AMERICAN SOCIETY FOR TESTING AND MATERIALS et al v. PUBLIC.RESOURCE.ORG, INC.

Filing 91

Memorandum in opposition to re #86 Emergency MOTION for Order and Request for Expedited Briefing Schedule filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 [Public] Declaration of Andrew P. Bridges In Support of Public.Resource.Org, Inc.'s Opposition to Plaintiffs' Emergency Motion for Protective Order and Request for Expedited Briefing Schedule, #2 Exhibit 1 to Bridges Declaration, #3 Exhibit 2 to Bridges Declaration, #4 Exhibit 3 to Bridges Declaration, #5 Exhibit 4 to Bridges Declaration, #6 Exhibit 5 to Bridges Declaration, #7 Exhibit 6 to Bridges Declaration, #8 Exhibit 7 to Bridges Declaration, #9 Exhibit 8 to Bridges Declaration, #10 Exhibit 9 to Bridges Declaration, #11 Exhibit 10 to Bridges Declaration, #12 Exhibit 11 to Bridges Declaration, #13 Exhibit 12 to Bridges Declaration, #14 Exhibit 13 to Bridges Declaration, #15 Exhibit 14 to Bridges Declaration, #16 Exhibit 15 to Bridges Declaration, #17 Exhibit 16 to Bridges Declaration, #18 Text of Proposed Order Denying Plaintiffs' Emergency Motion for Protective Order and Request for Expedited Briefing Schedule)(Bridges, Andrew)

EXHIBIT 4

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a/ ASTM INTERNATIONAL;

Case No. 1:13-cv-01215-EGS

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and

PLAINTIFF-COUNTERDEFENDANT
THE AMERICAN SOCIETY OF
HEATING, REFRIGERATING, AND
AIR- CONDITIONING ENGINEERS,
INC.’S OBJECTIONS AND
RESPONSES TO DEFENDANTCOUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S
FIRST SET OF REQUESTS FOR
PRODUCTION OF DOCUMENTS
(NOS. ASHRAE-1 THROUGH
ASHRAE-18)

AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING
ENGINEERS, INC.
Plaintiffs,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant.

Filed: August 6, 2013
PUBLIC.RESOURCE.ORG, INC.,
Counterclaimant,
v.
AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a/ ASTM INTERNATIONAL;
NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING
ENGINEERS, INC.
Counterdefendants.

DMSLIBRARY01:22486160.2

RESPONDING PARTIES:

Plaintiff-Counterdefendant American Society of Heating,
Refrigerating, and Air-Conditioning Engineers, Inc.

PROPOUNDING PARTY:

Defendant-Counterclaimant Public.Resource.Org, Inc.

SET NUMBER:

One (Nos. ASHRAE -1 through ASHRAE-18)

Plaintiff-Counterdefendant American Society of Heating, Refrigerating, and AirConditioning Engineers, Inc. (“ASHRAE”) responds to Defendant-Counterclaimant
Public.Resource.Org, Inc.’s First Set of Requests For Production of Documents as follows:
PRELIMINARY STATEMENT AND GENERAL OBJECTIONS
ASHRAE responds generally that discovery has just begun and that its investigation of
facts relevant to this litigation is ongoing. The following responses are made to the best of
ASHRAE’s present knowledge, information, and belief. ASHRAE reserves the right to
supplement, amend, or correct these responses. ASHRAE incorporates by reference in each
Specific Response and Objection, each and every General Response and Objection set forth below.
A Specific Response may repeat a General Response or Objection for emphasis or for some other
reason. However, the omission of any General Objection in any Specific Response is neither
intended to, nor should it be construed as, a waiver of any General Objection.
1.

ASHRAE objects to the Requests to the extent they seek to impose obligations that

exceed the scope of permissible discovery under the Federal Rules of Civil Procedure, the Local
Rules, and/or any applicable case law, court orders, or decrees governing the proper scope, timing,
and extent of discovery in this proceeding. ASHRAE will respond to each Request as required
under Rule 34 of the Federal Rules of Civil Procedure.
2.

ASHRAE objects to the Requests to the extent that (a) they are not reasonably

calculated to lead to the discovery of admissible evidence; (b) they are unreasonably cumulative or
duplicative; (c) they seek information that is obtainable from some other source that is more
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convenient, less burdensome, or less expensive; or (d) the burden or expense of the proposed
discovery outweighs any likely benefit.
3.

ASHRAE objects to the Requests that seek identification or production of emails or

other electronic communications or electronically stored information to the extent that such
requests are vague, ambiguous, overly broad, and unduly burdensome. To the extent that any
Request requires the identification or production of email currently in electronic form, or any other
electronic communications or electronically stored information, ASHRAE will search readily
accessible email or other electronic media in relation to individuals or other sources likely to have
responsive documents. ASHRAE will not search emails that are inaccessible or overly burdensome
to restore and search (e.g., disaster recovery tapes), or other inaccessible or burdensome
electronically stored information. In addition to collecting specific documents called for by the
Requests, ASHRAE will meet and confer with Defendant regarding a mutually agreeable set of
search terms to run against the electronic files of the custodians reasonably expected to be in
possession of responsive documents to cull potentially responsive electronic communications.
4.

ASHRAE objects to the Requests to the extent they seek information, documents,

and/or things protected from discovery by the attorney-client privilege, the work-product doctrine,
the common-interest privilege, court order, and/or any other applicable privilege, immunity, or
protection. The inadvertent disclosure of any documents subject to such privilege or protection is
not intended to relinquish any privilege or protection and shall not be deemed to be a waiver of any
applicable privilege or protection, and Defendant shall, upon the request of ASHRAE, immediately
return or destroy any such documents inadvertently produced. Further, upon Defendant’s discovery
of what it thinks may be a privileged document produced by ASHRAE, Defendant should
immediately inform ASHRAE in writing. ASHRAE further objects to creating a log for privileged
or protected communications made between ASHRAE and outside counsel concerning this
3

litigation on grounds that doing so would be unduly burdensome and not reasonably calculated to
lead to the discovery of admissible evidence.
5.

ASHRAE objects to each and every Request, definition, and instruction to the

extent that it calls for a legal conclusion. Any response by ASHRAE shall not be construed as
providing a legal conclusion regarding the meaning or application of any terms or phrases used in
Defendant’s Requests, definitions, or instructions.
6.

ASHRAE objects to the Requests to the extent they contain characterizations,

definitions, or assumptions. Nothing contained in or absent from ASHRAE’s responses,
objections, or production shall constitute, or be deemed as, an admission, concession, or agreement
that Defendant’s characterizations, definitions, or assumptions are correct or accurate. ASHRAE
objects to the Requests to the extent they seek documents or information not within the possession,
custody, or control of ASHRAE, that are as readily available to Defendant as to ASHRAE, or that
are otherwise in the possession of Defendant, on the grounds that such requests are unduly
burdensome. To the extent any documents are currently publicly available to Defendant at no cost
on the ASHRAE website, ASHRAE expressly reserves the right to request cost-shifting, consistent
with Section 14.A of the parties’ Joint Meet-And-Confer Report filed on December 30, 2013 [ECF
No. 29], prior to incurring any cost associated with producing such documents.
7.

ASHRAE objects to Defendant’s instruction that all responsive documents be

produced within thirty (30) days from the date of service of Defendant’s Requests. To the extent
that ASHRAE has agreed to produce documents, it will do so on a rolling basis.
8.

The production of any document does not constitute an admission that such

document was in ASHRAE’s possession, custody, or control at any particular point in time other
than on the date of production.

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9.

ASHRAE objects to the Requests to the extent they call for the production of

documents or information that are confidential, proprietary, trade secrets, or are otherwise subject
to a confidentiality agreement, protective order or other court order entered in another action or
proceeding, which prevent disclosure herein. ASHRAE’s willingness to provide any such
document or information of ASHRAE’s or a third party’s in response to a Request is subject to the
entry of an appropriate protective order in this case.
10.

ASHRAE objects to the Requests to the extent they purport to require ASHRAE to

compile information in a manner that is not maintained in the ordinary course of business, or to
create documents, including but not limited to charts, tables, reviews, proposals, methodologies,
and/or breakdowns, etc., that do not already exist. ASHRAE will construe the Requests to exclude
any such documents.
11.

ASHRAE objects to the Requests to the extent they require disclosure or production

of information in a manner or form inconsistent with or exceeding the scope of the minimum
disclosure and production requirements of Federal Rules of Civil Procedure and the Local Rules.
12.

ASHRAE objects to the Requests to the extent that they lack any reasonable time

limitation. Except where otherwise expressly stated, any agreement by ASHRAE to produce
documents is made subject to confining its production to a reasonable time limitation relevant to
this case.
13.

ASHRAE objects to the Requests to the extent that they seek documents related to

standards other than those identified in Exhibit C to the Complaint.
14.

ASHRAE objects to the Requests to the extent that they call for the production of

“all” documents concerning a subject matter on the ground that such Requests are overly broad,
unduly burdensome, duplicative, and seek production of irrelevant documents. To the extent that

5

ASHRAE produces documents in response to such requests, they will be limited to documents
sufficient to show matters that are appropriately discoverable.
15.

ASHRAE objects to Defendant’s definition of the terms “Work-At-Issue” and

“Works-At-Issue” as vague and ambiguous insofar as ASHRAE is without sufficient knowledge or
information to identify all of ASHRAE’s copyrighted works that Defendant has infringed.
ASHRAE further object to these terms as overly broad and unduly burdensome insofar as they
include standards that are not at issue in this case. In responding to these Requests, ASHRAE will
interpret the terms “Work-At-Issue” and “Works-At-Issue” to mean only those standards identified
in Exhibit C to the Complaint.
16.

ASHRAE objects to Defendant’s definition of the terms “You”, “Your”, or

“ASHRAE” as overbroad, unduly burdensome, vague, ambiguous, and not reasonably calculated
to lead to the discovery of admissible evidence to the extent that they include entities or
individuals beyond ASHRAE and its officers and employees.
17.

ASHRAE objects to Defendant’s definition of the term “Legal Authority” as vague,

ambiguous, overbroad, and not reasonably calculated to lead to the discovery of admissible
evidence. In responding to these Requests, ASHRAE will interpret the term “Legal Authority” to
mean laws, statutes, or regulations within a jurisdiction of the United States.
18.

ASHRAE objects to Defendant’s definition of the term “Standards Process” as

vague, ambiguous, overbroad, unduly burdensome, and not reasonably calculated to lead to the
discovery of admissible evidence. In responding to these Requests, ASHRAE will interpret the
term “Standards Process” to mean the process of developing an ASHRAE standard through final
issuance to the public, and specifically not to include subsequent transmission, publication,
distribution, display, or dissemination of that standard.

6

19.

ASHRAE objects to Defendant’s definition of the term “Contribution” as vague,

ambiguous, overbroad, unduly burdensome, and not reasonably calculated to lead to the discovery
of admissible evidence.
20.

ASHRAE objects to all Requests to the extent they are duplicative and cumulative

of Defendant’s other discovery requests.
21.

ASHRAE’s undertaking to produce documents responsive to the Requests, or its

failure to object to a Request, is subject to a general proviso that ASHRAE only agrees to produce
documents to the extent that such documents exist and can be located with reasonable diligence.
22.

ASHRAE’s willingness to provide any document or information in response to a

Request shall not be interpreted as an admission that such document or information is either
relevant or admissible for any purpose, and ASHRAE does not waive its right to object to the
admissibility or relevance of any document produced by any party on any ground.
Subject to, and without waiving the above stated objections, ASHRAE responds as
follows:

RESPONSES TO REQUESTS
REQUEST FOR PRODUCTION NO. 1:
Documents sufficient to identify each Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 1:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks documents
related to standards beyond those identified in Exhibit C to the Complaint [ECF No. 1-3].
ASHRAE further objects that the term “identify” is vague and ambiguous.
7

Subject to and without waiving its objections, ASHRAE agrees to produce copies of the
copyrighted works that are listed in Exhibit C to the Complaint.
REQUEST FOR PRODUCTION NO. 2:
Documents sufficient to establish Complete Chain of Title for each Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 2:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks documents
related to standards beyond those identified in Exhibit C to the Complaint. ASHRAE further
objects to the term “Complete Chain of Title” as vague, ambiguous, overbroad, and unduly
burdensome, and particularly to the extent that it purports to require ASHRAE to account for any
“intermediate transfers.” ASHRAE further objects that the term “establish” as vague and
ambiguous. ASHRAE further objects to the lack of limitation on the time period of this Request,
and will confine its production of documents, if any, to a reasonable time limitation relevant to this
case.
Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged
documents, if any, that are located after a reasonably diligent search in the following categories:
the copyright registration certificates for Standard 90.1-2004; Standard 90.1-2007; and Standard
90.1-2010; the form copyright release agreement entered into by Standard 90.1 Project Committee
members for Standard 90.1-2010; the form agreement entered into by individuals who submitted
change proposals and who submitted public comments in response to proposed revisions to and/or
public drafts of Standard 90.1 in the 2010 revision cycle; and the standards development agreement
entered into by ASHRAE and the Illuminating Engineering Society (IES).

8

REQUEST FOR PRODUCTION NO. 3:
Documents sufficient to identify all Persons who participated in the Standards Process of
each Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 3:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE objects to this Request as overbroad, unduly burdensome, and not reasonably calculated
to lead to the discovery of admissible evidence to the extent that it seeks documents related to
standards beyond those identified in Exhibit C to the Complaint. ASHRAE further objects to the
term “Standards Process” as vague, ambiguous, overbroad, unduly burdensome, and not
reasonably calculated to lead to the discovery of admissible evidence, and ASHRAE will interpret
the term “Standards Process” to mean the process of developing an ASHRAE standard through
final issuance to the public, and specifically not to include subsequent transmission, publication,
distribution, display, or dissemination of that standard. ASHRAE objects that the term
“participated” is vague and ambiguous, and will interpret that term based on its ordinary meaning.
ASHRAE further objects to the lack of limitation on the time period of this Request, and will
confine its production of documents, if any, to a reasonable time limitation relevant to this case.
Subject to and without waiving its objections, ASHRAE refers Defendant to its response to
Defendant’s Interrogatory No. 3, and further agrees to produce non-privileged documents, if any,
that are located after a reasonably diligent search in the following categories: the membership
roster for the Standard 90.1-2010 Project Committee; meeting minutes of the Standard 90.1 Project
Committee for the 2010 revision cycle; a list of change proposals submitted to the Standard 90.1
Project Committee for the 2010 revision cycle; and a list of the public comments received in
response to proposed revisions to and/or public drafts of Standard 90.1 in the 2010 revision cycle.

9

REQUEST FOR PRODUCTION NO. 4:
Documents sufficient to identify all Contributions in support of the Standards Process of
each Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 4:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to the development of ASHRAE standards. ASHRAE further objects to the
extent that this Request seeks documents related to standards beyond those identified in Exhibit C
to the Complaint. ASHRAE further objects that the terms “identify”, “Contributions”, “in support
of”, and “Standards Process” are vague, ambiguous, overbroad, and unduly burdensome.
ASHRAE will interpret the term “Standard Process” to mean the process of developing an
ASHRAE standard through final issuance to the public, and specifically not to include subsequent
transmission, publication, distribution, display, or dissemination of that standard. ASHRAE
further objects to the lack of limitation on the time period of this Request, and will confine its
production of documents, if any, to a reasonable time limitation relevant to this case.
Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged
documents, if any, that are located after a reasonably diligent search in the following categories:
the membership roster for the Standard 90.1-2010 Project Committee; meeting minutes of the
Standard 90.1 Project Committee for the 2010 revision cycle; a list of the change proposals
submitted to the Standard 90.1 Project Committee for the 2010 revision cycle; and a list of the
public comments received in response to proposed revisions to and/or public drafts of Standard
90.1 in the 2010 revision cycle.

10

REQUEST FOR PRODUCTION NO. 5:
Documents sufficient to identify every Legal Authority that incorporates each Work-AtIssue, either expressly or by reference.
RESPONSE TO REQUEST FOR PRODUCTION NO. 5:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it would require
ASHRAE to reach a legal conclusion concerning which jurisdictions have incorporated its
standards. ASHRAE further objects to this Request to the extent it seeks documents that are not in
ASHRAE’s possession, custody, or control or documents that are publicly available to Defendant
or that are otherwise in Defendant’s possession, as evidenced by postings on Defendant’s website
purporting to identify jurisdictions that have incorporated specified standards by reference.
ASHRAE further objects that the term “incorporates” is vague and ambiguous. In light of
ASHRAE’s objections, no response is warranted at this time.
REQUEST FOR PRODUCTION NO. 6:
All documents constituting, comprising, referring to, or evidencing agreements between
You and any Person who participated in the Standards Process of each Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 6:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to any agreement of any kind made during the development, creation, drafting,
revision, editing, transmission, publication, distribution, display, or dissemination of ASHRAE
standards. ASHRAE further objects to the extent that this Request seeks documents related to
11

standards beyond those identified in Exhibit C to the Complaint. ASHRAE further objects that the
terms “agreements” and “participated” are vague and ambiguous and render the Request overbroad
and unduly burdensome. ASHRAE further objects to the term “Standards Process” as overbroad
and unduly burdensome and will interpret that term to mean the process of developing an
ASHRAE standard through final issuance to the public, and specifically not to include subsequent
transmission, publication, distribution, display, or dissemination of that standard. ASHRAE
further objects to the lack of limitation on the time period of this Request, and will confine its
production of documents, if any, to a reasonable time limitation relevant to this case.
Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged
documents, if any, that are located after a reasonably diligent search in the following categories:
the form copyright release agreement entered into by Standard 90.1 Project Committee members
for Standard 90.1-2010; the form agreement entered into by individuals who submitted change
proposals and who submitted public comments in response to proposed revisions to and/or public
drafts of Standard 90.1 in the 2010 revision cycle; and the standards development agreement
entered into by ASHRAE and the Illuminating Engineering Society (IES).
REQUEST FOR PRODUCTION NO. 7:
All documents constituting, comprising, or concerning communications with any
government employee, official, or entity regarding incorporation (whether actual, proposed,
desired, or considered) of any Standard in which You claim rights into any Legal Authority.
RESPONSE TO REQUEST FOR PRODUCTION NO. 7:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to ASHRAE’s advocacy efforts for the incorporation of its standards by
12

reference. ASHRAE further objects to the extent that this Request seeks documents related to
standards beyond those identified in Exhibit C to the Complaint. ASHRAE further objects that the
terms “communication” and “incorporation” are vague and ambiguous and render the Request
overbroad and unduly burdensome. ASHRAE further objects to the lack of limitation on the time
period of this Request, and will confine its production of documents, if any, to a reasonable time
limitation relevant to this case.
Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged,
documents, if any, constituting official written correspondence by ASHRAE to government entities
or officials requesting consideration for the incorporation of ASHRAE Standard 90.1-2010 and
that are located after a reasonably diligent search.
REQUEST FOR PRODUCTION NO. 8:
All documents regarding Carl Malamud.
RESPONSE TO REQUEST FOR PRODUCTION NO. 8:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as seeking documents that are not relevant to the claims
and defenses asserted in this case and not reasonably calculated to lead to the discovery of
admissible evidence. ASHRAE further objects to this Request to the extent that it seeks documents
protected by the attorney-client privilege, the work-product doctrine, and/or any other applicable
privilege, immunity, or protection. ASHRAE further objects to the lack of limitation on the time
period of this Request, and will confine its production of documents, if any, to a reasonable time
limitation relevant to this case.
In response to Plaintiffs’ Request for Production No. 28, seeking documents in Defendant’s
possession relating to any Plaintiff, Defendant conditioned its production of responsive documents
on “Plaintiffs’ agreement that they will produce all documents relating to Public Resource.”
13

ASHRAE does not agree to produce “all documents relating to Public Resource,” “[a]ll documents
regarding Carl Malamud” (Defendant’s RFP No. 8) or “[a]ll documents regarding Public Resource
or its representatives . . ., including its legal representatives” (Defendant’s RFP No. 9). These
requests of Defendant are overly broad and unduly burdensome, including because they are not
limited to the claims and defenses at issue in this case. In light of its conditional response to
Plaintiffs’ Request for Production No. 28, and ASHRAE’s unwillingness to agree to that condition,
Defendant’s current position is that it will not produce any documents responsive to Plaintiffs’
Request for Production No. 28. Accordingly, ASHRAE will take the same position with respect to
Defendant’s Requests for Production Nos. 8 and 9. ASHRAE is willing to meet and confer with
Defendant regarding this issue.
REQUEST FOR PRODUCTION NO. 9:
All documents regarding Public Resource or its representatives (other than Carl Malamud),
including its legal representatives.
RESPONSE TO REQUEST FOR PRODUCTION NO. 9:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as seeking documents that are not relevant to the claims
and defenses asserted in this case and not reasonably calculated to lead to the discovery of
admissible evidence. ASHRAE further objects to this Request to the extent that it seeks documents
protected by the attorney-client privilege, the work-product doctrine, and/or any other applicable
privilege, immunity, or protection. ASHRAE further objects to the phrase “Public Resource or its
representatives” as vague and ambiguous to the extent that such “representatives” are not known to
ASHRAE. ASHRAE further objects to the lack of limitation on the time period of this Request,
and will confine its production of documents, if any, to a reasonable time limitation relevant to this
case.
14

In response to Plaintiffs’ Request for Production No. 28, seeking documents in Defendant’s
possession relating to any Plaintiff, Defendant conditioned its production of responsive documents
on “Plaintiffs’ agreement that they will produce all documents relating to Public Resource.”
ASHRAE does not agree to produce “all documents relating to Public Resource,” “[a]ll documents
regarding Carl Malamud” (Defendant’s RFP No. 8) or “[a]ll documents regarding Public Resource
or its representatives . . ., including its legal representatives” (Defendant’s RFP No. 9). These
requests of Defendant are overly broad and unduly burdensome, including because they are not
limited to the claims and defenses at issue in this case. In light of its conditional response to
Plaintiffs’ Request for Production No. 28, and ASHRAE’s unwillingness to agree to that condition,
Defendant’s current position is that it will not produce any documents responsive to Plaintiffs’
Request for Production No. 28. Accordingly, ASHRAE will take the same position with respect to
Defendant’s Requests for Production Nos. 8 and 9. ASHRAE is willing to meet and confer with
Defendant regarding this issue.
REQUEST FOR PRODUCTION NO. 10:
All documents constituting or concerning communications among Persons who participated
in the Standards Process of each Work-At-Issue, including but not limited to meeting and
conference call minutes and notes.
RESPONSE TO REQUEST FOR PRODUCTION NO. 10:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, oppressive, and not
reasonably calculated to lead to the discovery of admissible evidence to the extent that it seeks
essentially all communications related to the development, creation, drafting, revision, editing,
transmission, publication, distribution, display, or dissemination of ASHRAE standards. ASHRAE
further objects to the extent that this Request seeks documents related to standards beyond those
15

identified in Exhibit C to the Complaint. ASHRAE further objects to this Request to the extent it
seeks documents that are not in ASHRAE’s possession, custody, or control or documents that are
publicly available to Defendant or that are otherwise in Defendant’s possession.
Subject to and without waiving its objections, ASHRAE states that documents responsive
to this Request will be produced in response to Defendant’s Requests for Production Nos. 3 and 4.
REQUEST FOR PRODUCTION NO. 11:
All documents concerning revenue or profit expectations by You or any other Person
regarding the availability, publication, sale, distribution, display, or other dissemination of any
Standard in which You claim rights.
RESPONSE TO REQUEST FOR PRODUCTION NO. 11:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, oppressive, and not
reasonably calculated to lead to the discovery of admissible evidence to the extent that it seeks
ASHRAE’s confidential business and financial information. ASHRAE further objects to this
Request to the extent it seeks documents that are publicly available to Defendant, such as
ASHRAE’s IRS Form 990s, or that are otherwise in Defendant’s possession, as evidenced by
allegations in Defendant’s Answer and Counterclaim. See Def’s Ans. and Counterclaim ¶¶ 95
[ECF No. 21]. ASHRAE further objects that the phrase “revenue or profit expectations” is vague
and ambiguous, particularly when construed in connection with the phrase “regarding the
availability, publication, sale, distribution, display, or other dissemination.” ASHRAE further
objects to the lack of limitation on the time period of this Request, and will confine its production
of documents, if any, to a reasonable time limitation relevant to this case. ASHRAE further
objects to producing documents in response to this Request until the entry of an appropriate
protective order in this case.
16

Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged
documents, if any, related to the standards identified in Exhibit C to the Complaint and that are
located after a reasonably diligent search in the following categories: annual historical revenues
from ASHRAE’s sales of print and PDF versions of Standard 90.1-2010; and documents showing
anticipated revenue from ASHRAE’s sale of print and PDF versions of all standards.
REQUEST FOR PRODUCTION NO. 12:
All documents concerning any Contributions You have received from any governmental
entity in connection with the Standards Process of each Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 12:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to the development of ASHRAE standards in connection with government
entities or their representatives. ASHRAE further objects to the extent that this Request seeks
documents related to standards beyond those identified in Exhibit C to the Complaint. ASHRAE
further objects that the terms “received”, “Contributions”, and “Standards Process” are vague,
ambiguous, overbroad, and unduly burdensome. ASHRAE will interpret the term “Standards
Process” to mean the process of developing an ASHRAE standard through final issuance to the
public, and specifically not to include subsequent transmission, publication, distribution, display,
or dissemination of that standard. ASHRAE further objects to the lack of limitation on the time
period of this Request, and will confine its production of documents, if any, to a reasonable time
limitation relevant to this case.
Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged,
documents, if any, related to the standards identified in Exhibit C to the Complaint and that are
17

located after a reasonably diligent search in the following categories: technical reports received by
the Standard 90.1 Project Committee from the Pacific Northwest National Laboratory related to
Standard 90.1-2010.
REQUEST FOR PRODUCTION NO. 13:
All documents concerning any Contributions You have received from any not-for-profit
entity (other than a governmental entity) in connection with the Standards Process of each WorkAt-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 13:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to the development of ASHRAE standards in connection with not-for-profit
entities or their representatives. ASHRAE further objects to this Request to the extent that it
requires ASHRAE to reach a legal conclusion whether entities maintain a “not-for-profit” status,
which is information not necessarily known to ASHRAE and can be readily ascertained by
Defendant with the same degree of effort. ASHRAE further objects to the extent that this Request
seeks documents related to standards beyond those identified in Exhibit C to the Complaint.
ASHRAE further objects that the terms “received”, “Contributions”, and “Standards Process” are
vague, ambiguous, overbroad, and unduly burdensome. ASHRAE will interpret the term
“Standards Process” to mean the process of developing an ASHRAE standard through final
issuance to the public, and specifically not to include subsequent transmission, publication,
distribution, display, or dissemination of that standard. ASHRAE further objects to the lack of
limitation on the time period of this Request, and will confine its production of documents, if any,
to a reasonable time limitation relevant to this case.
18

Subject to and without waiving its objections, ASHRAE states that documents responsive
to this Request will be produced in response to Defendant’s Requests for Production Nos. 3 and 4,
from which the contributions of not-for-profit entities may be determined.
REQUEST FOR PRODUCTION NO. 14:
All documents constituting, comprising, or concerning communications requesting
Contributions of any form from any Person in connection with the Standards Process of each
Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 14:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to the development of ASHRAE standards in connection with third-party
individuals or entities. ASHRAE further objects to the extent that this Request seeks documents
related to standards beyond those identified in Exhibit C to the Complaint. ASHRAE further
objects that the terms “communications” and “requesting” are vague and ambiguous, and that the
terms “Contributions” and “Standards Process” are overbroad and unduly burdensome. ASHRAE
will interpret the term “Standards Process” to mean the process of developing an ASHRAE
standard through final issuance to the public, and specifically not to include subsequent
transmission, publication, distribution, display, or dissemination of that standard. ASHRAE
further objects to the lack of limitation on the time period of this Request, and will confine its
production of documents, if any, to a reasonable time limitation relevant to this case.
Subject to and without waiving its objections, ASHRAE states that it communicates to
interested parties, including ASHRAE members, Project Committee members, and interested
members of the general public, about opportunities to participate in the development of ASHRAE
19

standards.

For example, ASHRAE’s website includes links to, among other documents, the

Procedure for ASHRAE Standards Actions; the Manuals of Procedures for the Project Committee
and the Standards Committee; and forms and instructions for submission of change proposals for
ASHRAE standard and for membership application to ASHRAE Project Committees. ASHRAE
directs Defendant to its website (https://www.ashrae.org/standards-research--technology/standardsforms—procedures) for these and other documents responsive to this Request. ASHRAE also
publishes two monthly newsletters, Insights and eSociety, in which it announces upcoming
revisions for its standards and invites participation from interested parties. Electronic copies of
these

newsletters,

including

back

issues,

are

available

on

the

(https://www.ashrae.org/resources--publications/periodicals/ashrae-insights).

ASHRAE

website

In advance of any

significant standards development activity, ASHRAE issues Standards Actions to listserv
subscribers that provide, among other information, notices of proposed changes to standards, calls
for members on ASHRAE committees, and calls for public comments.

ASHRAE agrees to

produce representative examples of ASHRAE Standards Actions that include notices of proposed
changes to Standard 90.1, calls for members of the Standard 90.1 Project Committee, and calls for
public comments on Standard 90.1.
REQUEST FOR PRODUCTION NO. 15:
All documents concerning offers of Contributions from any Person in connection with the
Standards Process of each Work-At-Issue.
RESPONSE TO REQUEST FOR PRODUCTION NO. 15:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to the development of ASHRAE standards in connection with third-party
20

individuals or entities. ASHRAE further objects to the extent that this Request seeks documents
related to standards beyond those identified in Exhibit C to the Complaint. ASHRAE further
objects that this Request is duplicative of Request No. 4, seeking “[d]ocuments sufficient to
identify all Contributions in support of the Standards Process of each Work-At-Issue.” ASHRAE
further objects that the terms “offers” is vague and ambiguous, and that the terms “Contributions”
and “Standards Process” are overbroad and unduly burdensome. ASHRAE will interpret the term
“Standards Process” to mean the process of developing an ASHRAE standard through final
issuance to the public, and specifically not to include subsequent transmission, publication,
distribution, display, or dissemination of that standard. ASHRAE further objects to the lack of
limitation on the time period of this Request, and will confine its production of documents, if any,
to a reasonable time limitation relevant to this case.
Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged,
documents, if any, that are located after a reasonably diligent search in the following categories: a
list of the change proposals submitted to the Standard 90.1 Project Committee for the 2010
revision cycle; a list of the public comments received in response to proposed revisions to and/or
public drafts of Standard 90.1 in the 2010 revision cycle; and form application for membership on
the Project Committee for Standard 90.1 for the 2010 revision cycle.
REQUEST FOR PRODUCTION NO. 16:
All documents constituting, comprising, or concerning communications criticizing Your
claims, statements, arguments, or positions in this dispute or litigation.
RESPONSE TO REQUEST FOR PRODUCTION NO. 16:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as seeking documents and information that is not relevant
to the claims and defenses asserted in this case and not reasonably calculated to lead to the
21

discovery of admissible evidence. ASHRAE further objects that the term “criticizing” is vague
and ambiguous, rendering the Request overbroad and unduly burdensome. ASHRAE further
objects to this Request to the extent it seeks documents that are not in ASHRAE’s possession,
custody, or control or documents that are publicly available to Defendant or that are otherwise in
Defendant’s possession. In light of ASHRAE’s objections, no response is warranted at this time.
REQUEST FOR PRODUCTION NO. 17:
All documents constituting, comprising, or concerning communications by You regarding
this dispute or litigation.
RESPONSE TO REQUEST FOR PRODUCTION NO. 17:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request to the extent that it seeks documents protected by the
attorney-client privilege, the work-product doctrine, and/or any other applicable privilege,
immunity, or protection. ASHRAE further objects to creating a log for privileged or protected
communications made between ASHRAE and outside counsel concerning this litigation on
grounds that doing so would be unduly burdensome and not reasonably calculated to lead to the
discovery of admissible evidence. ASHRAE further objects that the terms “communications” and
“dispute” are vague and ambiguous, rendering the Request overbroad and unduly burdensome.
Subject to and without waiving its objections, ASHRAE refers Defendant to the Media
Statement issued by ASHRAE and co-plaintiffs regarding the filing of the Complaint in this case
(https://www.ashrae.org/news/2013/media-statement-from).
REQUEST FOR PRODUCTION NO. 18:
All documents constituting, comprising, or concerning licenses with respect to any WorkAt-Issue.

22

RESPONSE TO REQUEST FOR PRODUCTION NO. 18:
ASHRAE repeats and incorporates its General Objections into its response to this Request.
ASHRAE further objects to this Request as overbroad, unduly burdensome, and not reasonably
calculated to lead to the discovery of admissible evidence to the extent that it seeks essentially all
documents related to licenses for ASHRAE standards. ASHRAE further objects to the extent that
this Request seeks documents related to standards beyond those identified in Exhibit C to the
Complaint. ASHRAE further objects that the terms “licenses” and “with respect to” are vague and
ambiguous, rendering the Request overbroad and unduly burdensome. ASHRAE further objects to
the lack of limitation on the time period of this Request, and will confine its production of
documents, if any, to a reasonable time limitation relevant to this case. ASHRAE further objects to
producing documents in response to this Request until the entry of an appropriate protective order
in this case.
Subject to and without waiving its objections, ASHRAE agrees to produce non-privileged
documents, if any, related to the standards identified in Exhibit C to the Complaint and that are
located after a reasonably diligent search in the following categories: representative examples of
documents granting permission or licenses to third parties for the use of Standard 90.1; the form
personal-use license for purchasers of the PDF version of Standard 90.1; the form network-use
license for purchasers of Standard 90.1; and ASHRAE’s current distribution agreements with
authorized resellers who have been licensed to distribute Standard 90.1.

23

Dated: March 20, 2014

Respectfully submitted,
/s/ Joseph R. Wetzel
Kenneth L. Steinthal (admitted pro hac vice)
Joseph R. Wetzel (admitted pro hac vice)
KING & SPALDING, LLP
101 2nd Street, Suite 2300
San Francisco, CA 94105
[phone]
[e-mail]
[e-mail]
Jeffrey S. Bucholtz (D.C. Bar: 452385
KING & SPALDING, LLP
1700 Pennsylvania Avenue, NW, Suite 200
Washington, DC 20006
[phone]
[e-mail]

24

PROOF OF SERVICE
I am a citizen of the United States and resident of the State of California. I am employed in
San Francisco, State of California, in the office of a member of the bar of this Court, at whose
direction the service was made. I am over the age of eighteen years and not a party to the within
action.
On March 20, 2014, I served the following documents in the manner described below:
PLAINTIFF-COUNTERDEFENDANT THE AMERICAN SOCIETY OF
HEATING, REFRIGERATING, AND AIR- CONDITIONING ENGINEERS,
INC.’S OBJECTIONS AND RESPONSES TO DEFENDANTCOUNTERCLAIMANT PUBLIC.RESOURCE.ORG, INC.’S FIRST SET OF
REQUESTS FOR PRODUCTION OF DOCUMENTS (NOS. ASHRAE-1
THROUGH ASHRAE-18))


BY U.S. MAIL: I am personally and readily familiar with the business practice of King
& Spalding for collection and processing of correspondence for mailing with the United
States Parcel Service, and I caused such envelope(s) with postage thereon fully prepaid
to be placed in the United States Postal Service at San Francisco, California.



BY MESSENGER SERVICE: by consigning the document(s) to an authorized courier
and/or process server for hand delivery on this date.



BY FACSIMILE: I am personally and readily familiar with the business practice of
King & Spalding for collection and processing of document(s) to be transmitted by
facsimile and I caused such document(s) on this date to be transmitted by facsimile to
the offices of addressee(s) at the numbers listed below.



BY OVERNIGHT MAIL: I am personally and readily familiar with the business
practice of King & Spalding for collection and processing of correspondence for
overnight delivery, and I caused such document(s) described herein to be deposited for
delivery to a facility regularly maintained by Federal Express for overnight delivery.



BY ELECTRONIC SERVICE: By electronically mailing a true and correct copy
through King & Spalding’s electronic mail system from [e-mail] to the
email addresses set forth below.



BY PERSONAL DELIVERY: I caused such envelope to be delivered by hand to the
offices of each addressee below.

On the following part(ies) in this action:
Michael F. Clayton (D.C. Bar No. 335307)
[e-mail]
J. Kevin Fee (D.C. Bar: 494016)
[e-mail]

Counsel For American Society For Testing
And Materials d/b/a/ ASTM International 

25

Jordana S. Rubel (D.C. Bar No. 988423)
[e-mail]
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Ave., N.W.
Washington, D.C. 20004
Telephone: [phone]
Anjan Choudhury (D.C. Bar No. 497271)
[e-mail]
Munger, Tolles & Olson LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
Tel: [phone]

Counsel For National Fire Protection
Association, Inc. 

Kelly M. Klaus
[e-mail]
Jonathan H. Blavin
[e-mail]
Michael J. Mongan
[e-mail]
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Andrew P. Bridges
[e-mail]
Kathleen Lu
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]

Counsel for Defendant Public.Resource.Org,
Inc.

Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
Corynne McSherry
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
David Halperin
[e-mail]
1530 P Street NW
26

Washington, DC 20005
Mark A. Lemley
[e-mail]
Joseph C. Gratz
[e-mail]
DURIE TANGRI LLP
217 Leidesdorff St.
San Francisco, CA 94111
Telephone: [phone]

I declare under penalty of perjury under the laws of the United States of America that the
foregoing is true and correct. Executed on March 20, 2014, at San Francisco, California.
/s/ Tina Bishop
Tina Bishop

27