PersonalWeb Technologies LLC v. Google, Inc. et al

Filing 325

ORDER Re: Discovery Dispute Joint Report #2 293 ; Discovery Dispute Joint Report #3 291 ; Discovery Dispute Joint Report #4 289 ; Discovery Dispute Joint Report #5 288 ; Discovery Dispute Joint Report #6 290 ; Discovery Dispute Joint Report #7 292 . Signed by Magistrate Judge Howard R. Lloyd on 8/19/2014. (hrllc1, COURT STAFF) (Filed on 8/19/2014)

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*E-Filed: August 19, 2014*

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

NOT FOR CITATION

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United States District Court

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SAN JOSE DIVISION

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PERSONALWEB TECHNOLOGIES, LLC
and LEVEL 3 COMMUNICATIONS, LLC,

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No. C13-01317 EJD (HRL)
ORDER RE DDJR #2 – #7

Plaintiffs,
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v.

[Re: Docket Nos. 288-293]

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GOOGLE INC. and YOUTUBE, LLC,

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Defendants.
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The opening sentence of the undersigned’s Standing Order re: Civil Discovery Disputes

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states: “The parties and counsel are cautioned not to allow discovery disagreements to drag on

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unresolved until some important looming deadline forces them into action.” Nevertheless, one week

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after fact discovery closed, the deadline for requesting orders to compel discovery, the parties filed

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six (6) discovery dispute joint reports (“DDJR”). The Standing Order also requires lead counsel to

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meet in person “for as long as and as often as is needed to reach full agreement.” Here, all six

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DDJRs are based on a single meet-and-confer, which it appears was more of a token meeting than a

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good faith attempt to resolve the parties’ discovery disputes without judicial intervention, as

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evidenced by their “final and most reasonable” proposals (required by the Standing Order), which

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are simply blanket demands for all requested discovery and corresponding denials of the requests in

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their entirety. Despite the questionable compliance with the undersigned’s Standing Order, the

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Court attempts to resolve each dispute as fairly as circumstances permit.

BACKGROUND

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PersonalWeb Technologies, LLC (“PersonalWeb”) sues Google Inc. and YouTube, LLC

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(collectively, “Google”) alleging that several of its patents are infringed by Google’s query-serving

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system, certain Google infrastructure systems, and YouTube’s Content Management system. In

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DDDJR #2 through #5, PersonalWeb seeks orders compelling Google to produce documents and

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information related to (#2) revenues and costs savings, (#3) preservation of documents, and (#4) the

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new version of Blobstore, as well as (#5) to present for deposition a corporate witness on

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willfulness. In DDJR #6 and #7, Google requests an order compelling PersonalWeb to (#6)

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supplement various discovery requests related to Google’s identified prior art, and (#7) produce a

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claim chart to demonstrate how PersonalWeb’s own product practices the alleged infringed patents.

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DISCUSSION

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A. Discovery Dispute Joint Report #2 – Revenue and Costs Savings

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1. Roszak Deposition

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PersonalWeb first asserts that the deposition of Google’s 30(b)(6) witness for financial

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topics, Michael Roszak, revealed four categories of purportedly relevant financial information

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which Google has not produced, including: (1) documents Roszak reviewed in preparation for his

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deposition which reflected Google’s search-related financials, such as profit and loss statements and

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cost reports; (2) documents reflecting ad-related revenue and costs associated with searches for each

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Google service that uses Google’s Query Serving System; (3) documents reflecting Google

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AdWords and AdSense financials; and (4) documents reflecting the amount of data center capacity

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for Google services that use the accused systems. According to PersonalWeb, it specifically

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requested these missing documents after the deposition. Google purportedly replied that it was

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looking into it and then asserted that the documents had already been produced; however, it would

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not respond when asked to identify the documents by their Bates numbers.

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According to Google, only one document not previously produced was reviewed by Roszak

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prior to his deposition – an old email defining a financial term, which was subsequently produced –

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and all the requested information pertaining to profit and loss statements or cost reports is contained

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in Exhibits 4-8 and 14-17 to Roszak’s deposition.

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Additionally, Google asserts that it long ago produced discovery regarding ads-related

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revenue, despite the fact that it is irrelevant because it bears no relationship to the accused systems.

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Moreover, Google maintains that PersonalWeb’s request for ad-related revenue and costs

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information related to the “Query Serving System” (a term coined by PersonalWeb) is inapplicable

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because, as Roszak testified, that term has no meaning within Google’s financial information.

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Furthermore, despite the alleged irrelevance and inapplicability of the request, Google asserts it

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conducted a reasonable investigation for further responsive documents, and none were located.

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Similarly, Google argues that financials for AdWords are irrelevant, yet it produced them

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anyway. PersonalWeb even marked the documents as exhibits during the deposition, and Roszak

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confirmed that they reflected AdWords revenues. Roszak further explained that “AdSense”

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revenues have nothing to do with revenue for ads placed against searches. Google points out that

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PersonalWeb has made no showing to the contrary, and therefore the information requested here

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was already produced or not relevant.

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Finally, with respect to the data center capacity, Google again asserts that this information

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was produced prior to and used as exhibits during the Roszak deposition. Thus, it maintains there is

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nothing to compel.

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2. Latency Reductions

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PersonalWeb asserts that “Google has failed to produce any documents associated with

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Google’s decision to transition within its Query Serving System over the past five years from a

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Tokenspace index to a direct index in Mustang and TeraGoogle, including specifically documents

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associated with any quantification of the latency improvement for search results associated with this

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transition.” PersonalWeb does not believe Google’s contention that it has not analyzed how this

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infrastructure change has benefitted the company. Likewise, Google has not produced

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documentation of cost savings related to latency reductions, despite its oft stated claim that “every

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‘millisecond of search latency’ costs the company ‘about $1 million/year in lost revenue.’”

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Google responds that such documents simply do not exist, and PersonalWeb’s speculation

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otherwise does not make it so. Google explains that the transition from a Tokenspace index to a

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direct index was just a single part of a larger project, and Google does not have additional analyses

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of that individual feature beyond that already produced. Additionally, the statement that every

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millisecond of latency costs $1 million/year is based on an anecdotal email, not any hard data. In

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fact, Google’s 30(b)(6) witness on this issue testified that he is unaware of anything that confirms

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that anecdotal statement, and that his numerous studies on latency concluded that no correlation

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exists between small latency changes and revenue – studies which Google produced. Another

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Google witness provided similar testimony.

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3. Blobstore

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PersonalWeb asserts that Google will not produce cost data related to the accused system

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Blobstore, including various categories of information PersonalWeb specifically requested.

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PersonalWeb argues that Google’s position taken at the meet and confer, that such information was

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irrelevant, is contrary to law – money saved by a company through use of an infringing system is

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clearly relevant and withholding such information is prejudicial.

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Google denies having refused to produce such information; it simply had not finished its

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production at the time of the meet and confer, which occurred prior to the fact discovery cutoff.

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Regardless, Google asserts that it did produce available information on the specific categories

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PersonalWeb requested.

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4. Conclusion

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PersonalWeb generally requests numerous sub-categories of documents that it asserts

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Google has not produced. Google generally counters that the requested information was already

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produced, does not exist, or in some cases, is irrelevant. Google’s rebuttal has sufficiently

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overcome PersonalWeb’s generalizations of deficient production. Of course, there may be some

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responsive documents that have been unintentionally withheld, but the Court thinks that Google’s

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ongoing duty to supplement is a sufficient enforcement mechanism, and an order to compel is not

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warranted. Accordingly, PersonalWeb’s request for relief in DDJR #2 is denied.

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B. Discovery Dispute Joint Report #3 – Preservation of Documents
“PersonalWeb seeks an order compelling Defendants to produce immediately Defendants’

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document retention policies and litigation hold notices issued in this case, or documents and

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information sufficient to identify the content of Google’s litigation hold notices, the dates the

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notices were circulated and the recipients of such notices, and what categories of information

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Google’s employees were instructed to preserve and collect.” Google asks the Court to deny the

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request in its entirety.

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PersonalWeb bases its request on Interrogatory No. 11, served on August 31, 2012, which

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requested, among other things, that Google describe its email retention policies as well as any

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changes made thereto since it received notice of the litigation. Google’s supplemental response in

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November 2012 stated that Google would produce “copies of any document retention policies in

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effect at the time PersonalWeb filed its Complaint and documents sufficient to identify any

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subsequent changes to such policies.” PersonalWeb asserts that no such documents or information

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were ever produced or identified. A few months later, PersonalWeb deposed Ms. Zmrhal, the

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project manager for Google’s electronic discovery group. In March 2014, more than one year later,

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PersonalWeb sent Google an email noting that despite the representations made in its November

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2012 supplemental response to Interrogatory No. 11, PersonalWeb had not received any documents

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identifying changes to its retention policies, including, specifically, documents identifying any

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litigation holds. Then, at the meet and confer in April, Google asserted, purportedly for the first

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time, that such information was privileged. PersonalWeb disputes that the information is privileged,

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citing In re eBay Seller Antitrust Litigation, No. C 07-01882 JF (RS), 2007 WL 2852364 (N.D. Cal.

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Oct. 2, 2007) (hereinafter, “eBay”).

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First, Google argues that even if its initial production were deficient, which it denies,

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PersonalWeb’s more than one-year delay in following up on its discovery request demonstrates a

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lack of good cause to order further production after the fact discovery cutoff. Additionally,

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PersonalWeb’s current request is broader than the interrogatory on which it is purportedly based,

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which notably makes no mention of litigation hold notices. As for what was actually requested,

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contrary to PersonalWeb’s assertions, Google did produce its relevant document retention policy.

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PersonalWeb had the policy and even inquired about it during the deposition of Zmrhal, who

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testified that the same retention policy had been in place for at least five or six years. Google also

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opposes PersonalWeb’s request because it is not relevant to any issue in this case, and the litigation

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hold notices are protected by attorney-client privilege, as acknowledged in eBay, the only case

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PersonalWeb cites. Lastly, Google notes that PersonalWeb’s decision to produce its own litigation

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hold notice in an unsuccessful attempt to defend against allegations of spoliation does not justify

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compelling Google to produce its privileged notice.
In the absence of an explanation for the year-long gap in PersonalWeb’s discovery efforts

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towards Google’s document retention policies, and the coincidence with the Court’s finding that

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PersonalWeb committed spoliation by failing to timely institute its litigation hold, the Court cannot

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help but think that the motivation for its renewed interest is retaliatory in nature, as Google implies.

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Regardless, the Court agrees with Google that the litigation hold notice itself is protected as

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attorney-client communications and/or work product, as recognized in PersonalWeb’s lone cited

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case, eBay. There, the court did allow the plaintiffs to inquire into what the employees did in

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response to receiving the litigation hold notice, even if that indirectly revealed the contents of

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notice. However, that case is distinguishable in that it was still very early in discovery, and

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plaintiffs were about to depose eBay’s witness on ESI retention. Moreover, the court based the

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relevance of the discovery on the commentary to amendment to Rule 26(f) which suggests that early

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discovery from individuals with special knowledge of a party’s ESI may be helpful in appropriate

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cases. Here, however, after the fact discovery cutoff, the relevance of PersonalWeb’s requests for

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documents related to Google’s retention policies and litigation holds is dubious. PersonalWeb does

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not suggest that the information is relevant to the merits of the case, only that it is responsive to an

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interrogatory served over a year and a half ago. Even if it is arguably within the scope of discovery,

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PersonalWeb had ample opportunity to obtain the information during discovery, and the Court

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thinks the burden of producing the information, however minimal, outweighs its likely benefit. See

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Fed. R. Civ. P. 26(b)(2)(C)(ii)-(iii). Accordingly, PersonalWeb’s request for an order to compel is

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denied.

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C. Discovery Dispute Joint Report #4 – New Version of Blobstore
PersonalWeb seeks an order compelling Google to produce source code and documents

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related to the newest version of accused instrumentality Blobstore, which version is not itself an

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accused instrumentality, is still in development, and has not yet gone live. According to

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PersonalWeb, at a deposition in April 2014, a Google witness testified that Google planned to begin

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rolling out the new version “soon, perhaps this quarter,” almost certainly before trial, and he

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confirmed that it would continue to use the accused instrumentality.

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According to Google, the deposition testimony explained that the new version will not go

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live and source code will not be in final release form for another two to three quarters from now,

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after expert reports and summary judgment proceedings. Moreover, courts find that when a product

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is still in development, discovery into such material would be premature because an incomplete,

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non-“live” product cannot be evaluated for infringement in patent litigation. See EOPS Techs. v.

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Pegasus Techs., 842 F. Supp. 2d 31, 34 (D.D.C. 2012).
The Court agrees with Google that it need not produce discovery related to a version of a

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product which has not been released and is still being developed. Accordingly, PersonalWeb’s

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requested relief is denied.

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D. Discovery Dispute Joint Report #5 – Witness on Willfulness
PersonalWeb asserts that Google has failed to produce a witness in response to its 30(b)(6)

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deposition notice on the topic of “Google’s decision to cite to any of the Asserted Patents in any

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other patents originally filed by Google.” After Google objected to the scope of the topic, the

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parties met and conferred, and PersonalWeb agreed to provide Google with a short list of Google

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patents that cite to the patents-in-suit. PersonalWeb provided the list of nine patents, yet Google has

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still failed to produce a witness as it maintains that it cannot locate a person with knowledge of the

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issue.

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Since its initial objections to the broad scope of the request and the burden it would impose

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have been somewhat alleviated by PersonalWeb’s narrowing, Google now objects on the grounds

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that the request seeks privileged information that is irrelevant to the case. Google asserts that the

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request for information as to the decision why certain prior art was cited directly implicates

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privileged discussions with, and evaluations by, outside prosecuting attorneys, and thus, the request

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is outside the scope of the discovery. The Court agrees that as the request is currently framed, it

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primarily seeks privileged communications, and the Court will not compel Google to produce a

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witness to testify as to this information. Google further asserts that even if PersonalWeb were to

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seek more general, nonprivileged information related to the topic of citations of PersonalWeb

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patents in Google patent applications, it would still be irrelevant to this case because PersonalWeb

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has not tied any of the nine Google patents in its list to any of the existing accused systems. Here,

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however, the Court disagrees as information related to Google’s citation to PersonalWeb’s patents at

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issue is at least reasonably calculated to lead to the discovery of admissible information.

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Accordingly, Google shall produce a witness knowledgeable of the general topic of citations to

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PersonalWeb patents in the nine Google patents identified by PersonalWeb, with the understanding

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that that person shall not be required to testify regarding privileged communications with attorneys

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about the decision to cite to PersonalWeb patents.

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E. Discovery Dispute Joint Report #6 – Prior Art
Google served three interrogatories asking for information relating to the prior art identified

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by Google in its Invalidity Contentions, essentially seeking PersonalWeb’s “validity contentions.”

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Google maintains that it served two sets of “non-infringement contentions” consisting of 72 pages

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of claim charts on a limitation-by-limitation basis in response to similar interrogatories from

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PersonalWeb. However, PersonalWeb has failed to produce reciprocal contentions, instead merely

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referencing a couple deposition transcripts, the licenses to the patents-in-suit, and the inter partes

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review proceedings.

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PersonalWeb’s primary objection is that ordering a supplemental response is premature

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because Google has not yet produced its expert reports. However, at this point, Google has now

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produced its expert reports. Accordingly, PersonalWeb shall now respond to the interrogatories

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with its “validity” contentions.

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F. Discovery Dispute Joint Report #7 – Claim Chart
Google served an interrogatory asking for a limitation-by-limitation claim chart for

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PersonalWeb’s product StudyPods, which PersonalWeb contends practices the patents-in-suit.

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However, Google maintains that PersonalWeb failed to provide a substantive response to the

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interrogatory and failed to provide sufficient discovery on this issue during depositions as well. It is

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Google’s position that if PersonalWeb wants to rely on its StudyPods product as practicing the

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patents-in-suit, then it must provide contentions in discovery as to how it does so.

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PersonalWeb counters that it need not produce a limitation-by-limitation claim chart for

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StudyPods because it is not using its own product in support of its infringement allegations against

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Google. “Patent Local Rule 3-1 permits a party to asserting infringement to rely on its own

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instrumentality to prove that the accused product practices the claimed invention, so long as that

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party identifies separately for each asserted claim any such instrumentality that incorporates or

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reflects that particular item.” Adobe Sys. Inc. v. Wowza Media Sys., No 11-cv-02243-JST, 2014 WL

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709865, at *3 (N.D. Cal. Feb. 23, 2014) (emphasis added by PersonalWeb). Thus, because it is not

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relying on StudyPods to prove Google’s infringement, PersonalWeb maintains that it need not

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provide claim charts.

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However, the text of Patent L.R. 3-1 is not as limiting as PersonalWeb suggests. Rule 3-1(g)

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provides that a party claiming patent infringement must produce a claim chart if the party wishes “to

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rely, for any purpose, on the assertion that its own . . . instrumentality practices the claimed

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invention.” Moreover, the fact that discovery is not explicitly required by the local rules does not

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mean that a party is excused from responding to a discovery request. Regardless, PersonalWeb

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further argues that, contrary to Google’s representation, it has already provided sufficient discovery

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on this issue during depositions, as evidenced by the three pages of deposition transcripts

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PersonalWeb quotes in its portion of the DDJR, and it produced the StudyPods source code.

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However, the Court is not convinced that this is an adequate substitute, and PersonalWeb shall

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provide a full substantive response to Google’s interrogatory.
CONCLUSION

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The parties shall produce the aforementioned discovery within fourteen (14) days from the
date of this order.
IT IS SO ORDERED.
Dated: August 19, 2014
HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE

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C13-01317 EJD (HRL) Notice will be electronically mailed to:

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Adam Hockensmith

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Allen Franklin Gardner

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Ashley Lauren McMillian

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Ashley Lauren Denton McMillian

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Davida P Brook

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Daymon Jeffrey Rambin

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Elizabeth DeRieux

[e-mail]

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Joseph S. Grinstein

[e-mail], [e-mail]

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

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

For the Northern District of California

United States District Court

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Justin Adatto Nelson

[e-mail]

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Kalpana Srinivasan

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Marc M. Seltzer

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Matthew M. Wolf

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Max Lalon Tribble , Jr

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Michael A. Berta [e-mail], [e-mail],
[e-mail]

[e-mail], [e-mail]

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

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Michael Anthony Berta

[e-mail]

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Michael E Jones

[e-mail]

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Nicholas Lee

[e-mail]

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Nicholas H Lee [e-mail], [e-mail],
[e-mail], [e-mail], [e-mail]
Ryan J. Casamiquela [e-mail], [e-mail],
[e-mail]

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Sandeep Seth

[e-mail]

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Sara Patricia Zogg

[e-mail]

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Sidney Calvin Capshaw , III

[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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