Mformation Technologies, Inc. v. Research in Motion Limited et al

Filing 575

ORDER by Magistrate Judge Howard R. Lloyd re 389 (1) granting defendants' motion to strike errata sheet; and (2) denying without prejudice defendants' motion for evidentiary sanctions. (hrllc2, COURT STAFF) (Filed on 7/20/2011)

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*E-FILED 07-20-2011*

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NOT FOR CITATION

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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For the Northern District of California

United States District Court

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No. C08-04990 JW (HRL)

MFORMATION TECHNOLOGIES, INC.,

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ORDER (1) GRANTING DEFENDANTS’
MOTION TO STRIKE ERRATA SHEET;
AND (2) DENYING WITHOUT
PREJUDICE DEFENDANTS’ MOTION
FOR EVIDENTIARY SANCTIONS

Plaintiff,
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v.
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RESEARCH IN MOTION LIMITED and
RESEARCH IN MOTION CORPORATION,
[Re: Docket No. 389]

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Defendants.
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Dr. Rakesh Kushwaha is a co-founder of plaintiff Mformation Technologies, Inc.

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(Mformation) and a named inventor of the ‘917 patent in suit.1 He was deposed in December

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2010 in his capacity as Mformation’s Fed. R. Civ. P. 30(b)(6) designee. During that deposition,

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Kushwaha testified about the date of Mformation’s claimed reduction to practice. Based on that

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testimony, defendants Research in Motion Limited and Research in Motion Corporation

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(collectively, RIM) advised plaintiff about a potential new invalidity defense. Kushwaha

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subsequently submitted an errata sheet changing his testimony as to the date of plaintiff’s

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claimed reduction to practice. Mformation says that those changes were prompted by

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Kushwaha’s post-deposition review of a certain version of plaintiff’s source code.
Defendants move for an order striking Kushwaha’s errata sheet. They also request

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evidentiary sanctions with respect to the source code Kushwaha reviewed and which defendants
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U.S. Patent No. 6,970,917

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say Mformation waited nearly two years to produce. Mformation opposes the motion. Upon

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consideration of the moving and responding papers, as well as the arguments of counsel, this

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court grants RIM’s motion to strike and issues a report and recommendation re RIM’s request

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for evidentiary sanctions.

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A.

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RIM’s Motion to Strike
Rule 30(e) of the Federal Rules of Civil Procedure permits a deponent to correct his

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deposition testimony, and “if there are changes in form or substance, to sign a statement listing

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the changes and the reasons for making them.” FED. R. CIV. P. 30(e)(1)(B). Under Ninth

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Circuit law, “Rule 30(e) is to be used for corrective, and not contradictory changes.”
Hambleton Bros. Lumber Co. v. Balking Enterprises, Inc., 397 F.3d 1217, 1225-26 (9th Cir.

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For the Northern District of California

United States District Court

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2005). Courts have applied Hambleton to deposition changes made outside the summary

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judgment context. See, e.g., Tourgeman v. Collins Fin. Servs., Inc., Case No. 08-CV-1392,

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2010 WL 4817990 * 3 (S.D. Cal., Nov. 22, 2010); Lewis v. The CCPOA Benefit Trust Fund,

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Case No. C08-03228 VRW (DMR), 2010 WL 3398521 * 3 (N.D. Cal., Aug. 27, 2010).

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Mformation contends that Kushwaha’s changes are consistent with his prior testimony

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(given in his capacity as an individual) about the source code version in question. On the record

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presented, it is not clear to this court that Kushwaha was, in fact, referring to the same version

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of the code in his prior individual deposition. In any event, defendants point out that

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Kushwaha’s original (unchanged) Fed. R. Civ. P. 30(b)(6) deposition testimony is consistent

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with the claimed date of reduction to practice that (1) Mformation identified, via interrogatory

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answers, over two years ago and (2) remained unchanged over the course of seven supplemental

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and amended interrogatory answers—that is, until earlier this year, after RIM advised plaintiff

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of a potential new invalidity defense based on Kushwaha’s original Fed. R. Civ. P. 30(b)(6)

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testimony. Kushwaha did not equivocate or express confusion in providing the Fed. R. Civ. P.

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30(b)(6) deposition testimony in question. Having reviewed Kushwaha’s testimony, this court

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is persuaded that his errata sheet is contradictory to, and not merely corrective of, the testimony

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he gave in his capacity as Mformation’s corporate designee. (See Thakur Decl., Ex. B; Zinanni

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Decl., Ex. W). Accordingly, RIM’s motion to strike is granted.
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B.

RIM’s Motion for Evidentiary Sanctions
Pursuant to Fed. R. Civ. P. 37(c)(1), defendants request evidentiary sanctions for what

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they believe to be Mformation’s suspiciously late production of the source code Kushwaha

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reviewed after he was deposed as a corporate designee. Specifically, defendants seek an order

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not only precluding Mformation from relying on the subject source code, but establishing as

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true that the source code included all of the elements of the claimed invention by July 2000.

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The court may impose sanctions for a party’s failure to provide information, unless the

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failure was substantially justified or harmless. FED. R. CIV. P. 37(c)(1). Mformation has

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provided no basis for this court to find that the belated production of the subject source code
was substantially justified. The source code reportedly was gathered by plaintiff for production

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For the Northern District of California

United States District Court

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in early 2009, but was not actually produced until February 2011, a few months prior to the

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close of discovery. Mformation says that the omission of the source code from its production

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was an inadvertent error. But, plaintiff has no satisfactory explanation why the source code was

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produced only this year; and, the record indicates that RIM requested full production of

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plaintiff’s source code no less than ten times before Kushwaha was deposed in December 2010.

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(Karson Decl. ¶ 3).

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At the same time, however, the extent and severity of the prejudice to RIM is unclear.

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RIM has had the source code in question for several months, and RIM received the code before

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discovery closed (albeit, toward the very end of the discovery period). Additionally, plaintiff

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points out that, prior to the close of discovery, it offered to let RIM depose Kushwaha again as

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to the source code version in question. Mformation was also agreeable to a modification of the

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case schedule to allow for supplemental expert disclosures and discovery. And, according to

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plaintiff, the source code in question does not reduce to practice every element of Claim 1 of the

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‘917 patent anyway. RIM says it does not know whether that last assertion is true. In essence,

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defendants say that they have been prejudiced because they operated for two years under what

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Mformation told them were the facts as to the claimed reduction to practice and made decisions

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about what discovery to take based on the source code data Mformation actually

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produced—only to have Mformation change its story and produce the subject source code at the

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last minute.

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If it is true that the subject source code does not include all elements of claim 1 of the

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‘917 patent, then it would be unfair to impose sanctions that would be contrary to the actual

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facts or that would prevent the actual facts from being presented. While this court has been told

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what the parties contend is the truth, the actual facts about the subject source code cannot be

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determined from the record presented. This court therefore declines to impose the sanctions

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requested by RIM. In the interests of resolving this action on the merits, RIM may well be

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entitled to some additional time to properly examine the subject source code and to conduct any
necessary follow-up discovery. Such relief, however, is conditioned on the presiding judge’s

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For the Northern District of California

United States District Court

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determination that the period for fact and expert discovery should be re-opened for that purpose.

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Depending on further developments in this case, this order is without prejudice to RIM to seek

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evidentiary sanctions, as may be appropriate, from the presiding judge.

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SO ORDERED.
Dated:

July 20, 2011

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HOWARD R. LLOYD
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UNITED STATES MAGISTRATE JUDGE

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5:08-cv-04990-JW Notice has been electronically mailed to:

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Aaron D. Charfoos

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Allen A. Arntsen

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Amardeep Lal Thakur

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Christopher R. Liro

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Eugene Goryunov

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Jessica Christine Kaiser

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Justin E. Gray

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Linda S. DeBruin [e-mail], [e-mail],
[e-mail], [e-mail]

[e-mail]
[e-mail], [e-mail]
[e-mail], [e-mail]
[e-mail]
[e-mail]
[e-mail]

[e-mail], [e-mail]

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For the Northern District of California

United States District Court

Lisa Marie Noller

[e-mail]

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Marc Howard Cohen [e-mail], [e-mail],
[e-mail], [e-mail]

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Maria A. Maras

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Meredith Zinanni [e-mail], [e-mail],
[e-mail], [e-mail]

[e-mail]

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Michael Anthony Parks

[e-mail]

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Michael Daley Karson

[e-mail]

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Michael S Feldberg

[e-mail]

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Shawn Edward McDonald

[e-mail]

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Tiffany Patrice Cunningham

[e-mail]

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Counsel are responsible for distributing copies of this document to co-counsel who have not
registered for e-filing under the court’s CM/ECF program.

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