HVAC Technology LLC v. Southland Industries

Filing 39

ORDER RE: DISCOVERY DISPUTES by Magistrate Judge Paul Singh Grewal re 34 , 35 . (psglc1S, COURT STAFF) (Filed on 4/8/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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HVAC TECHNOLOGY LLC,
Plaintiff,

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ORDER RE: DISCOVERY DISPUTES

v.

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(Re: Docket Nos. 34, 35)

SOUTHLAND INDUSTRIES,
Defendant.

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United States District Court
Northern District of California

Case No. 5:15-cv-02934-PSG

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The parties ask the court to resolve two distinct discovery disputes in this patent
infringement case.1

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The first dispute is about Plaintiff HVAC Technology LLC’s obligation to produce

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documents.2 HVAC Technology “was formed in 2015 to serve as a legal vehicle to assert the

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patents and intellectual property of an individual, John Karamanos, against infringers.”3 This LLC

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was assigned the patents-in-suit by HVAC Technology, Inc., which in turn was assigned the

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patents by Karamanos, the named inventor.4 For his part, Karamanos had a right to sub-licenses to

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HVAC Manufacturing, Inc., whose President is none other than Karamanos and whose CEO and

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CFO is Karamanos’ wife Stella.5 Defendant Southland Industries argues that, by virtue of these

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See Docket Nos. 34, 35.

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See Docket No. 34.

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Docket No. 1 at ¶ 3.

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See Docket No. 34 at 3.

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See id.

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Case No. 5:15-cv-02934-PSG
ORDER RE: DISCOVERY DISPUTES

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assignments, HVAC Technology is obligated to produce not only its own documents responsive to

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Southland’s requests, but also any responsive documents in the “possession, custody or control” of

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HVAC Manufacturing, Inc. and Karamanos personally.6 HVAC Technology disagrees.7
In the Ninth Circuit, trial courts applying Fed. R. Civ. P. 34 follow the “legal right”

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standard: “[c]ontrol must be firmly placed in reality, and the court examines whether there is

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actual, not theoretical, control. Decisions within the Ninth Circuit have noted the importance of a

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legal right to access documents created by statute, affiliation or employment.”8 While no

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published decision located by the court or presented by the parties speaks directly to this issue, the

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court cannot figure how a threadbare patent assignment meets the Ninth Circuit’s legal right
requirement. In particular, Southland has not identified anything in the language or context of the

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United States District Court
Northern District of California

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patent assignment here that further assigns to Plaintiff the legal right to any of the other entities’

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documents. In the absence of any such legal right on the part of Plaintiff, Southland must pursue

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the documents at issue directly from HVAC Manufacturing, Inc. and Karamanos themselves.
The second dispute is about whether a party may issue multiple notices for 30(b)(6)

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depositions of the same corporation.9 HVAC Technology says yes; Southland says no.10 To be

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clear, HVAC Technology has noticed a list of topics for one 30(b)(6) deposition.11 It intends to

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notice more 30(b)(6) depositions on additional topics, and wants Southland to agree these

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depositions now.12 At this point, Southland’s position is that it will “consider the scope of

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See id. at 4; Fed. R. Civ. P. 34.

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See id. at 4-5.

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Verigy US, Inc. v. Mayder, Case No. 08-04330 RMW (HRL), 2008 WL 4786621, at *1 (N.D.
Cal. Oct. 30, 2008).
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See Docket No. 35.

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See id. at 2-5.

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See id. at 5.

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See id.

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Case No. 5:15-cv-02934-PSG
ORDER RE: DISCOVERY DISPUTES

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HVAC’s request for a second deposition if/when it makes that request.”13
Fed. R. Civ. P. 30(a)(2)(A)(i) sets the number of depositions that may be taken without

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leave of the court or the parties’ stipulation at ten. Nothing in the Federal Rules or in any cases

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located by the court or presented by the parties bars a party from using all ten depositions on

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30(b)(6) witnesses. However, Fed. R. Civ. P. 30(d)(1) is clear that a deposition is “limited to 1

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day of 7 hours.” Heeding those rules, a party may notice multiple 30(b)(6) depositions, but each

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notice must cover separate topics and the deposing party gets only one, seven-hour day of

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deposition per notice. That is, a party may notice multiple 30(b)(6) depositions on non-

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overlapping topics, but it may not notice multiple 30(b)(6) depositions with overlapping topics.
SO ORDERED.

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United States District Court
Northern District of California

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Dated: April 8, 2016
_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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Id.
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Case No. 5:15-cv-02934-PSG
ORDER RE: DISCOVERY DISPUTES