AutoOpt Networks, Inc. v. Karani et al

Filing 95

Discovery Order re: 82 Discovery Letter Brief re Interrogatory Responses; 83 Discovery Letter Brief re Document Production; 85 Discovery Letter; 88 Discovery Letter. Signed by Judge Thomas S. Hixson on 9/20/2018. (cdnS, COURT STAFF) (Filed on 9/20/2018)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

AUTOOPT NETWORKS, INC.,
Plaintiff,

8

Re: Dkt. Nos. 82, 83, 85, 88
VIJAY KARANI, et al.
Defendants.

11

United States District Court
Northern District of California

DISCOVERY ORDER

v.

9
10

Case No. 17-cv-04714-HSG (TSH)

12
13

I.

INTRODUCTION

Pending before the Court are Plaintiff AutoOpt Networks, Inc.’s (“AutoOpt’s”) and

14
15

Defendant Gnanenthiran Jayanthan’s (“Jayanthan’s”) August 20, 21, 30 and 31, 2018 Discovery

16

Letter Briefs, ECF Nos. 82, 83, 85 and 88, relating to Jayanthan’s interrogatories and requests for

17

production (“RFPs”). The Court held oral argument on September 20, 2018. Having considered

18

the parties’ positions, relevant legal authority, and the record in this case, the Court issues the

19

following order.

20
21
22

II.
A.

DISCUSSION

Jayanthan’s Interrogatory No. 3.
This interrogatory asks AutoOpt to “[i]dentify the alleged infringing software, including an

23

identification of all alleged similarities between the AutoOpt software and the alleged infringing

24

software.” ECF No. 82-2. AutoOpt’s response is, “[u]ntil such time as a copy of the infringing

25

software is produced and can be compared and analyzed, this interrogatory cannot be

26

meaningfully answered.” Id.

27
28

In the letter brief, AutoOpt states it “had requested defendant to produce the object and
source code of the [infringing] software,” ECF No. 85 at 6, but “Defendant has not produced that

1

source code or any of the external devices which has prevented plaintiff being able to make the

2

comparison to show infringement about which defendant now complains.” Id. at 7; see also id.

3

(“It is plaintiff’s position that defendant and Mr. Karani have obfuscated and failed to produce the

4

items sought and needed by plaintiff to compare the software and show the infringement

5

comparisons that the evidence so far show exists.”).

6

At the hearing, AutoOpt explained further that it currently has some information

7

responsive to interrogatory 3, such as information gained from emails. It expects it may learn

8

additional information responsive to this interrogatory at some depositions that have yet to take

9

place. See ECF No. 93 (limited extension of fact discovery cutoff for specified depositions).
Also, AutoOpt has possession of Karani’s computer, which it believes has the allegedly infringing

11

United States District Court
Northern District of California

10

software on it, although AutoOpt recently came into possession of that computer and cannot

12

presently estimate when it will be able to perform an analysis of the software.

13

In this copyright infringement case, interrogatory 3 seeks relevant information; that is

14

undisputed by the parties. In the abstract, the interrogatory’s request for the identification of “all”

15

alleged similarities between the infringing software and plaintiff’s registered software could

16

potentially be disproportional, depending on the nature of the software at issue (such as how large

17

it is) and the level of detail needed to explain the similarities. But AutoOpt did not object to the

18

interrogatory on that basis and did not make a proportionality argument in the letter briefs or at the

19

hearing.

20

AutoOpt’s actual objection in its discovery responses – that it requested the allegedly

21

infringing software in discovery but Jayanthan did not produce it – might seem like an eminently

22

fair objection. After all, how can AutoOpt be expected to perform the analysis that would appear

23

to be needed to answer interrogatory 3 if it doesn’t have the allegedly infringing software to

24

analyze? The objection is to a certain extent overstated. At the hearing, AutoOpt acknowledged it

25

does have some information with which to answer the interrogatory. Further, AutoOpt now states

26

it is in possession of at least one copy of the allegedly infringing software, i.e., the version on

27

Karani’s computer.

28

But the larger problem with this objection is that AutoOpt is the plaintiff suing for
2

1

copyright infringement. At trial it is going to have to identify the allegedly infringing software

2

and explain why it is infringing – it will need to say something about those issues simply as part of

3

putting on its case. Early in fact discovery it can be entirely appropriate for a litigant to say it

4

cannot answer a contention interrogatory until the other side produces documents. But here, fact

5

and expert discovery closed on September 14, 2018, see ECF No. 34, except for specified

6

depositions. Except for what it may learn at the upcoming depositions, at this point, AutoOpt has

7

no right to expect it will get any additional documents or information from Jayanthan. AutoOpt

8

therefore cannot continue to refuse to answer interrogatory 3 claiming it is waiting for Jayanthan

9

to produce things because (except for the upcoming depositions), it isn’t waiting for anything.
Whatever AutoOpt’s copyright case is at this point, it needs to disclose it to Jayanthan. At

10

United States District Court
Northern District of California

11

this late date, Jayanthan should not be in the position of having to guess what AutoOpt’s theories

12

will be at trial concerning what the allegedly infringing software is and how it is similar to

13

AutoOpt’s software.
At the hearing, the Court discussed with the parties the timing of AutoOpt’s amended

14
15

responses (to both this and interrogatory 8). The Court initially suggested 30 days. Jayanthan

16

requested two weeks so that he can have the amended responses in time to prepare for the

17

upcoming depositions. AutoOpt stated this was feasible. Accordingly, the Court ORDERS

18

AutoOpt to amend its response to interrogatory 3 within 14 days, answering the interrogatory to

19

the best of its ability.
The Court also reminds AutoOpt that Federal Rule of Civil Procedure 26(e)(1)(A) imposes

20
21

a continuing obligation on “[a] party . . . who has responded to an interrogatory . . . [to]

22

supplement or correct its . . . response . . . in a timely manner if the party learns that in some

23

material respect the . . . response is incomplete or incorrect, and if the additional or corrective

24

information has not otherwise been made known to the other parties during the discovery process

25

or in writing . . .”

26

B.

27
28

Jayanthan’s Interrogatory No. 8
This interrogatory asks AutoOpt to “[d]escribe in detail any and all damages that YOU

claim were cause[d] by alleged copyright infringement by each defendant in this case.” ECF No.
3

1

82-2. AutoOpt’s response is that “[t]his interrogatory is premature. Until such time as discovery

2

and investigation are substantially completed, no such calculation of damages can be made.

3

Plaintiff also reserves the right to seek statutory damages and/or to recover any unlawful profits

4

from the infringement.” Id.

5

In the letter brief, AutoOpt argues it has the same problem answering this interrogatory

6

that it did with answering interrogatory 3: “Plaintiff has requested that defendant provide his

7

financial information, and particularly all of his W-2 forms, his 1099’s and his tax returns to show

8

his sources of income since he left working at AutoOpt. Defendant has refused.” ECF No. 85 at

9

8. “These would be the sources necessary to show income made by the infringing software . . .”
Id. AutoOpt also states it is “claiming damages for diminished revenue,” id., although its

11

United States District Court
Northern District of California

10

argument for why it does not have that information in its own possession is unclear.

12

At the hearing, AutoOpt stated there is some information responsive to interrogatory 8 that

13

it can currently provide, such as information about its alleged lost profits. AutoOpt also stated it

14

expects to learn additional responsive information in the upcoming depositions and that Jayanthan

15

has agreed to produce documents relevant to this interrogatory in connection with his deposition.

16

On the merits, the information sought by interrogatory 8 is relevant. It’s also proportional

17

(although, again, AutoOpt does not dispute either point). Early in discovery it could be, and often

18

is, unreasonable to expect a plaintiff to quantify its damages, since it may still be investigating, it

19

may need discovery from the defendant to determine its damages, and the quantification of

20

damages is often presented in an expert report. But in this case, fact and expert discovery are both

21

over except for certain depositions. Whether or not Jayanthan produced all the discovery AutoOpt

22

wanted, as the plaintiff in this copyright action, AutoOpt is going to have to say something at trial

23

about what its damages are. Whatever that story is going to be, Jayanthan is entitled to know it. A

24

defendant should not have to learn for the first time what damages the plaintiff is seeking during

25

trial; it is entitled to that information in discovery. Further, AutoOpt now acknowledges it can

26

provide information about its claimed lost profits.

27
28

Accordingly, the Court ORDERS AutoOpt to amend its response to interrogatory 8 within
14 days to answer it to the best of its ability. The Court also reminds AutoOpt of its continuing
4

1

obligation to supplement under Rule 26(e)(1)(A).

2

C.

Verification of AutoOpt’s Interrogatory Responses
Jayanthan requests an order requiring AutoOpt to verify its interrogatory responses. ECF

3
4

No. 85 at 9. AutoOpt did not specifically respond to that request in the letter brief. Id. at 10.

5

AutoOpt’s interrogatory responses do state, on the page following counsel’s signature,

6

“VERIFICATION TO FOLLOW.” ECF No. 82-2 at 7. At the hearing, AutoOpt acknowledged

7

that verifications are required.
Federal Rule of Civil Procedure 33(b)(3) states that “[e]each interrogatory must, to the

8

extent it is not objected to, be answered separately and fully in writing under oath.” AutoOpt’s

10

responses to interrogatories 2, 3, 4, 6, 7, 8, 9 are before the Court. ECF No. 82-2.1 AutoOpt’s

11

United States District Court
Northern District of California

9

responses to the other interrogatories were not submitted in connection with the letter briefing, so

12

the Court is unable to determine whether those interrogatories were “objected to” in their entirety,

13

in which case verification would not be required. Accordingly, the Court does not address any

14

interrogatory responses other than these.

15

AutoOpt did not object to interrogatories 2, 4, 6, 7 and 9. Accordingly, verifications were

16

required. The Court therefore ORDERS AutoOpt to verify those responses within 14 days. The

17

Court also ORDERS AutoOpt to verify its upcoming amended responses to interrogatories 3 and

18

8 since they must have factual content and not consist solely of objections.

19

D.

Jayanthan’s RFPs 1, 2, 3, 29, 6, 8, 11, 12, 15, 32, 42
In its discovery responses, AutoOpt agreed to produce all responsive documents in its

20
21

possession, custody or control for RFPs 1, 2, 3, 29, 6, 8, 11, 15, and 32. ECF No. 83-2. AutoOpt

22

objected to RFP 12 but stated in the letter brief that it would produce responsive documents. Id.;

23

ECF No. 88. So, for these RFPs the dispute is over timing. Since fact discovery closed on

24

September 14, AutoOpt should already have produced the documents it said it would produce. At

25

the hearing, Jayanthan requested that AutoOpt be ordered to produce responsive documents within

26

14 days in light of the upcoming depositions. AutoOpt agreed that was reasonable for most of the

27
28

The first line of AutoOpt’s response to interrogatory 11 was submitted to the Court, ECF No. 822, but the Court cannot tell if there was an objection asserted later in the response.
5
1

1
2
3
4

RFPs but not all of them.
The Court ORDERS AutoOpt to produce all documents responsive to RFPs 1, 6, 11 and
12 within 14 days, as AutoOpt stated it could do so.
At the hearing AutoOpt argued that it is impossible for it to produce the executable version

5

of its software and it would therefore produce only the source code instead. On that basis,

6

AutoOpt stated it could not produce documents responsive to RFP 3. It is true that the parties’

7

letter brief states that RFPs 2 and 3 both ask for executable versions. ECF No. 88. Following the

8

hearing, however, the Court again reviewed the RFPs themselves (ECF No. 83-2). In fact, RFP 2

9

asks for the executable version, and RFP 3 seeks the source code version. Accordingly, the Court
ORDERS AutoOpt to produce documents responsive to RFP 3 within 14 days and DENIES

11

United States District Court
Northern District of California

10

Jayanthan’s motion to compel as to RFP 2.

12

For RFP 8, AutoOpt requested additional time to collect and produce the deposits with the

13

Copyright Office. Accordingly, the Court ORDERS AutoOpt to produce documents responsive

14

to RFP 8 within 30 days.

15

For RFP 15, the Court ORDERS AutoOpt to produce responsive documents within 14

16

days, except that documents that are responsive to RFP 8 may be produced within 30 days, and

17

documents responsive to RFP 2 need not be produced at all.

18

For RFP 32, AutoOpt states that the only responsive material it has is the software on the

19

Karani computer. AutoOpt thinks it can produce a mirror image of the computer but has not been

20

able to confirm that with its technical personnel. Accordingly, the Court ORDERS AutoOpt to

21

produce documents responsive to RFP 32 within 30 days, subject to any technical issues or

22

problems it may encounter.

23

RFP 42 seeks the Jayanthan computer. AutoOpt stated in its responses that it would make

24

the computer available for inspection. ECF No. 83-2. In the letter brief, Jayanthan stated that

25

AutoOpt had not made the computer available because it was on the East Coast. ECF No. 88. At

26

the hearing, AutoOpt reported that the computer has now been returned to the Bay Area and is

27

currently in counsel’s office. The parties agreed that Jayanthan can do an inspection locally.

28

Accordingly, the Court ORDERS the parties to meet and confer and find a mutually agreeable
6

1

time for Jayanthan to perform an inspection.

2

E.

Jayanthan’s Requests for Sanctions

3

In the letter briefs, Jayanthan seeks several forms of sanctions. Those requests are

4

DENIED because sanctions are not warranted at this time. The Court also reminds the parties of

5

the undersigned’s Discovery Standing Order, which provides that “[n]o motion for sanctions may

6

be filed until after the moving party has complied with the requirements above” concerning

7

discovery letter briefs, and that “[m]otions for sanctions shall be filed separately, pursuant to

8

Federal Rule 37 and Civil Local Rules 7 and 37-4.”

9

IT IS SO ORDERED.

10

United States District Court
Northern District of California

11

Dated: September 20, 2018

12
13
THOMAS S. HIXSON
United States Magistrate Judge

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
7