WhitServe LLC v. Computer Packages, Inc et al

Filing 670

ORDER granting in part and denying in part 579 motion to compel. Signed by Judge Alfred V. Covello on November 22, 2013. (Meskill, J)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF CONNECTICUT
WhitServe LLC
Plaintiff
v.
Computer Packasges, Inc
Defendants

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Civil No: 3:06CV1935(AVC)

Ruling on the Plaintiff, WhitServe’s Motion to Compel
This is an action for damages and equitable relief involving
patent infringement, in which the plaintiff, WhitServe, LLC
(hereinafter “WhitServe”), filed suit against the defendant,
Computer Packages, Inc. (hereinafter “CPi”), pursuant to

the patent

laws of the United States, and in particular, 35 U.S.C. § 271 et seq.
After the conclusion of a 6-day trial, in which a jury found willful
infringement, the court of appeals for the federal circuit vacated
the jury‟s damages award and remanded the case for a new trial on
damages.
Whitserve has filed the within motion to compel responses to
interrogatories and production of documents. CPi objects to further
responses to interrogatories and requests for production. For the
reasons that follow, WhitServe‟s motion to compel is GRANTED in part
and DENIED in part.

FACTS
On August 8, 2013, this court issued a scheduling order with
respect to the remanded trial on damages, which closed fact discovery
on September 6, 2013.
On May 20, 2013, WhitServe served on CPi a number of
interrogatories and requests for production. Among these were 1)
interrogatory numbers 18-19, seeking information on the “revenues
CPi has received for its intellectual property management systems”;
2) document request numbers 152-165, regarding CPi's “revenues and
calculation of profits”; and 3) a number of categories of documents
relating to CPi's “postverdict activities.”
STANDARD OF REVIEW
“[P]arties may obtain discovery regarding any nonprivileged
matter that is relevant to any party‟s claim or defense . . . .” Fed.
R. Civ. P. 26(b)(1).

Furthermore, “relevant information need not

be admissible at the trial if the discovery appears reasonably
calculated to lead to the discovery of admissible evidence.” Id.
“The definition of relevance [is] to be liberally construed . . .
.” Breon v. Coca-Cola Bottling Co., 232 F.R.D. 49, 52 (D. Conn. 2005).
Moreover, the district court has “wide latitude to determine the
scope of discovery . . . .” In Re Agent Orange Product Liability
Litigation, 517 F.3d 76, 103 (2d Cir. 2008).

“The objecting party

bears the burden of demonstrating specifically how, despite the broad
and liberal construction afforded [by] the federal discovery rules,

each request is not relevant or how each question is overly broad,
unduly burdensome or oppressive . . . .” Klein v. AIG Trading Group
Inc., 228 F.R.D. 418, 422 (D. Conn. 2005) (internal citations and
quotation marks omitted).
DISCUSSION
I. Interrogatory Nos. 18 and 19
Whitserve argues that the “requested information will assist
[it] in making a more accurate calculation of damages resulting from
CPi's infringement.” Specifically, WhitServe argues the requested
information “will require [CPi] to justify which transactions it
attributes to the products found to infringe and, as a result, justify
which transactions it is not attributing to the products found to
infringe (e.g., any other CPi products).” Whitserve argues that
“CPi's response to Interrogatory No. 19 will require CPi to identify
all of the fees „CPi charged customers for the Desktop EARS, TERMS,
CPi Online, Hosted EARS, and Hosted PMS products.‟" WhitServe states
that “CPi has only produced information relating to transactions that
CPi has determined are infringing, and WhitServe has no ability to
validate it because CPi won't produce the underlying records.”
Explicitly, the interrogatories provide as follows:
INTERROGATORY NO. 18: For each year since 2002, provide subtotals
for the total annuity payments and service fee revenues, broken down
by the CPi system used to manage each patent for which an annuity
payment was made, in the spreadsheet attached as Exhibit A, and
identify by Bates-number CPi's customary business records that
support these subtotals.

INTERROGATORY NO. 19: For each year since 2002, provide subtotals
for contract fees (e.g., fees charged for use of software),
modification fees (e.g., fees charged for modifying software),
annual fees (e.g., fees charged for ongoing maintenance of software),
and any other fees, other than patent annuity service fees, CPi
charged customers for the Desktop EARS, TERMS, CPi Online, Hosted
EARS, and Hosted PMS products, in the spreadsheet attached as Exhibit
A, and identify by Bates-number CPi' s customary business records
that support these subtotals.
CPi responds that it “has already produced such information for
the infringing products, and such information for non-infringing
products is not relevant to a calculation of damages.” Specifically,
CPi argues it “has produced all summary financial information from
2002 to 2013 Q2 for the infringing products, as well as its customary
business records that back up this summary financial information on
a year-to-year, customer-by-customer, and
transaction-by-transaction basis.” Additionally, Whitserve argues
that “damages relating to non-infringing products is outside the
scope of remand” and that it “did not underreport autopay
transactions or revenues.”
The court concludes that the information is relevant and,
therefore, the motion to compel, with respect to interrogatory
numbers 18 and 19, is GRANTED.
II. Request for Production Nos. 153, 154 and 162 through 164
WhitServe states that “CPi's agreements with its customers
specify what its customers are charged for patent annuity payments
as well as other fees . . . CPi's ownership provides insight into

CPi's accounting practices and profitability.” Specifically,
WhitServe argues “these categories of documents are directly
relevant to CPi's infringing revenues and profitability.”
Explicitly, the requests for production provide as follows:
DOCUMENT REQUEST NO. 153: All agreements between CPi and its
customers regarding Desktop EARS that have been in effect at any time
since 2010, including any annuity service agreements for that
customer.
DOCUMENT REQUEST NO. 154: All agreements between CPi and its
customers regarding Hosted EARS that have been in effect at any time
since 2010, including any annuity service agreements for that
customer.
DOCUMENT REQUEST NO. 162: Documents concerning the income listed in
CPi's income statements for Contract Systems & Modifications from
2002 to present (including, but not limited to, the income listed
in categories 410 and 411 in CPIOO 10826, CPI0009211, and CPI0011380,
and categories 41000 and 41100 in CPI0016235, CPI0016248,
CPI0293827, CPI0293831, CPI0293846, CPI0294369, CPI0294383, and
CPI0294399), including any agreements, invoices, and other documents
sufficient to identify the associated CPi system.
DOCUMENT REQUEST NO. 163: Documents concerning the income listed in
CPi's income statements for Additional Modifications from 2002 to
present (including, but not limited to, the income listed in
categories 420 and 421 in CPI0010826, CPI0009211, and CPI0011380,
and categories 42000 and 42100 in CPI0016235, CPI0016248,
CPI0293827, CPI0293831, CPI0293846, CPI0294369, CPI0294383, and
CPI0294399), including any agreements, invoices, and other documents
sufficient to identify the associated CPi system.
DOCUMENT REQUEST NO. 164: Documents concerning the income listed in
CPi's income statements for Maintenance Contracts from 2002 to
present (including, but not limited to, the income listed in
categories 440 and 441 in CPIOO 10826, CPI0009211, and CPI0011380,
and categories 44000 and 44100 in CPI0016235, CPI0016248,
CPI0293827, CPI0293831, CPI0293846, CPI0294369, CPI0294383, and
CPI0294399), including any agreements, invoices, and other documents
sufficient to identify the associated CPi system.

CPi responds that it either “produced all responsive documents
it could locate after a reasonable search, or objects to some requests
because the documents sought are not reasonably calculated to lead
to the discovery of admissible evidence.” Specifically, with regards
to requests for production numbers 153 and 154, CPi states that it
“has produced all the agreements regarding Desktop and Hosted EARS
that it could locate after a reasonable search.” With respect to
requests for production numbers 162-164 CPi states that it “has
produced all responsive documents it could locate after a reasonable
search, including the summary financial data documents which set
forth the licensing, maintenance and annual fee revenues. As to
non-infringing products, CPi objects to these requests, because the
documents being sought are not reasonably calculated to lead to the
discovery of admissible evidence on remand.”
The court concludes that the motion to compel, with respect to
request for production numbers 153 and 154, are DENIED; the court
cannot compel the defendant to produce information it does not have.
In regards to the request for production numbers 162-164, insofar
as they request locatable information, the court concludes that the
information is relevant to the issue of damages and the motion to
compel is GRANTED.
III. Request for Production Nos. 152, 155, 156, and 158

WhitServe argues “[d]ocuments responsive to these requests
evidence WhitServe's claim that CPi has attributed great value to
the patented technology.” Specifically, Whitserve argues that “CPi's
offers to indemnify its customers for post-verdict willful
infringement and its ongoing attempts to invalidate the patents by
cooperating with other infringers support the contention that CPi
considers the technology essential to its business.” Explicitly, the
requests for production provide as follows:
DOCUMENT REQUEST NO. 152: All communications between CPi and its
customers after March 31,2010 regarding use of the CPi Products,
including any proposals or agreements to indemnify customers.
DOCUMENT REQUEST NO. 155: All documents and things concerning
cooperation between CPi and any third party to defend or assert a
claim against WhitServe, including but not limited to any
communications with and any documents provided by the third party.
DOCUMENT REQUEST NO. 156: All documents and things concerning
cooperation between CPi and GoDaddy.com, Inc. (or its affiliates)
to defend or assert a claim against WhitServe, including but not
limited to any communications with and any documents provided
GoDaddy.com,Inc.
DOCUMENT REQUEST NO. 158: All communications between CPi and its
customers after March 31, 2010 regarding this action, the
patents-in-suit, WhitServe, or NetDocket.
CPi again responds that it either “produced all responsive
documents it could locate after a reasonable search, or objects to
some requests because the documents sought are not reasonably
calculated to lead to the discovery of admissible evidence.”
Specifically, in regards to request for production no. 152, CPi
argues “[t]he requested documents are not even tangentially related

to the calculation of damages, the only issue on remand, and in any
event the amount of „use‟ of the infringing products is reflected
in toto by the service fee revenue and licensing fee revenue that
CPi has already produced.” Concerning requests for production
numbers 155 and 156, CPi argues “the documents being sought are not
reasonably calculated to lead to the discovery of admissible evidence
on remand — they clearly have nothing to do with the calculation of
damages.” CPi argues it “is not involved with anyone else in any
ongoing attempts to invalidate the patents, and Mr. Van Winter has
had no such communications with third parties.” With respect to
request for production number 158, CPi states it “has produced all
responsive documents it could locate after a reasonable search.”
The court concludes that the motion to compel, with respect to
request for production number 158, is DENIED; the court cannot compel
the defendant to produce information it does not have. In regards
to the requests for production numbers 152, 155, and 156, the court
concludes that the information is not relevant to the issue of damages
and, therefore, the motion to compel is DENIED.

CONCLUSION
For the foregoing reasons, the plaintiff‟s motion to compel
(document no. 579) is GRANTED in part and DENIED in part.
It is so ordered this 22nd day of November, 2013 at Hartford,
Connecticut.

_______/s/__________________
Alfred V. Covello
United States District Judge