Kwan Software Engineering, Inc. v. Foray Technologies, LLC

Filing 78

ORDER RE: DISCOVERY MOTIONS 70 76 (Illston, Susan) (Filed on 8/6/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

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KWAN SOFTWARE ENGINEERING, INC.,

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ORDER RE: DISCOVERY DISPUTES

Plaintiff,

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No. C 12-03762 SI

v.
FORAY TECHNOLOGIES, LLC,

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Defendant.

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Now pending before the Court are two discovery disputes: (1) a motion by defendant Foray to

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compel further responses to its Interrogatories, Set One; and (2) a motion by plaintiff Kwan Software

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Engineering, Inc., d/b/a VeriPic, Inc. (“VeriPic”) to compel production of documents responsive to its

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Requests for Production, Set One. After Foray filed its motion, but prior to VeriPic’s motion, the parties

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participated in private mediation. That mediation having proved unsuccessful, the Court now rules on

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the pending discovery disputes as follows:

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1.

Foray’s Motion to Compel.

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On September 12, 2012, Foray propounded six interrogatories to VeriPic, asking VeriPic to

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identify the basis of its copyright infringement contentions. On October 22, 2012, VeriPic filed a

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response to those interrogatories. Five months later, Foray filed a motion to compel, asserting that the

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October 22, 2012 response was insufficient. VeriPic concedes that its response was insufficient,

but argues that contention interrogatories are premature at this early stage of the case. VeriPic also

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intially took the position that it could not fully respond to Foray’s contention interrogatories because

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the responsive information was subject to a protective order in a state court action pending between the

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same parties. See Kwan v. Foray, Santa Clara County Superior Court Case No. 109CV149780.

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Initially, Foray refused to allow discovery from the state court action to be used in this federal action,

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thus frustrating VeriPic’s ability to respond to the contention interrogatories. Subsequently, the parties

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have apparently agreed to allow discovery from the state court action to be used in this federal action.

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Thus, there should be no barrier to VeriPic’s ability to respond to these contention interrogatories. Not

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only are the contention interrogatories no longer premature – Foray’s initial request has been pending

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United States District Court
For the Northern District of California

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since September 2012 – the parties’ agreement to allow the state court discovery to be used here should

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enable VeriPic to provide a more comprehensive response.

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Accordingly, the Court hereby ORDERS VeriPic to serve supplemental responses to Foray’s
Interrogatories, Set One, within two weeks of the entry of this Order.

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2.

VeriPic’s Motion to Compel.

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VeriPic served its Requests for Production, Set One, on December 11, 2012. Foray served

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responses on January 14, 2013. Although Foray has agreed to produce documents responsive to those

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requests, VeriPic filed this motion to compel on July 29, 2013, asserting that Foray has not done so.

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Foray does not dispute that it agreed to do so, and has not done so. Instead, Foray contends that many

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of the documents covered by these requests have been produced in the state court action, or are part of

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the production continuing in that action. Subsequent to Foray filing its motion to compel in March

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2013, as discussed, the parties agreed to allow discovery in the state court action to be used in this

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federal action. To the extent the documents responsive to VeriPic’s request are not covered by the state

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court production, Foray contends that their production is prohibitively expensive, or at the least difficult.

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Nonetheless, Foray concedes that it can produce the material using an “in-house” review (rather than

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paying an outside law firm), by August 16, 2013.

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The Court is mindful of Foray’s concern that it not be forced to spend money on duplicative

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productions. Accordingly, to the extent the documents have not already been produced pursuant to the
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parties’ agreement regarding production in the state court action, the Court hereby ORDERS Foray to

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complete its production of documents responsive to within two weeks of the entry of this Order. This

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Order resolves Docket Nos. 70 and 76.

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IT IS SO ORDERED.

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Dated: August 6, 2013
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SUSAN ILLSTON
United States District Judge

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United States District Court
For the Northern District of California

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