Flatworld Interactives LLC v. Apple Inc.

Filing 129

ORDER re 111 Order on Motion to Compel AND 119 Order. Signed by Judge Elizabeth D Laporte on 5/14/2013. (knm, COURT STAFF) (Filed on 5/16/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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FLATWORLD INTERACTIVES,

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No. C -12-01956 JSW (EDL)

Plaintiff,

ORDER REGARDING PLAINTIFF’S
MOTION TO COMPEL

v.
APPLE INC.,
Defendant.

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As part of the Court’s April 22, 2013 ruling regarding Plaintiff’s Motion to Compel, the

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Court ordered Defendant to file a declaration setting forth the burden associated with the relevant

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protective order and third party confidentiality issues that could arise from producing redacted

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versions of damages expert reports, whether initial, supplemental, or rebuttal, exhibits thereto, and

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trial testimony and exhibits thereto relating to damages, from the Motorola v. Apple litigation in the

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Northern District of Illinois. Defendant filed that declaration on April 23, 2013, and Plaintiff filed a

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response on April 26, 2013. As ordered by the Court, Defendant filed a second declaration on May

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10, 2013. The Court has reviewed the parties’ filings and issues the following Order.

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In Defendant’s counsel’s initial declaration, counsel stated that the expert in the Motorola

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litigation, Bruce Napper, submitted three expert reports, two of which would be subject to discovery

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here because they are related to Defendant’s claims of infringement. Apr. 23, 2013 Pieja Decl. ¶ 5.

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Counsel stated that Napper’s initial report contained confidential information from Motorola, as well

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as from approximately 125 other third parties. Id. ¶ 7. According to counsel, the parties in Motorola
agreed that a copy of Napper’s initial expert report with Motorola’s confidential information

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redacted could be shown to the clients in Motorola pursuant to an agreement between the parties. Id.

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¶ 6. A redacted copy of the initial expert report was created. Id. Counsel attested to the burden of

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seeking to redact all of the other third party confidential information. Id. ¶ 10.

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In his second declaration, Defendant’s counsel clarified that in Motorola, before showing the

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initial Napper report to the clients in that case, Defendant notified and received permission from the

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relevant third parties whose confidential information was contained in the initial Napper report.

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May 10, 2013 Pieja Decl. ¶ 2. Counsel stated that he has recently looked at two dozen of the

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confidential references in the Napper report and has concluded that permission from third parties

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would need to be obtained each time the information is disclosed, so Defendant would have to seek

United States District Court
For the Northern District of California

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permission to produce that information in this case. Id. ¶ 3. Counsel also stated that many of the

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patent references in the initial Napper report are irrelevant because they relate to Motorola’s claims

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against Apple regarding Motorola’s patents, which did not relate to the interface technologies at

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issue in this case. Id. ¶ 4.

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Defendant has shown that the burden of production of the initial Napper report relating to

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damages in the Motorola case is somewhat disproportionate to the benefit that would be realized by

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its production, particularly because of the irrelevance of some of the information which would either

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have to be redacted or permission sought from third parties to disclose. Fed. R. Civ. P.

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26(b)(2)(C)(iii). Defendant’s burden could be mitigated by conditioning production of the initial

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Napper report on Plaintiff paying Defendant’s reasonable fees and costs associated with obtaining

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permission from third parties and/or redacting third party confidential references. See Oppenheimer

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Fund, Inc. v. Sanders, 437 U.S. 340, 358 (1978) (“Under those [discovery] rules, the presumption is

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that the responding party must bear the expense of complying with discovery requests, but he may

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invoke the district court's discretion under Rule 26(c) to grant orders protecting him from ‘undue

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burden or expense’ in doing so, including orders conditioning discovery on the requesting party's

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payment of the costs of discovery.”). If Plaintiff chooses to pay those fees and costs, Defendant

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should produce the initial Napper report after obtaining consent from the relevant third parties and

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redacting any information for which consent is denied.

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Defendant’s counsel states that Napper’s supplemental report does not contain any
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confidential third party information other than information from Motorola, and that a copy of the

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report with Motorola’s confidential information redacted has already been generated. Therefore,

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Defendant shall produce the redacted supplemental Napper report.

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IT IS SO ORDERED.
Dated: May 14, 2013
ELIZABETH D. LAPORTE
United States Chief Magistrate Judge

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United States District Court
For the Northern District of California

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