Speed Track, Inc. v. Amazon.com, Inc. et al

Filing 366

ORDER by Judge Kandis A. Westmore regarding 356 2/5/19 Joint Discovery Letter Brief. (kawlc1, COURT STAFF) (Filed on 4/1/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SPEEDTRACK, INC.,

Case No. 4:09-cv-04479-JSW (KAW)

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Plaintiff,

ORDER REGARDING 2/5/19 JOINT
LETTER

v.

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Re: Dkt. No. 356
AMAZON.COM, INC., et al.,
Defendants.

United States District Court
Northern District of California

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On February 5, 2019, the parties filed a joint letter concerning Plaintiff SpeedTrack, Inc.’s

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Special Interrogatory No. 1, which is a non-infringement contention interrogatory, and the

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production of documents supporting same. (Joint Letter, Dkt. No. 356 at 1.) Defendants

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Amazon.com, Dell, Inc., BestBuy.com, LLC, Office Max, Inc., Macy’s, Inc., Macys.com, LLC,

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Overstock.com, Inc., REI, Evine Live, Inc., and B & H Foto & Electronics Corp. assert that the

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requested supplemented responses are premature. (Joint Letter at 4.)
Upon review of the joint letter, and for the reasons set forth below, the Court finds that

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Plaintiff’s request is premature.

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I.

BACKGROUND

On September 23, 2009, Plaintiff SpeedTrack, Inc. filed a lawsuit based on Defendants’

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alleged infringement of U.S. Patent No. 5,544,360 (the “’360 patent”) through their retail

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websites. Specifically, Plaintiff alleges that the websites infringe on claims 1, 2, 7, 11, 15, 20, 21

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and 22 of the ’360 patent. (See, generally, 2d Am. Compl., Dkt. No. 283; Dkt. No. 298 at 2:10-

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11.)

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Claim construction deadlines have been set as follows: the deadline to exchange

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preliminary claim construction and extrinsic evidence was July 25, 2016; the joint claim

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construction statement was filed on December 19, 2018; claim construction discovery closed on

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January 25, 2019; the opening claim construction brief was filed on February 8, 2019, the

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responsive brief was filed on March 8, 2019, and the reply brief was filed on March 18, 2019; the

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tutorial is set for August 15, 2019; and the Markman hearing is on August 22, 2019.

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II.

LEGAL STANDARD

The Federal Rules of Civil Procedure broadly interpret relevancy, such that each party has

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the right to the discovery of “any nonprivileged matter that is relevant to any party’s claim or

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defense and proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). Discovery need not

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be admissible to be discoverable. Id. The court, however, “must limit the frequency or extent of
discovery otherwise allowed” if “(i) the discovery sought is unreasonably cumulative or

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United States District Court
Northern District of California

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duplicative, or can be obtained from some other source that is more convenient, less burdensome,

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or less expensive; (ii) the party seeking discovery has had ample opportunity to obtain the

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information by discovery in the action; or (iii) the proposed discovery is outside the scope

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permitted by Rule 26(b)(1).” Fed. R. Civ. P. 26(b)(2)(C). Furthermore, “[t]he court may, for good

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cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or

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undue burden or expense,” including by precluding discovery, by conditioning disclosure or

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discovery on specified terms, by preventing inquiry into certain matters, or by limiting the scope

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of discovery to certain matters. Fed. R. Civ. P. 26(c)(1). “Rule 26(c) confers broad discretion on

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the trial court to decide when a protective order is appropriate and what degree of protection is

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required.” Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36 (1984).

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Rule 33 pertains to written interrogatories. “Courts using their Rule 33(a)(2) discretion

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generally disfavor contention interrogatories asked before discovery is undertaken.” In re eBay

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Seller Antitrust Litig., No. C 07-1882 JF (RS), 2008 WL 5212170, at *1 (N.D. Cal. Dec. 11,

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2008). Indeed, “courts tend to deny contention interrogatories filed before substantial discovery

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has taken place, but grant them if discovery is almost complete.” HTC Corp. v. Tech. Properties

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Ltd., No. C08-00882 JF HRL, 2011 WL 97787, at *2 (N.D. Cal. Jan. 12, 2011)(quoting In re eBay

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Seller Antitrust Litig., No. C 07-1882 JF (RS), 2008 WL 5212170, at *1 (N.D. Cal. Dec. 11,

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2008)). A party moving to compel responses to contention interrogatories at an early stage in
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litigation must show that the responses would “contribute meaningfully” to: (1) clarifying the

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issues in the case; (2) narrowing the scope of the dispute; (3) setting up early settlement

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discussion; or (4) exposing a substantial basis for a motion under Rule 11 or Rule 56. In re

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Convergent Technologies Sec. Litig., 108 F.R.D. 328, 338-39 (N.D. Cal. 1985). Courts in this

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district place “a burden of justification” on a party seeking “answers to contention interrogatories

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before substantial documentary or testimonial discovery has been completed.” Amgen Inc. v.

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Sandoz Inc., No. 14-cv-04741-RS (MEJ), 2016 WL 913105, at *2 (N.D. Cal. Mar. 10, 2016)

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(citing In re Convergent, 108 F.R.D. at 338). To meet this burden, a party seeking early answers

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must present “specific, plausible grounds for believing that securing early answers to its
contention questions will materially advance the goals of the Federal Rules of Civil Procedure.” In

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United States District Court
Northern District of California

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re Convergent, 108 F.R.D. at 338-339.

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III.

DISCUSSION

The parties do not dispute that the information sought is relevant, such that Plaintiff is

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eventually entitled to supplemental responses. Rather, at issue is whether Plaintiff’s non-

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infringement contention interrogatory is premature given that the claim construction process is not

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completed.

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Plaintiff has requested substantive responses within seven days after claim construction

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briefing concluded. (Joint Letter at 2.) That date, March 25, 2019, recently passed. Plaintiff

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contends that Defendants received amended infringement contentions on December 5, 2018,

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which provided detailed contentions based on both side’s proposed constructions. Id. at 3.

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Furthermore, Plaintiff argues that having an early response to the contention interrogatory, and the

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corresponding documents, will permit SpeedTrack to focus its discovery on the portions of

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Defendants systems that are actually in dispute. Id.

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Defendants contend that the request is premature, and propose serving supplemental

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responses 60 days after the claim construction order is issued. (Joint Letter at 1.) In support of

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their position, Defendants cite extensively to the undersigned’s July 29, 2016 order in 24/7

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Customer, Inc. v. Liveperson, Inc., No. 15-CV-02897-JST(KAW), 2016 WL 4054884, at *2 (N.D.

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Cal. July 29, 2016). The cases, however, are distinguishable on the facts. In 24/7, the parties had
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not completed claim construction discovery or submitted their briefing. To the contrary, here,

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claim construction discovery has closed; Plaintiff has served amended infringement contentions;

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and the parties have completed claim construction briefing. As a result, Plaintiff has more or less

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finalized its infringement position. This was not the case in 24/7, where Plaintiff argued for the

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contention interrogatory response to assist it in “clarifying and narrowing the issues in dispute,

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including selection of claim terms for construction and reducing the number of asserted claims.”

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2016 WL 4054884, at *2. Defendants argue that the case is still in its early stages of discovery,

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evidenced by the fact that depositions have not occurred. (See Joint Letter at 4.) To their credit,

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Defendants also acknowledge that deposition transcripts from other litigation have been produced.

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United States District Court
Northern District of California

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Id.
Plaintiff argues that this case was filed in 2009, and it has already produced over 800,000

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pages of documents, so the case is not in its early stages. (Joint Letter at 2.) When a case was filed

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and the number of documents produced are not necessarily an indication of whether or not a case

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is in its “early stages.” Indeed, courts in this district have found that the claims construction stage

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is sufficiently early to merit not requiring supplementation of contention interrogatories. HTC

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Corp. v. Tech. Properties Ltd., No. C08-00882 JF HRL, 2011 WL 97787, at *2 (N.D. Cal. Jan. 12,

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2011)(defendants produced 3.7 million pages of documents and two depositions had already taken

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place). In HTC, the court found that since discovery was in “full swing,” and other discovery cut-

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offs had not been set, the request to supplement was premature. Id. at *2-3.

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Moreover, the Court agrees with Defendants that Plaintiff has not shown how

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supplemental responses before a claim construction order is issued would meaningfully contribute

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to clarifying the issues in the case or narrowing the scope of the dispute. (See Joint Letter at 4.)

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Plaintiff’s argument that it provided amended infringement contentions in December, so

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Defendants should have to do so now, is not a sufficient reason. (Joint Letter at 3.) Afterall,

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Plaintiff is the party prosecuting this case, and should know its theories of infringement.

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Accordingly, Plaintiff has not met its burden of showing that requiring supplemental responses to

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the contention interrogatory prior to the issuance of a claim construction order is proportional

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under Rule 26. See In re Convergent Techs. Sec. Litig., 108 F.R.D. 328, 338 (N.D. Cal. 1985)
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(burden is on party seeking responses to contention interrogatories before completion of

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substantial documentary or testimonial discovery).

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Accordingly, Defendants are ordered to serve their supplemental responses within 30 days
of the issuance of the claim construction order.

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IV.

CONCLUSION

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In light of the foregoing, the Court DENIES Plaintiff’s request to compel supplemental

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responses to Interrogatory No. 1 on the grounds that the request is premature. Defendants shall

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serve their supplemental responses to Interrogatory No. 1, and produce the documents supporting

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same, within 30 days of the district court’s issuance of the claim construction order.

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United States District Court
Northern District of California

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IT IS SO ORDERED.
Dated: April 1, 2019
__________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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