In Re Subpoenas to Multimedia Over Coax Alliance.

Filing 14

ORDER by Magistrate Judge Sallie Kim granting in part and denying in part 1 Motion to Compel. (rmm2S, COURT STAFF) (Filed on 10/13/2016)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

In re Subpoenas to Multimedia Over Coax

8

Alliance,
ORDER GRANTING IN PART AND
DENYING IN PART PLAINTIFF’S
MOTION TO COMPEL

9
10

Regarding Docket Nos. 1

11
United States District Court
Northern District of California

Case No. 16-mc-80192-SK

12
13

TQ Delta, LLC moves to compel out of district subpoenas served on third party

14

Multimedia Over Coax Alliance, domiciled in the Northern District of California. The subpoenas

15

relate to patent infringement actions currently pending in Delaware. Having reviewed the parties’

16

motion, opposition, and joint status report, and having heard argument on the motion, the motion

17

is hereby GRANTED in part and DENIED in part, as provided below.
BACKGROUND

18
19

In this patent infringement case, Plaintiff TQ Delta, LLC (“TQD”) seeks to obtain

20

discovery from third party Multimedia Over Coax Alliance (the “Alliance” or “MoCA”). In

21

November 2015, TDQ served six Rule 45 subpoenas on the Alliance, one for each of six actions

22

pending in Delaware.1 The Alliance is a trade group organized for the benefit of media

23

distribution companies, all of whom are defendants in the underlying litigation. Defendants’

24

representatives make up the membership of the Alliance. In the six actions, TQD asserts that a

25

communications standard aimed at providing home data distribution and content using coaxial

26
27
28

1

Defendants in the six cases include Comcast Cable Communications, LLC; Coxcom LLC
and Cox Communications Inc.; DirectTV, LLC; DISH Network Corporation; Time Warner Cable;
and Verizon Services Corp.

1

cable, known as the “MoCA Specification,” lies within its patent portfolio. TDQ maintains that

2

defendants infringe upon TQD’s patents by making or selling products that implement the MoCA

3

Specification.

4

After the subpoenas were received, TDQ and the Alliance met and conferred, narrowing

5

the scope of the subpoenas. After the Alliance failed to produce documentation, TQD moved to

6

compel production. (Dkt. 1.) This Court ordered TQD to serve the motion on the Alliance and

7

provided the Alliance with the opportunity to oppose the motion. (Dkt. 3.) Subsequently, the

8

Alliance produced responsive documents, although the adequacy of the production remains at

9

issue. Alliance opposed TDQ’s motion (Dkt. 7) and later the parties submitted a joint statement
regarding the status of the discovery. (Dkt. 8.) The Court heard oral argument from TQD and the

11
United States District Court
Northern District of California

10

Alliance on October 12, 2016.
ANALYSIS

12
13

A.

Legal Standard.
Rule 45 of the Federal Rules of Civil Procedure provides the method by which information

14
15

may be obtained directly from a nonparty. The scope of discovery by way of a Rule 45 subpoena

16

is the same as the scope of discovery provided for in Rule 26 (b). Broadband iTV, Inc. v.

17

Hawaiian Telecom, 2015 U.S. Dist. LEXIS 51131, at *4 (ND Call. Apr. 17, 2015). “Parties may

18

obtain discovery about any nonprivileged matter that is relevant to any party’s claim or defense.”

19

Fed.R.Civ.P. 26(b)(1). While a motion to compel disclosure is authorized by Rule 37 of the

20

Federal Rules of Civil Procedure, the parties must first meet and confer in an attempt to resolve

21

the matter, otherwise the “Court will not entertain a request to resolve a disclosure or discovery

22

dispute.” Civil L.R. 37-1(a).

23

B.

24

Scope of Discovery Sought By TDQ.
TQD and the Alliance narrowed the scope of the discovery during the meet and confer

25

process to Request Nos. 1-8, 11-14, 18, 21 and 22; omitting Request Nos. 9, 10, 15-17, 19 and 20.

26

This is referred to as the “Limited Subpoena.” TQD seeks additional responsive documents to the

27

Limited Subpoena, which fall into the following four categories: (1) testing; (2) specifications; (3)

28

minutes/email; and (4) financial/technical.
2

1
2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

1.

Testing (Requests Nos. 1-4, 11-12).

Request Nos. 1-4 and 11-12 seek documents related to the testing of accused products and
compliance with the MoCA Specification. The Alliance produced a total of 36 test results out of
177 products, which TQD suspects is the result of an inadequate search. However, the Alliance
maintains that it has searched the repository of documents and its email inboxes for testing related
to the accused products and compliance with the MoCA Specification. While TQD may have
predicted that more documents would be produced, TQD has not provided a sufficient basis to
persuade the Court that documents responsive to these requests exist but have not been produced.
Should TQD obtain additional information in the litigation to form a reasonable basis for requiring
further production of documents after an additional search, the Court will entertain such a request.
In the meantime, the Court DENIES without prejudice the request to compel as to this category of
documents.
2.

Specifications (Request Nos. 5-7, 13).

Request Nos. 5-7 and 13 seek every released version of the MoCA Specification that is not
publically available and the sections of the MoCA Specification with which a product is required
to comply. The Alliance represents that it has produced all versions of the MoCA Specification.
TQD argues that it is entitled to supporting technical documentation. However, the Requests
themselves do not seek such information. Therefore, the request to compel further documentation
to Request Nos. 5-7 and 13 is DENIED.
3.

Minutes/Email (Request No. 14).

The Limited Subpoena version of Request No. 14 seeks “all proposals, submissions,
contributions, meeting minutes, notes, records, votes and decisions of MoCA, MoCA Members, or
the MoCA Work Groups relating” to the certain MoCA Specifications, as shown in the string of
correspondence at Exhibit 10 of the Declaration of Rajendra Chiplunkar (Dkt. 2-44) and Ex. A to
the Declaration of Aaron Wainscoat. (Dkt. 7-2.) While the Request has narrowed, the parties
agree that there is overlap with other Requests. In light of the lingering uncertainty as to the
efforts made in responding to Request No. 14, the overlapping issues with other Requests, and the
breadth of the Request, the Court shall permit TQD to take one two-hour deposition of a
3

1

representative designated by the Alliance on the limited issue of the scope of the search for

2

responsive documentation to Request No. 14. The deposition shall be at a mutually convenient

3

time, but shall occur no later than 45 days from the date of this order. The deposition shall either

4

take place in this District or can take place outside this District if the parties agree. TQD shall pay

5

the fee for a court reporter and the fee for one copy of the transcript of the deposition of the

6

Alliance.

7

4.

8

Requests Nos. 21 and 22 seek documentation that compare financial and technical benefits

9

of the MoCA protocol over competing technologies. TQD maintains that this information is vital

Financial/Technical (Request Nos. 21 and 22).

to its claim for damages. The Alliance points to the broad scope of this category and assert that

11
United States District Court
Northern District of California

10

the parties have not met and conferred on the scope of these requests. In light of the failure to

12

meet and confer on this issue in compliance with Civil L.R. 37-1(a), the Request to compel

13

additional documents in response to Request Nos. 21 and 22 is hereby DENIED without prejudice.

14

5.

15

Both TQD and the Alliance seek an award of fees and costs from the other. TQD seeks

Requests for sanctions.

16

reimbursement of fees and costs incurred in order to obtain the Alliance’s compliance (Dkt. 1) and

17

the Alliance seeks reasonable attorneys’ fees associated with responding to the motion and

18

negotiating additional time to respond pursuant to Fed. R. Civ. P. 45(d)(1). (Dkt. 7.) In light of

19

the good faith efforts of both parties to interpret the discovery requests which are somewhat broad

20

in scope, the Court DENIES the both parties’ requests for fees and costs.

21
22
23
24

IT IS SO ORDERED.
Dated: October 13, 2016
______________________________________
SALLIE KIM
United States Magistrate Judge

25
26
27
28
4