Prism Technologies v. Adobe Systems Incorporated et al

Filing 1064

MEMORANDUM AND ORDER - Prism's motion to compel Symantec to produce documents, as well as for an order permitting Prism to take third-party discovery (Filing No. 968 ), is denied. Ordered by Senior Judge Lyle E. Strom. (AOA)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
McAFEE, INC.; SYMANTEC
)
CORPORATION; and TREND MICRO )
INCORPORATED,
)
)
Defendants.
)
______________________________)

8:10CV220

MEMORANDUM AND ORDER

This matter is before the Court on the motion of
plaintiff Prism Technologies, LLC (“Prism”), filed pursuant to
Federal Rule of Civil Procedure 37(a), to compel defendant
Symantec Corporation (“Symantec”) to produce documents, as well
as for an order permitting Prism to take third-party discovery
(Filing No. 968, with accompanying brief and index of evidence,
Filing Nos. 969 and 970).

Symantec filed an opposing brief with

index of evidence (Filing Nos. 1045 and 1044), and Prism filed a
reply brief (Filing No. 1062).

The Court finds that Prism’s

motion should be denied.
I.

Applicable Law.
A.

Motion to Compel.

“Mutual knowledge of all the

relevant facts gathered by both parties is essential to proper
litigation.”

Hickman v. Taylor, 329 U.S. 495, 507 (1947).

Federal Rule of Civil Procedure 26(b) allows for broad discovery
of “any nonprivileged matter that is relevant to any party’s

claim or defense . . . .”

Fed. R. Civ. P. 26(b)(1).

“Relevant

information need not be admissible at the trial if the discovery
appears reasonably calculated to lead to the discovery of
admissible evidence.”

Id.

Relevance is to be broadly construed

for discovery issues and encompasses “any matter that bears on,
or that reasonably could lead to other matter that could bear on,
any issue that is or may be in the case."

Oppenheimer Fund, Inc.

v. Sanders, 437 U.S. 340, 351 (1978).
However, the proponent of discovery must make “[s]ome
threshold showing of relevance . . . before parties are required
to open wide the doors of discovery and to produce a variety of
information which does not reasonably bear upon the issues in the
case."

Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir.

1992).

“Determinations of relevance in discovery rulings are

left to the sound discretion of the trial court . . . ."

Hayden

v. Bracy, 744 F.2d 1338, 1342 (8th Cir. 1984).
In the event of noncompliance with a discovery request
for relevant information, Rule 37(a) provides, “[A] party may
move for an order compelling disclosure or discovery.”
Civ. P. 37(a)(1).

Fed. R.

“The party resisting production bears the

burden of establishing lack of relevancy or undue burden.”
Paul Reinsurance Co., Ltd. v. Commercial Fin. Corp.
508, 511 (N.D. Iowa 2000).

-2-

St.

198 F.R.D.

Discovery closed for Prism with respect to Symantec on
May 14, 2012 (Amended Scheduling Order, Filing No. 482).1

Rule

16(b)(4) states, “A schedul[ing order] may be modified only for
good cause and with the judge’s consent.”
16(b)(4).

Fed. R. Civ. Pro.

“The primary measure of Rule 16’s ‘good cause’

standard is the moving party’s diligence in attempting to meet
the case management order’s requirements.”

Bradford v. DANA

Corp., 249 F.3d 807, 809 (8th Cir. 2001).
B.

Waiver of Attorney-Client Privilege.

“[T]he

attorney-client privilege attaches when the communication in
question is made: ‘(1) in confidence; (2) in connection with the
provision of legal services; (3) to an attorney; and (4) in the
context of an attorney-client relationship.’”

Harris v. D. Scott

Carruthers & Assoc., 8:09CV154, 2010 WL 610978 at *2 (D. Neb.
Feb. 18, 2010) (quoting United States v. BDO Seidman, LLP (BDO
Seidman II), 492 F.3d 806, 815 (7th Cir. 2007)).
“Voluntary disclosure of attorney client communications
expressly waives the privilege.”

United States v. Workman, 138

F.3d 1261, 1263 (8th Cir. 1998).

“The waiver covers any

information directly related to that which was actually
disclosed.”

Id.

“The attorney client privilege may also be

implicitly waived, and one way that is done is by raising

1

Defendants were allowed to engage in additional limited
discovery thereafter (Filing No. 955).
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attorney advice as a defense.”

Id. (internal citation omitted).

“The attorney client privilege cannot be used as both a shield
and a sword, and [one party] cannot claim in his defense that he
relied on [his attorney’s] advice without permitting the [other
party] to explore the substance of that advice.”

Id. at 1264

(internal citation omitted).
II.

Discussion.
Prism’s motion requests further discovery connected to

its claim that Symantec willfully infringed Prism’s patent, U.S.
Patent No. 7,290,288 (“‘288 patent”).

Prism claims that Symantec

was aware of the ‘288 patent before the present complaint was
filed in 2010 by virtue of correspondence from the United States
Patent Office regarding U.S. Patent Application 10/937,893 (“‘893
application”), a patent application that was filed in 2004 on
behalf of a company called XtreamLoc, later acquired by Symantec.
The correspondence in question (the “First Office Action”) cited
the ‘288 patent and was sent to Symantec’s outside patent
counsel.
Prism seeks an order granting its motion to compel
Symantec to respond to several discovery requests, to which
Symantec objects.2

2

Prism has supplied adequate evidence of compliance with
the Nebraska “meet and confer” rule for discovery motions (Filing
No. 969; see NECivR 7.0.1(i)).
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A.

Production of Documents.

Prism first requests that

the Court compel Symantec “to produce all communications relating
to the ‘893 application that Symantec is currently withholding
from production based on claims of privilege” (Filing No. 968, at
2).

Prism claims that Symantec waived any privilege “by making

representations about the substance of these communications in
briefs submitted to the Court in August and September 2012, and
by allowing its Rule 30(b)(6) witness to similarly testify in an
August 16, 2012, deposition regarding the substance of these
communications” (Filing No. 969, at 6).
“Specifically, Symantec asserts as a defense to willful
infringement that its employees never discussed the ’288 patent
with its outside patent attorneys in any of their communications
regarding the ’893 application” (Id.).

“By taking this position,

however, Symantec has placed these communications regarding the
’893 application directly at issue, thereby waiving any privilege
over them” (Id.).

“Symantec cannot make assertions about what is

contained in these communications while at the same time denying
Prism discovery on these communications.

This is a textbook

example of a party trying to assert the attorney client privilege
as both a sword and a shield” (Id. at 18). “Here, the only way to
assess Symantec’s claim that its employees never discussed the
’288 patent in any of their communications about the ’893

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application is for Symantec to produce these communications so
that the accuracy of Symantec’s assertion can be verified” (Id.).
Symantec responds, “Prism argues that, by virtue of
defending itself, diligently logging privileged communications,
and accurately reporting that no such communications refer to the
‘288 patent, Symantec has put into issue and thus waived its
privilege over ‘all communications regarding the ’893 patent
application.’ However, to ‘put at issue’ privileged
communications, as Prism acknowledges, a party must actually
‘rely’ on the privileged communication as a claim or defense”
(Filing No. 1045, at 12-13, quoting Filing No. 969, at 14).
Symantec emphasizes that it “has never and is not now asserting
an advice of counsel defense.

Symantec’s representation that

there are no documents demonstrating pre-suit knowledge of the
’288 patent is not in reliance on any opinion or advice of
counsel — it is a mere denial of Prism’s accusation” that
Symantec had pre-suit knowledge of the ‘288 patent (Filing No.
1045, at 13).

Symantec argues, “Prism should not gain access to

Symantec’s privileged communications simply because Symantec
denies that it was aware of the ’288 patent” (Filing No. 1045, at
15 n.10).

The Court finds that Symantec did not waive attorney-

client privilege simply by reviewing the privileged documents and
stating that Prism’s desired information is not contained
therein.

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In the alternative, Prism requests an order from the
Court precluding Symantec from denying at trial that it first
became aware of the patent-in-suit through communications made in
the course of prosecution of the ’893 application.

Symantec

states that “[t]o do so would allow Prism to deliberately mislead
the jury and improperly punish Symantec for refusing to waive its
privileges” (Filing No. 1045, at 15).

The Court agrees; Prism’s

request will be denied.
Next, Prism requests that the Court compel Symantec “to
search for and produce all documents in the electronic files of
Brook Lewis, Jerome Witmann, Craig Lucas, David Tucker, and Delos
Larson that are responsive to Prism Requests for Production Nos.
9, 10, 62, 64, and 65, including all documents relating to the
patent-in-suit or the ‘893 application” (Filing No. 968, at 2).
However, in its reply brief, Prism states, “Symantec states that
it has now performed the requested searches and has not found any
additional responsive documents to produce.

Prism will accept

Symantec’s representation on this issue . . .” (Filing No. 1062,
at 14).

Thus the Court will deny this request as moot.
B.

Intellectual Property Services Corporation.

Prism

requests that the Court compel Symantec “to provide to Prism the
last known contact information for Intellectual Property Services
Corporation” (“IP Services”) and to permit Prism “to serve a
third-party subpoena for depositions and documents” on IP

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Services (Filing No. 968, at 2).

Prism states that Symantec

attempted to sell the ‘893 application to IP Services (Filing No.
969, at 11).

Prism claims, “[G]iven that IP Services was

involved in discussing a potential purchase of the ’893
application from Symantec, that company is also likely to have
relevant information regarding the extent to which Symantec
considered the ’288 patent to be a problem for the ’893
application” (Filing No. 969, at 22).
Symantec states that IP Services is “apparently a now
non-existent entity” (Filing No. 1045, at 20).

“Symantec

produced every single communication with [IP Services] that it
located during its searches.

Those communications included an

email address and fax number for an individual named Jackson C.
Toman at [IP Services],” but “those communications make no
reference whatsoever to the ’288 patent” (Filing No. 1045, at 2021).

Symantec concludes that “the fact that Prism has been

unable to locate [IP Services] undoubtedly means that the entity
no longer exists” (Id. at 21).

The Court finds that Symantec has

satisfied its obligation to Prism with respect to providing
information about IP Services, and that no third-party subpoena
will be issued.
C. Delos Larson and Meredith McKenzie.

Finally, Prism

requests that the Court permit Prism “to serve a third-party
subpoena for depositions and documents” on former Symantec

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attorneys Delos Larson and Meredith McKenzie (Filing No. 968, at
2).

Prism states that it learned only recently that “Mr. Larson

was the patent portfolio manager at Symantec during the
prosecution of the ’893 patent application and oversaw the
prosecution of the ’893 patent application, while Ms. McKenzie
was the director of the patent department” (Filing No. 969, at
21).

Prism states that it “reasonably believes that these two

individuals are likely to have relevant information on the issue
of the extent to which Symantec considered the ’288 patent during
the prosecution of the ’893 application” (Filing No. 969, at 2122).
By way of response, Symantec submitted to the Court
declarations from Mr. Larson and Ms. McKenzie that it claims
“establish that the requested depositions would be a complete
waste of time, as neither individual has any recollection of ever
having seen the ’288 patent and neither was involved in reviewing
or responding to the First Office Action concerning the ’893
application” (Filing No. 1045, at 19).

For example, Mr. Larson’s

declaration states, “I understand that Prism is arguing that I
learned of the ‘288 patent as a result of that first office
action.

This is not correct.

On September 17, 2012, I reviewed

a copy of the ‘288 patent and, to the best of my knowledge and
recollection, I have never seen it before” (Ex. 3, Filing No.
1044, at 3).

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In addition, “During the 2008 time period, it was my
practice, and Symantec’s practice generally, to have its outside
patent prosecution counsel respond to first office actions
unilaterally, without substantive input from Symantec.

There

simply was no way for Symantec’s very limited legal team
overseeing patent prosecution to review first office actions in a
substantive manner” (Id.).

“To the best of my knowledge, at the

time in question, there were approximately 1,500 to 2,000 pending
applications, with Aaron Smith and me as the sole overseers of
their prosecution.

Thus, unless there was a particular issue

raised by the outside patent prosecution counsel, I would not
look at first office actions” (Id.).

The Court will not reopen

discovery at this late date in the proceedings3 for what appears
to be a futile exercise.

Accordingly,

IT IS ORDERED that Prism’s motion to compel Symantec to
produce documents, as well as for an order permitting Prism to
take third-party discovery (Filing No. 968), is denied.
DATED this 9th day of November, 2012.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

3

Summary judgment motions are pending, and trial is set for
January 14, 2013.
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