In Re: Subpoenas to Krueger, Ang, and Martin

Filing 24

ORDER RE: MOTION TO COMPEL. Signed by Magistrate Judge Jacqueline Scott Corley on 1/20/2017. (ahm, COURT STAFF) (Filed on 1/23/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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IN RE: SUBPOENAS TO KRUEGER,
ANG, and MARTIN

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IN CONNECTION WITH: EOLAS
TECHNOLOGIES INCORPORATED,

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ORDER RE: MOTION TO COMPEL

Plaintiff,

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United States District Court
Northern District of California

Case No.16-mc-80266-JSC

Re: Dkt. No. 1

v.

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AMAZON.COM, et al.,

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Defendants.

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This miscellaneous action arises out of a discovery dispute in three consolidated patent

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actions pending in the United States District Court for the Eastern District of Texas. See Eolas

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Techs. Inc. v. Amazon.com, Inc., Lead Case No. 6:15-cv-01038-RSW (E.D. Tex.); Eolas Techs.

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Inc. v. Google Inc., No. 6:15-cv-01039-RWS (E.D. Tex.); Eolas Techs. Inc. v. Wal-mart Stores,

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Inc., No. 6:15-cv-01040-RSW (E.D. Tex.). Those lawsuits involve Eolas’s claims that Defendants

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Amazon, Inc., Google Inc., and Wal-mart Stores, Inc. infringe its patent, U.S. Patent No.

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5,195,507 (“the ’507 patent”), which pertains to interactive distributed internet applications. Now

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pending before the Court is Defendants’ motion to compel email production and other documents

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from Respondents. (Dkt. No. 1.1)
In the underlying patent litigation, Defendants have raised a number of defenses to the

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infringement claims, including (1) invalid patent-term adjustment based on Mr. Krueger’s alleged

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Record citations are to material in the Electronic Case File (“ECF”) for this miscellaneous
action; citations to ECF in the lead underlying case, No. 6:15-cv-01038-RWS (E.D. Tex.), will be
referred to as “E.D. Tex. Dkt. No.” Pinpoint citations are to the ECF-generated page numbers at
the top of the documents.

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efforts to delay prosecution until a prosecution bar that would have prevented his involvement in

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patent prosecution expired, at which time Eolas canceled all then-pending ’507 patent claims and

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submitted new ones; and (2) inequitable conduct inasmuch as Eolas withheld material prior art

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from the PTO in the initial 1994 application to which the ’507 patent claims priority. (See Dkt.

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No. 1 at 6-8.)
Eolas brought a motion for partial summary judgment on the invalid patent-term

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adjustment defense, which the district court denied, noting that the applicant’s intent is relevant

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and ordering discovery into that issue. (E.D. Tex. Dkt. No. 202 at 5.) Accordingly, Defendants

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served third-party subpoenas on Respondents, ’507 Patent inventors Cheong S. Ang and David C.

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Martin, as well as Charles Krueger, the ’507 Patent’s prosecuting attorney. (Dkt. Nos. 2-1, 2-2, 2-

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United States District Court
Northern District of California

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3.) Defendants seek all three Respondents’ responsive documents and emails dating back to 1993

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as well as Krueger’s billing records related to prosecution of the ’507 patent. (Dkt. Nos. 2-1, 2-2,

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2-3.)
Both the inventors and Krueger agreed to produce responsive documents but objected to

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the subpoenas’ email requests. (Dkt. Nos. 2-4, 2-5, 2-6.) They contended that the parties’ E-

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Discovery Order exempts third parties from email production.2 (See id.; Dkt. No. 2-12 at 2.)

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Following meet and confer efforts, Respondents agreed to produce emails if Defendants offered

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specific email production requests. (Dkt. Nos. 2-11, 2-13, 2-14.) However, after disagreement

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about the proposed terms, Respondents reverted to their position that the E-Discovery Order bars

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all third-party email production. (See Dkt. Nos. 2-15—2-22.) Respondents also contended that

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Krueger’s billing records are privileged and therefore need not be produced. Defendants then filed

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the instant motion to compel. (Dkt. No. 1.)
In their opposition, Respondents renew their argument that the E-Discovery Order exempts

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them from email production and argue that Defendants failed to comply with the Eastern District

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The E-Discovery Order provides that “[g]eneral ESI production requests under Federal Rules of
Civil Procedure 34 and 45 . . . shall not include e-mail or other forms of electronic correspondence
(collectively, ‘e-mail.’) To obtain e-mail parties must propound specific production requests.”
(Dkt. No. 2-24 ¶ 7.) Paragraphs 8 through 11 of the E-Discovery Order discuss procedures for
email discovery, referring generally to “the parties.” (Id. ¶¶ 8-11.)
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of Texas’s meet-and-confer requirements. (Dkt. No. 18 at 5-7, 9.) Nevertheless, they contend that

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Defendants’ motion to compel is now moot because, despite arguing that Defendants’ proposed

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search terms are overbroad, irrelevant, and impose an undue burden—without describing what that

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burden is or was—Respondents contend that they “have produced, or are in the process of

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producing, all relevant, responsive, non-privileged emails, as Defendants requested” as well as

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billing records and privilege logs. (Id. at 9-10.)

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Specifically, the inventors aver that they applied the search terms to their email addresses
and sent all emails that were not “obviously irrelevant” to their attorneys for privilege review.

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(Dkt. No. 18-5 ¶ 9; Dkt. No. 18-6 ¶ 9.) In their reply, Defendants argue that they still have not

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received all of the discovery from the inventors that Respondents mentioned in their opposition.

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United States District Court
Northern District of California

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They have not received any emails or a supplemental privilege log from Ang. (Dkt. No. 23 at 8.)

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As to Martin, Defendants received 17 emails and a privilege log claiming privilege over 21

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documents, but Defendants appear to challenge some of the entries in the log. (Id.) With respect

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to both inventors, Defendants contend that the production is insufficient because there is no

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indication that they searched for emails back to 1993 as the subpoenas sought. (Id. at 8-9.)

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Krueger contends that counsel has his emails that were collected and produced in prior

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litigation, and he searched his other accounts for emails “related to the . . . family of patents” at

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issue in the underlying suit and provided those emails to Eolas’s counsel, who produced all non-

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privileged emails. (Dkt. No. 18-4 ¶¶ 7-8.) Respondents also note that Krueger “has now

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produced, or will produce, the requested billing records, redacting the privileged narratives, and . .

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. a privilege log detailing the withheld material[,]” so the request for an order compelling

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production of billing records is also moot. (Dkt. No. 18 at 12.) However, in their reply

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Defendants contend that they still have not received any emails from Krueger, and that his

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declaration does not indicate that he searched for emails for the entire time period the subpoena

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covers. (Dkt. No. 23 at 8-9.) Likewise, as of the filing of the reply, Defendants had not received

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any of Krueger’s billing records, redacted or otherwise, or a privilege log for any of his

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documents.

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Accordingly, Defendants and Respondents shall come to the January 26, 2017 hearing on

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Defendants’ motion to compel prepared to meet and confer in person regarding all outstanding

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discovery issues. Among other things, Respondents must be prepared to: (1) identify a date

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certain by which production of the materials listed in their opposition—including emails, billing

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records, and privilege logs—will be complete; (2) identify the date range for which they searched

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for responsive emails for all three Respondents; (3) provide examples of documents they deemed

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wholly irrelevant and thus did not produce; and (4) explain why documents on the presently

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produced privilege logs are privileged. It is the Court’s hope that following the meet and confer

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the parties will have an agreement that can be placed on the record. If there remain unresolved

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United States District Court
Northern District of California

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issues following the meet and confer, the Court will hear them at that time.
IT IS SO ORDERED.
Dated: January 23, 2017

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JACQUELINE SCOTT CORLEY
United States Magistrate Judge

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