UAB "Planner5D" v. Facebook, Inc. et al

Filing 392

Discovery Order regarding Discovery Letter Brief 162 . (sklc2, COURT STAFF) (Filed on 5/13/2024)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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UAB “PLANNER5D”,

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Plaintiff,

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ORDER REGARDING JOINT
DISCOVERY LETTER BRIEF

v.
META PLATFORMS, INC., et al.,
Defendants.

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United States District Court
Northern District of California

Case No. 19-cv-03132-WHO (SK)

Regarding Docket No. 162

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The District Court summarized the dispute in its Order of March 12, 2024 (Dkt. No. 359)
as follows:
Relevant to this motion, Planner 5D claims that “Apple obtained and
presumably used” a particular dataset that defendant Princeton had
created from what Planner 5D describes as “unauthorized copies of
[Planner 5D’s] three-dimensional works.” Dkt. No. 184 at 1:11-16.
That dataset is called the “SUNCG dataset.” Planner 5D claims—and
Apple has confirmed—that Apple asked Princeton to license that
dataset (among others) for commercial projects, and Princeton
declined. See Dkt. No. 162 at 4:11-13 (Joint Letter Brief re:
Discovery Dispute, filed April 22, 2022). After that denial, Apple
found and licensed what Planner 5D describes as “similar objects and
scenes” from a different company, Evermotion, and used them to
create a different but (according to Planner 5D) comparable dataset to
the one that Princeton allegedly created based on Planner 5D’s works,
called “Hypersim.” Relief Mot. 1:20-25. Planner 5D wishes to use
this Evermotion license as a “benchmark license in the industry” to
calculate hypothetical-license damages in this case, as “[it] will show
what Apple paid for an alternative dataset and on what terms.” Dkt.
No. 162 at 2.
Planner 5D first sought discovery into the relevance of this license in
October 2021, when it subpoenaed Apple for records concerning its
interest in SUNCG. Dkt. No. 162 at 1:1. Apple began collecting
responsive records, and agreed to produce responsive emails once

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United States District Court
Northern District of California

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they were collected and reviewed, although some disputes remained.
See id. at 3:14-17. In April 2022, Planner 5D moved to compel
Apple’s production of “(1) the Evermotion license; (2) records of
other Hypersim development expenses; and (3) records of other
alternative datasets.” Relief Mot. 2; Dkt. No. 162 at 1:3-6. Judge
Kim denied that motion, quashed the subpoena, and directed Planner
5D to narrow its subpoena. Dkt. No. 163.
Accordingly, on May 20, 2022, Planner 5D served non-party Apple
another subpoena seeking the following: (1) “All non-privileged
“internal and external e-mails collected from current and former
APPLE employees related to P5D and the SUNCG dataset” that
APPLE was or is reviewing in response to P5D’s October 2021
subpoena”; (2) “APPLE’s license with a third-party to use
Evermotion data (‘the Evermotion License’)”; and (3) the “first five
purchase orders submitted under the Evermotion License that APPLE
identifies after reasonable investigation.” Dkt. No. 184-1. After
Apple objected to producing responsive documents by a particular
date, Planner 5D asked Judge Kim on June 28, 2022, to order Apple
to produce “all responsive documents” within three business days of
the entry of her order. Dkt. No. 184. But at that point, I had bifurcated
discovery, and the motion to compel was stayed until the end of Phase
1 of discovery. Dkt. No. 187. After the stay was lifted, Judge Kim
held a hearing, see Dkt. No. 330, and then denied the motion to
compel and quashed the subpoena, holding that Requests 2 and 3, for
the Evermotion License and purchase orders, were “not relevant to
this litigation,” and that Request 1 was still too broad and sought
information that Judge Kim considered of “minimal value.” See MJ
Order 2-3.

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(Dkt. No. 359.) The District Court thus remanded to the undersigned for consideration of the

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burden to Apple after Apple could reply on this issue. The parties have submitted their responses.

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A. Evermotion License
The District Court noted that the Evermotion license is relevant for purposes of calculating

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a hypothetical license that Plaintiff claims it could have obtained, had it been able to license its
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intellectual property to Defendant. Plaintiff also seeks production of five purchase orders
regarding the Evermotion dataset.

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Apple contests production on the grounds that the current protective order between

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Plaintiff and Defendant does not provide it with sufficient protection, since Apple is a competitor

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of Defendant, and the current protective order allows some of Defendant’s employees to view the
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highly confidential materials. (Dkt. No. 362 (Declaration of Timothy A. Kirby).) At the hearing

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on this matter, Apple reiterated its concern that the current protective order does not provide it

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with sufficient protection. Thus, the undersigned ORDERS that Apple produce the Evermotion

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license and the five purchase orders regarding the Evermotion dataset but only after a protective

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order, with a designation for “Attorneys’ Eyes Only,” is in place. As stated at the hearing, Apple

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and the parties may stipulate to such a protective order and provide it to the undersigned for

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United States District Court
Northern District of California

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approval, but if the parties disagree, they may submit competing proposals for the undersigned to
consider.

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B. Other Documents

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In the declaration of Hannah L. Cannom, Apple’s outside counsel, Apple provided

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information about the general burden of responding to other requests. Apple and Plaintiff initially

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began meeting and conferring in December 2021. (Dkt. No. 363 (Declaration of Hannah L.

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Cannom).) In 2021, Apple searched for documents from six individuals. (Id.) Apple used broad
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search terms and located 10,000 documents, many of which were not responsive. (Id.) Of those

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10,000 documents, only 700 contain the term “SUNCF.” (Id.) Apple estimates that it would take

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20 hours of work to review the 10,000 documents for privilege, since those documents contain

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many internal emails. (Id.)

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The Court finds that the burden of reviewing 10,000 documents is excessive for a third

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party such as Apple. However, the burden of reviewing 700 of those documents that mention

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contain the term “SUNCF” is obviously lower, and Apple provides no estimate for that burden.

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For this reason, the Court ORDERS Apple to produce those 700 documents (that are not protected

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by privilege).

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IT IS SO ORDERED.
Dated: May 13, 2024
______________________________________
SALLIE KIM
United States Magistrate Judge

United States District Court
Northern District of California

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