Mount Hamilton Partners LLC v. Google Inc.

Filing 110

ORDER RE: DISCOVERY DISPUTE (Illston, Susan) (Filed on 7/25/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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No. CV 12-01698
MOUNT HAMILTON PARTNERS, LLC,

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Plaintiff,

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v.

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United States District Court
For the Northern District of California

Related Case No. CV 12-01700

GOOGLE INC.,

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Defendant.
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ORDER RE: DISCOVERY DISPUTE

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This matter concerns a discovery dispute in a patent infringement suit brought by plaintiff Mount

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Hamilton Partners, LLC (“MHP”) against defendant Google Inc., regarding: (1) whether defendant

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Google has exceeded 25 interrogatories permitted by Federal Rule of Civil Procedure 33; and (2)

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whether plaintiff Mount Hamilton Partners, LLC’s (“MHP”) has properly refused to produce documents

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related to its investors and parent company. Having considered the parties’ papers, the Court finds as

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follows:

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1.

Application of Fed. R. Civ. P. 33.

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Google has propounded eight interrogatories on MHP. See Dkt. 98-1. MHP refuses to answer

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interrogatories 5-8 on the grounds that, when taken together with interrogatories 1-4, they exceed the

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limit permitted by Fed. Rule. Civ. P. 33(a)(1) and by the parties’ agreement. Although only 8

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interrogatories are listed, MHP maintains that each of the first 5 interrogatories “shoehorns multiple

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discrete subparts into one request.” Dkt. 98 at 4. Google responds that each interrogatory contains a

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primary question with subparts that are logically or factually related to the primary question. Rather

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than presenting distinct subjects, Google argues that the subparts request the factual bases underlying

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each of their corresponding primary questions. The Court agrees with Google.
Federal Rule of Civil Procedure 33 states in relevant part, “a party may serve on any other party

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no more than 25 written interrogatories, including all discrete subparts.” Fed. R. Civ. P. 33(a)(1).

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Although the term “discrete subparts” does not have a precise meaning, courts generally agree that

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“interrogatory subparts are to be counted as one interrogatory ... if they are logically or factually

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subsumed within and necessarily related to the primary question.” Safeco of America v. Rawstrom, 181

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F.R.D. 441, 445 (C.D. Cal. 1998). A single question asking for several bits of information relating to

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the same topic counts as one interrogatory. Id. However, questions seeking information about separate

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subjects count as several interrogatories. See Kendall v. GES Exposition Services, Inc., 174 F.R.D. 684,

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686 (D. Nev. 1997); Collaboration Properties, Inc. v. Polycom, Inc., 224 F.R.D. 473, 475 (N.D. Cal.

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2004).

United States District Court
For the Northern District of California

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A review of Google’s interrogatories 1-4 reveals that each interrogatory begins with a primary

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theme and follows with subparts that are logically related to that primary theme. Interrogatory no. 1, for

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example, requests detailed information related to the broader theme of the conception and reduction to

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practice of each asserted claim of the patent-in-suit, and in subparts, requests information about the

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persons, dates, and documents in relation to the general theme . Interrogatory no. 2, similarly, requests

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information about the broad theme of MHP’s knowledge of prior art to the patent-in-suit, and its

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subparts request detailed information about persons, dates, and circumstances related to knowledge of

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prior art. Interrogatories no. 3 and no. 4, similarly, proceed with a general theme followed by related,

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detailed subparts. An interrogatory with subparts necessarily related to the primary question – as

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Google’s are here – count only as one interrogatory for purposes of Rule 33. Accordingly, the Court

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finds that Google has not exceeded the relevant limit and hereby compels MHP to respond to

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interrogatories 5-8.

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2.

Google’s Document Request Nos. 35 and 38.

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MHP contends Google’s document requests nos. 35 and 38 are overbroad and irrelevant. The

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Court disagrees. The two requests relate generally to MHP’s investors and parent company. In its Rule

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7.1 disclosure statement, MHP admits that it is wholly owned by Innovation Management Services, LLC

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(“IMS”). Dkt. 4. MHP’s founder and president Rakesh Ramde also admits that IMS is “the sole

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manager and member of MHP” and that MHP has no actual employees, “though two employees from
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IMS do assist on MHP business.” See Ramde Decl., ¶¶ 3, 5, MHP v. Groupon, 12-cv-01700-SI (N.D.

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Cal.), Dkt. 14. Given that MHP asserts that it has no employees, information about its investors and

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parent company is certainly relevant, or at least likely to lead to relevant information to enable Google

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to understand MHP’s basis for believing that Google has infringed MHP’s patent. The only remaining

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issue is whether the requests are broader than necessary.
The Court finds that the requests are not overbroad. Request no. 35 seeks “[a]ll documents and

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things referring to any actual or potential financial investor of Mount Hamilton, including all

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presentations and demonstrations describing or disclosing the ‘334 patent or technology,

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instrumentalities, or services allegedly covered by the ‘334 patent.” This request does not generically

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United States District Court
For the Northern District of California

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seek a list of MHP investors. Instead, it seeks investor information insofar as it relates to the ‘334

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patent. That may, for example, include a presentation to investors or potential investors describing the

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scope of the ‘334 patent. Such a presentation may, necessarily, reveal the identity of MHP’s investors

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or potential investors. However, any such revelation is incidental and does not render the request

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overbroad.

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MHP also argues that Google’s request no. 35 is improper because it seeks irrelevant documents

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that are highly confidential. In particular, MHP is concerned that it would be placed “at a competitive

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disadvantage” in revealing investor information to Google. As discussed, the documents are relevant,

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or likely to lead to relevant information. Moreover, there is nothing in the record to suggest that MHP

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– which owns a patent it does not practice – competes with Google. To the extent MHP feels that

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information responsive to request no. 35 is confidential or highly confidential, the parties have agreed

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to a protective order which governs the release of such information. See Dkt. 62. Accordingly, MHP

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is compelled to respond to request no. 35, and produce all such responsive information consistent with

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the protective order in this case.

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Request no. 38 seeks “[a]ll documents sufficient to identify the persons employed by Innovation

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Management Sciences.” As discussed, given MHP’s lack of employees and admitted symbiotic

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relationship with IMS, this request is certainly relevant. MHP objects because the request is not limited

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to the two IMS employees who admittedly do work on MHP’s behalf. Instead, it potentially seeks

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documents related to all persons employed by IMS.
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The federal rules provide that “[p]arties may obtain discovery regarding any matter, not

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privileged, that is relevant to the claim or defense of any party.” Fed.R.Civ.P. 26(b)(1). “Relevant

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information need not be admissible at the trial if the discovery appears reasonably calculated to lead to

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the discovery of admissible evidence.” Id. Relevance has been broadly construed to encompass any

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matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is

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or may be in the case. See Hickman v. Taylor, 329 U.S. 495, 501 (1947).
Although broadly worded, the scope of material responsive to this request is likely very limited.

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First, Google has not, and cannot ask MHP to produce information on behalf of IMS. Such a request

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would be properly directed to IMS, through a third party – which Google has apparently done. Second,

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United States District Court
For the Northern District of California

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the request only asks for information MHP possesses as to who is employed by IMS. Presumably, any

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such information possessed by MHP would necessarily relate to its relationship with IMS and/or the

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patent at issue in this suit, or could reasonably lead to such information. Accordingly, the Court hereby

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compels MHP to respond to request for production no. 38.

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For the foregoing reasons, and for good cause shown, the Court hereby compels MHP to:

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1.

Respond to Google’s interrogatory nos. 5-8, no later than August 1, 2013.

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2.

Respond to Google’s request for production nos. 35 and 38, no later than August 1,

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2013..

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IT IS SO ORDERED.

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Dated: July 25, 2013
SUSAN ILLSTON
United States District Judge

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