BrightEdge Technologies, Inc. v. Searchmetrics, GmbH. et al

Filing 182

ORDER by Magistrate Judge Maria-Elena James finding as moot 169 Discovery Letter Brief; granting 170 Discovery Letter Brief. (rmm2S, COURT STAFF) (Filed on 11/8/2017)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 BRIGHTEDGE TECHNOLOGIES, INC., Case No. 14-cv-01009-HSG (MEJ) Plaintiff, 8 DISCOVERY ORDER v. Re: Dkt. Nos. 169, 170 9 10 SEARCHMETRICS GMBH., et al., Defendants. United States District Court Northern District of California 11 12 13 14 INTRODUCTION Before the Court are two discovery letter briefs submitted by the parties. Having 15 considered the parties’ arguments and the relevant legal authority, the Court ORDERS production 16 of the 2017 version of Searchmetrics’ SugarCRM database, and all underlying documents 17 referenced therein, for the following reasons. 18 19 PROCEDURAL BACKGROUND On October 17, 2017, Plaintiff BrightEdge Technologies Inc. (“BrightEdge”) and 20 Defendants Searchmetrics GmbH and Searchmetrics, Inc. (collectively “Searchmetrics”) filed two 21 Joint Discovery Dispute Letters with the Court. In the first letter, BrightEdge requested that the 22 Court compel Searchmetrics to produce “all documents concerning sales, offers to sell, and 23 attempted sales of Searchmetrics’[] products and the accused products”, given the information’s 24 “relevance to infringement, willfulness, and damages.” Dkt. No. 169. In the second letter, 25 BrightEdge asked that the Court compel production of Searchmetrics’ SugarCRM database, as it is 26 “relevant to willfulness, non-obviousness, and damages.” Dkt. No. 170. Searchmetrics asked that 27 the Court deny both of BrightEdge’s requests, stating that the information sought is not relevant. 28 Dkt. Nos. 169, 170. Searchmetrics also argued that the first request is “overbroad, overly 1 burdensome, [and] violates the relevancy and proportionality requirements of Fed. R. Civ. P. 2 26(b)(1)”, and expressed concerns that fulfilling the second request would result in a violation of 3 German privacy laws. Id. On October 26, 2017, the Court held a hearing regarding this discovery dispute. October 4 5 26, 2017 Minute Entry, Dkt. No. 177. On November 2, 2017, the Superior Court of California for the County of Santa Clara 6 7 issued an order on a similar discovery dispute in the parties’ trade secrets case. BrightEdge 8 Technologies, Inc. v. Gabriel Martinez, et al., Case No. 2013-1-CV-256794 (Santa Clara County 9 Superior Court). The Superior Court ordered Searchmetrics to produce the 2015 version of its SugarCRM database, given production would be made subject to the adequately protective 11 United States District Court Northern District of California 10 Confidentiality Order already in place in that case. LEGAL STANDARD 12 “Parties may obtain discovery regarding any nonprivileged matter that is relevant to any 13 14 party’s claim or defense and proportional to the needs of the case . . . . Information within this 15 scope of discovery need not be admissible in evidence to be discoverable.” Fed. R. Civ. P. 16 26(b)(1). “Evidence is relevant if: (a) it has any tendency to make a fact more or less probable 17 than it would be without the evidence; and (b) the fact is of consequence in determining the 18 action.” Fed. R. Evid. 401. However, courts must limit discovery if the information sought “is 19 unreasonably cumulative or duplicative, or can be obtained from some other source.” Fed. R. Civ. 20 P. 26(b)(2)(C)(i). DISCUSSION 21 22 23 A. Second Letter Brief Regarding Production of the SugarCRM Database (Dkt. No. 170) Discovery should be allowed unless the information sought has “no conceivable bearing on 24 the case.” First Fin. Sec., Inc. v. Jones, 2017 U.S. Dist. LEXIS 128194, at *4 (N.D. Cal. Aug. 11, 25 2017) (citation omitted). This Court has already recognized that the requested information 26 (contained in Searchmetrics’ SugarCRM database and the underlying documents referenced 27 therein) is relevant to BrightEdge’s claims of willful infringement and to the calculation of 28 damages in this action. Dkt. No. 56 at 5. This Court has also recognized that this information 2 1 cannot be obtained elsewhere. Id. at 7. Additionally, at the October 26th hearing, BrightEdge 2 stated that it is a common industry practice to produce this kind of database in this kind of 3 litigation. 4 However, Searchmetrics has again asserted that transmitting the database and other related 5 documents to a United States company would violate German privacy law. Dkt. No. 170 at 5; see 6 also Dkt. No. 48. Searchmetrics alleges that the database and related documents contain personal 7 data, which German law bars from being transferred “to countries lacking the same levels of 8 protection afforded in EU countries [– countries such as] the United States.” Dkt. No. 170 at 5. 9 Still, “the party opposing discovery has the burden of showing that discovery should not be allowed, and also has the burden of clarifying, explaining[,] and supporting its objections with 11 United States District Court Northern District of California 10 competent evidence.” La. Pac. Corp. v. Money Mkt. 1 Inst’l Inv. Dealer, 285 F.R.D. 481, 485 12 (N.D. Cal. 2012) (citations omitted); see DirectTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 13 2002); see also Oakes v. Halvorsen Mar. Ltd., 179 F.R.D. 281, 283 (C.D. Cal. 1998) (citation 14 omitted). Searchmetrics has failed to do so. Searchmetrics has twice made this general assertion, 15 but has not explained why the protective order already in place in this case would not be sufficient 16 to protect the private information contained in the database and related documents. 17 As this Court has already stated, even where a party seeks to prevent disclosure of 18 documents based on foreign law, “it is well settled that such [foreign] statutes do not deprive an 19 American court of the power to order a party subject to its jurisdiction to produce evidence even 20 though the act of production may violate that statute.” Societe Nationale Industrielle Aerospatiale 21 v. U. S. District Court, 482 U.S. 522, 544 n. 29 (1987) (citing Societe Internationale Pour 22 Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 204-06 (1958)). This 23 Court previously ruled in favor of disclosure on a similar Joint Discovery Dispute Letter in this 24 case. Dkt. No. 56. While related to a broader set of requests, the requests listed in that letter 25 included one for Searchmetrics’ SugarCRM database and the related documents. Dkt. No. 48 at 2. 26 In that letter, Searchmetrics similarly asserted objections to production based on German privacy 27 law. However, in its order, this Court applied the relevant balancing test (set forth in Restatement 28 (Third) of Foreign Relations Law section 442(1)(c) (1987) and stated in Aerospatiale, 482 U.S. at 3 1 544 n. 28 (1987 and deter 4 7)) rmined that the balance weighed in f favor of com mpelling Sea archmetrics 2 to produce wha it had prev p at viously withheld on the b basis of inte ernational pri ivacy law. Nothing has change Searchm g ed. metrics’ priva concerns are address by the fa that acy s sed act 3 4 pro oduction of the SugarCR database and the und t RM derlying docu uments refer renced therein will be 5 sub bject to the protective order already in place. Th p i herefore, the Court ORD DERS produ uction of the 6 Sug garCRM dat tabase and th underlyin document referenced therein. he ng ts d 7 B. 8 9 First Letter Brief Regarding Requests fo Productio Nos. 21-2 (Dkt. No. 169) L R R or on 22 . At the October 26, 2017 hearing, BrightEdg counsel informed th Court tha the O ge’s l he at formation req quested in th first joint letter could be found in the SugarCR database and the he RM e inf und derlying doc cuments refe erenced there ein. October 26, 2017 M r Minute Entry Transcript of y; 11 United States District Court Northern District of California 10 Pro oceedings Held on Octob 26, 2017 Dkt. No. 1 80 at 20:11ber 7, -14. The pro oduction req quested in the e 12 firs letter would therefore be duplicative, and its d st duplicate pro oduction is u unnecessary. 13 Ac ccordingly, th request is MOOT. he s CONCLU USION 14 15 16 Therefo the Cour ORDERS production of the 2017 version of S ore, rt S n 7 Searchmetric cs’ Sug garCRM dat tabase and al underlying documents referenced therein. ll g s 17 18 S RED. IT IS SO ORDER 19 20 21 22 Da ated: Novemb 8, 2017 ber ___ __________ ___________ __________ ________ MA ARIA-ELEN JAMES NA Un nited States M Magistrate Ju udge 23 24 25 26 27 28 4

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