’s Source Code Format

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Procon objects to the format in which it received Star Sensor’s source code. Star Sensor sent

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Procon a disc of the source code, but Procon has objected that the nearly 28,000 pages are not in a

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“useable” format because it is not a format that is “searchable, reflects the hierarchy of the code, [or]

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contains developer notes.” Dkt 85 at 1. Star Sensor does not dispute these characterizations, but instead

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has stated that the source code is “in a text-based programming language and is legible in printed form.”

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Dkt. 88 at 2.

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Rule 34 requires a party to produce discovery in “a form or forms in which it is ordinarily

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maintained or in a reasonably usable form or forms.” Fed. R. Civ. P. 34(b)(2)(E)(ii). Some courts have

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found that a reasonably usable form should include a search function, if the original format had a search

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function. See L.H. v. Schwarzenegger, 2008 U.S. Dist. LEXIS 86829, *12-13 (E.D. Cal. May 14, 2008);

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In re Verisign, 2004 WL 2445243 at *1 (N.D. Cal. 2004). Here, it is unknown whether the format of

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the code as it was ordinarily maintained was searchable, hierarchical, or contained developer notes. To

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the extent that the source code was originally maintained in a format that contained these three

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characteristics, Star Sensor is ORDERED to produce the source code in that format.

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3.

Procon Motion re: Skypatrol’s Responsive Documents
First, Procon seeks an order compelling Skypatrol to produce documents required by Patent
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Local Rule 3-4(a). This local rule requires the party defending a claim of infringement to make

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available “[s]ource code, specifications, schematics, flow charts, artwork, formulas, or other

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documentation sufficient to show the operation of any aspects of elements of an Accused Instrumentality

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identified by the patent claimant in its Patent L.R. 3-1(c) chart.” Procon argues that Skypatrol has not

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produced these required documents, with the exception of certain prior art, manuals, and quickstart

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guides already publically available. Skypatrol asserts that it has already produced or will produce these

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technical documents to comply with Patent Local Rule 3-4(a). Accordingly, Shypatrol is ORDERED

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to do so.
Second, Procon requests that the Court compel Skypatrol to produce the documents it has

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United States District Court
For the Northern District of California

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already agreed to produce. In response to Procon’s first request for production, Skypatrol agreed to

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produce documents for RFP Nos. 2, 7-10, 13, 15-16, 18-20, 24-32, 38, 41, and 43. Dkt. 86, Exh. 2.

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Procon asserts that Skypatrol has not yet produced all of these documents. Skypatrol asserts that it will

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produce these documents. The Court ORDERS that it do so.

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Third, Procon requests that the Court compel Skypatrol to produce certain documents for the six

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years from this suit’s filing date. Skypatrol has agreed to produce documents responsive to RFP Nos.

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4, 35, and 39-40, as long as they are after July 7, 2011. Skypatrol argues that it does not have to produce

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earlier documents because damages will not accrue before then under the doctrine of “intervening

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rights.” However, Procon argues that the doctrine does not apply, and it will seek damages for six years

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from the date of suit. Under Federal Rules of Civil Procedure 26(b)(1), each party has the right to

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discover “any nonprivileged matter that is relevant to any party’s claim or defense,” and for good cause,

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the court may permit discovery of information “relevant to the subject matter involved in the action.”

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Even though there are two competing theories of damages, the documents from the last six years are

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reasonably relevant to the issue of damages if Procon’s theory is correct. Thus, the Court ORDERS that

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Skypatrol produce documents responsive to RFP Nos. 4, 35, and 39-40 for the six years from the filing

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of this suit.

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4.

Skypatrol’s Motion re: Procon’s Responsive Documents
Skypatrol asserts that, although Procon agreed to produce documents in response to Skypatrol’s
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first set of document requests, it has failed to comply completely. Specifically, Skypatrol seeks an order

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that Procon produce documents responsive to Request Nos. 1-4, 6-12, 14-18, 21-22, 32-34, 36, 39, 42,

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51, 56-58, 63-64, 66-79, and 81-83. Dkt 87, Exhs. 3-4. Procon asserts that it has produced or will

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produce the documents that it has agreed to produce, if they exist. The Court ORDERS that it do so.

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5.

Skypatrol’s Motion re: Procon’s Interrogatory Answers

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Skypatrol also requests that Procon be compelled to provide complete responses to Skypatrol’s

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Interrogatory Nos. 1-2. See Dkt. 87, Exh. 5. Regarding Interrogatory No. 1, Procon has agreed to

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supplement its response to identify the licenses that it has already produced. The Court ORDERS that

United States District Court
For the Northern District of California

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it do so.

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Interrogatory No. 2 seeks a complete description of Procon’s damages calculations. Procon

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announced in a press release that it estimated damages at $10 million. However, Procon asserts that this

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was only an “early estimate,” and it cannot respond to Skypatrol’s interrogatory until Skypatrol has

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produced all of its documents and an expert has rendered an opinion on those documents. Dkt. 89 at

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2. The Court ORDERS that Procon answer Skypatrol’s Interrogatory No. 2 explaining how it reached

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the $10 million early estimate, and then answer Interrogatory No. 2 again with a more refined estimate

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once Skypatrol has produced all of its documents and an expert has analyzed them.

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Accordingly, both plaintiff’s and defendant’s requests to compel documents and interrogatory
answers are GRANTED [Docket Nos. 85, 86, 87, 88, 89].1

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IT IS SO ORDERED.

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Dated: October 29, 2012
SUSAN ILLSTON
United States District Judge

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Had counsel met and conferred in a meaningful way, neither side would have been required
to brief these issues or to expend the attorneys’ fees attendant on them
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