Prism Technologies v. Adobe Systems Incorporated et al

Filing 410

MEMORANDUM AND ORDER granting in part and denying in part 330 Motion for Protective Order - Defendants' motion for Rule 26(c) protective order (Filing No. 330 ) is granted as to the following discovery requests: a) Requests for Admiss ions 13-14; and b) Requests for Production 74-75. Defendants' motion for Rule 26(c) protective order (Filing No. 330 ) is denied as to the following discovery requests: a) Requests for Admissions 1-12; b) Requests for Production 71 -73; c) Interrogatories 2 and 9; and d) Rule 30(b)(6) Deposition Notice Topics 1 and 2. Prism's motion to compel discovery is granted as to those discovery requests listed in (2)(a)-(c) above. Defendants will have until January 6, 201 2, to comply with such discovery requests, to the extent that they have not already done so. Each defendant will file with the Court a certificate indicating such compliance by January 6, 2012. At future depositions, defendants will answer questions regarding Rule 30(b)(6) Deposition Notice Topics 1 and 2, as applicable. Ordered by Senior Judge Lyle E. Strom. (TEL)

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

)
)
Plaintiff,
)
)
v.
)
)
ADOBE SYSTEMS, INCORPORATED, )
AUTODESK, INC.; McAFEE, INC., )
NATIONAL INSTRUMENTS
)
CORPORATION; SAGE SOFTWARE,
)
INC., SYMANTEC CORPORATION;
)
THE MATHWORKS, INC., and
)
TREND MICRO INCORPORATED,
)
)
Defendants.
)
______________________________)

8:10CV220

MEMORANDUM AND ORDER

Plaintiff Prism Technologies, LLC (“Prism”) alleges
infringement of its patent, U.S. Patent No. 7,290,288 (“’288
patent”), by defendants Adobe Systems, Inc., Autodesk, Inc.,
McAfee, Inc., National Instruments Corp., Sage Software, Inc.,
Symantec Corp., The Mathworks, Inc., and Trend Micro, Inc.
(collectively, “defendants”).

Before the Court is defendants’

motion for a protective order pursuant to Federal Rule of Civil
Procedure 26(c), with accompanying brief and index of evidence
(Filing Nos. 330, 331, and 332).

Prism filed an opposing brief

with index of evidence (Filing Nos. 374 and 375), and defendants
filed a reply brief with index of evidence (Filing Nos. 396 and
397).

After reviewing the parties’ submissions, the Court will

grant in part and deny in part defendants’ motion for a
protective order.

I.

Protective Orders - Procedural History.
Prism filed its complaint in this action on June 8,

2010 (Filing No. 1).

To accommodate an early, initial Markman

hearing, discovery was stayed until July 22, 2011.

Two months

later, Prism and defendants both filed motions for a protective
order covering discovery in this matter (Filing Nos. 277 and
285).

While the proposed motions were largely overlapping, some

disputes were not resolved by the parties.

The Court issued an

order resolving the differences between the parties so that they
could file a joint motion (Filing No. 366).

Subsequently, the

parties submitted a joint motion for protective order, which the
Court granted on November 22, 2011 (Filing No. 390).

This

request for a protective order by defendants is supplemental to
the November 22, 2011, protective order.
II.

Federal Rule of Civil Procedure 26(b); Patent Discovery.
"Mutual knowledge of all the relevant facts gathered by

both parties is essential to proper litigation."
Taylor, 329 U.S. 495, 507 (1947).

Hickman v.

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 –including the existence, description, nature, custody, condition,
and location of any documents or other tangible things and the
identity and location of persons who know of any discoverable
matter.”

Fed. R. Civ. P. 26(b)(1).
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Relevance during discovery is not measured by the
Federal Rules of Evidence:

“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 could bear 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 context of patent infringement cases, some
district courts have created more specific, local rules as to
discovery regarding infringement, non-infringement, and
invalidity contentions.

See Rules of Practice for Patent Cases

before the Eastern District of Texas (the “Patent Rules,”
abbreviated “P.R. __”).

For example, in the Eastern District of

Texas, “[n]ot later than 10 days before the Initial Case

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Management Conference with the Court, a party claiming patent
infringement must serve on all parties a ‘Disclosure of Asserted
Claims and Infringement Contentions.’”

P.R. 3.1.

These local rules delineate just what should be
included in the required disclosure, such as “each accused
apparatus, product, device, process, method, act, or other
instrumentality (“Accused Instrumentality”) of each opposing
party of which the party is aware.”

Id.

Thus, “‘[t]he Patent

Rules demonstrate high expectations as to plaintiffs’
preparedness before bringing suit, requiring plaintiffs to
disclose their preliminary infringement contentions before
discovery has even begun.’”

Connectel, LLC, v. Cisco Sys., Inc.,

391 F. Supp. 2d 526, 527 (E.D. Tex. 2005) (emphasis added)
(quoting Am. Video Graphics, L.P. v. Elec. Arts, Inc., 359 F.
Supp. 2d 558, 560 (E.D. Tex. 2005)).
As much as defendants might wish it were so, the
District of Nebraska has no local rules regarding patent case
discovery, and the Nebraska district court is not compelled to
require parties in an infringement case to follow patent
discovery rules from other jurisdictions.

Nevertheless, the

reasoning of these other district courts provides persuasive
guidance for the management of patent case discovery and will be
cited as such in this memorandum and order.

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II.

Federal Rule of Civil Procedure 26(c).
Although Federal Rule of Civil Procedure 26(b) does

allow for broad discovery, the federal rules also permit
supervision of discovery by the courts.

Rule 26(c) states,

A party or any person from whom
discovery is sought may move for a
protective order in the court where
the action is pending . . . . The
court may, for good cause, issue an
order to protect a party or person
from annoyance, embarrassment,
oppression, or undue burden or
expense, including one or more of
the following:
(A) forbidding the disclosure or
discovery; . . .
(D) forbidding inquiry into certain
matters, or limiting the scope of
disclosure or discovery to certain
matters . . . .
Fed. R. Civ. P. 26(c)(1).

The rules “leave it to the enlightened

discretion of the district court to decide what restrictions may
be necessary in a particular case.”

8A Charles Alan Wright,

Arthur R. Miller & Richard L. Marcus, Federal Practice and
Procedure § 2036 (3d ed. 2010).
“Because of liberal discovery and the potential for
abuse, the federal rules ‘confer[ ] broad discretion on the
[district] court to decide when a protective order is appropriate
and what degree of protection is required.’”

Miscellaneous

Docket Matter No. 1 v. Miscellaneous Docket Matter No. 2, 197
F.3d 922, 925 (8th Cir. 1999) (quoting Seattle Times Co. v.
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Rhinehart, 467 U.S. 20, 36 (1984)).

Not all relevant material is

discoverable; “‘[e]ven if relevant, discovery is not permitted
where no need is shown, or compliance would be unduly burdensome,
or where harm to the person from whom discovery is sought
outweighs the need of the person seeking discovery of the
information.’”

Miscellaneous, 197 F.3d at 925 (quoting Micro

Motion, Inc. v. Kane Steel Co., 894 F.2d 1318, 1323 (Fed. Cir.
1990) (emphasis omitted)).

“Fed. R. Civ. P. 26(c) requires that

‘good cause’ be shown for a protective order to be issued.

The

burden is therefore upon the movant to show the necessity of its
issuance, which contemplates ‘a particular and specific
demonstration of fact, as distinguished from stereotyped and
conclusory statements . . . .’”

Gen. Dynamics Corp. v. Selb Mfg.

Co., 481 F.2d 1204, 1212 (8th Cir. 1973) (citation omitted).
Both Rule 26(c) and United States District Court for
the District of Nebraska local rule 7.0.1(i) require that the
party seeking a protective order must “meet and confer” with the
other party “in an attempt to resolve the dispute without court
action.”
III.

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

Defendants’ Motion for Protective Order.
Here, defendants claim that Prism’s discovery requests

“seek information regarding non-accused technologies” (Filing No.
330, at 2).

Defendants state, “The information Prism seeks is

not relevant to any claim or defense in this case and not

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reasonably calculated to the discovery of admissible evidence”
(Id.).

Further, defendants allege that the information sought by

Prism is broad in scope and “compliance would be unduly
burdensome, if not impossible for Defendants” (Id.).

Thus,

defendants request a protective order denying Prism discovery of
“non-accused technologies or, in the alternative, technologies or
products that are not ‘reasonably similar’ to those accused by
Prism including those used internally within Defendants’
organizations” (Id. at 3).
Defendants attach a “Nebraska Civil Rule 7(i)
Certificate of Conference” to their motion that reads as follows:
The undersigned [Michael T.
Hilgers] hereby certifies that on
October 27, 2011, I had a telephone
conversation with counsel for
Prism, Christopher D. Banys, in
which I discussed the relief sought
herein. The conversation took
place at or about 4 p.m. Counsel
for Prism indicated that Prism was
opposed to the relief sought
herein.
(Filing No. 330, at 10).

The Court finds that defendants have

satisfied the discovery motion “meet and confer” requirement of
Rule 26(c) and local rule 7.0.1(i).
A. Prism is not restricted to discovery of possible
infringement via CD-ROMS only.
Defendants’ first argument in favor of a protective
order is that the offending discovery requests are unrelated to
Prism’s infringement theory as Prism has articulated it in the
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following:

Prism’s complaint; Prism’s infringement contentions

included in its responses to defendants’ first set of
interrogatories; and Prism’s comments to the Court at the July
2011 hearing (Filing No. 331, at 3-6).

As delineated in this

Court’s order denying summary judgment, the Court does not find
that Prism restricted itself to an infringement theory relating
only to software activation via CD-ROM in either its complaint or
its statements to the Court in July 2011 (Filing No. 393).

Thus,

generally speaking, this Court will not rule that Prism’s
discovery is limited to defendants’ software products that
contain a CD-ROM.
B. Prism is not restricted to discovery of possible
infringement via software products that defendants sell.
More specifically, defendants complain that Prism’s
discovery requests “are not tied to any software actually
produced, marketed, or sold by each Defendant to a third party”
(Filing No. 331, at 9).

Moreover, Prism’s requests “involve

unspecified technologies used internally within Defendants’
organization and not software sold by Defendants to the public”
(Id. at 10).

Thus, the question becomes whether Prism has

limited itself to accusing products that are sold by defendants
to the public, as defendants claim.
A look at the complaint, again, indicates that Prism
did not so limit itself.

In the complaint, Prism alleged that

each defendant is infringing the ’288 patent “by making, using,
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offering to sell, and/or selling authentication systems and
methods for controlling access to protected computer resources
with various [defendant] software products” (Filing No. 1, at 58).1

The use of the disjunctive “or” establishes that “selling”

the software product to a third party is only one of several ways
that Prism is alleging infringement.

Thus the defendants have

not established that Prism’s requests are outside the scope of
its complaint on that basis alone.
C. Prism is largely, but not completely, limited to
discovery of possible infringement via already accused products
or products that are “reasonably similar” to already accused
products.
It is certainly true that Prism’s first infringement
contentions as articulated in its responses to defendants’ first
set of interrogatories are limited to software activation via CDROM.

See Exhibits 1-8, Filing No. 292.

Defendants claim that

Prism’s offending discovery requests fall outside the scope of
its first infringement contentions.

Defendants further claim

that “a party is not permitted to expand discovery beyond that
relating to the accused products, or in some cases technologies

1

Prism follows the language of 35 U.S.C. § 271(a): “Except
as otherwise provided in this title, whoever without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States or imports into the United States any
patented invention during the term of the patent therefor,
infringes the patent.”

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that are not ‘reasonably similar’ to the accused products”
(Filing No. 331, at 10).
Defendants rely on case law from the Eastern District
of Texas and the Northern District of California to support this
claimed restriction.

For example, defendants cite the Northern

District of California, where the court chided the defendants in
that case for their overly broad discovery, saying, “It appears
that Defendants seek the Court’s permission to engage in a
fishing expedition, so that they do not have to conduct an
investigation into whether or not additional products infringe
their patents.

To deny such a request is not contrary to law.”

Samsung SDI Co., Ltd. v. Matsushita Elec. Indus. Co., Ltd., No.
CV 05-8493-AG(SHx), 2007 WL 4302701, at *3 (C.D. Cal. June 27,
2007).

However, this decision centered around the interpretation

of a local patent rule, N.D. Cal. Pat. R. 3-1:

“Courts have

interpreted this local patent rule as imposing a limitation on a
party seeking discovery.”

Id. at *3.

Here, of course, there is

no such local rule to interpret.
The Samsung court also noted that discovery requests
cannot be based solely on “‘mere suspicion or speculation,’” but,
rather, that the party requesting discovery must establish a
“reasonable basis to suspect that additional products allegedly
infringe the patents-in-issue.”

Id. (quoting Micro Motion, Inc.

v. Kane Steel Co., Inc., 894 F.2d 1318, 1326 (Fed. Cir. 1990)).

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This standard is similar to that used by courts generally in
evaluating the relevance of discovery requests.

See supra.

Other courts have been more reticent about making a
hard and fast rule regarding patent case discovery, even in the
context of local patent rules.

In Epicrealm Licensing, LLC v.

Autoflex Leasing, Inc., Nos.
2:05-CV-163-DF-CMC,:05-CV-356-DF-CMC, 2007 WL 2580969 (E.D. Tex.
Aug. 27, 2007) the Eastern District of Texas addressed “whether
the scope of discovery should be strictly limited to the products
and services specifically identified in the patent holder’s
[patent infringement contentions, as required by local rule].”
Epicrealm, at *2.
The Epicrealm court found “no bright line rule that
discovery can only be obtained if related to an accused product
identified in a party’s [patent infringement contentions].”
at *3.

Id.

Instead, as to the restricting local rules that require

initial patent infringement contentions to delimit discovery, the
court stated that, “‘the scope of discovery is not limited to the
preliminary infringement contentions or preliminary invalidity
contentions but is governed by the Federal Rules of Civil
Procedure.’”

Id. (quoting § 2-5, Miscellaneous Order No. 62

(Dallas Div., N.D. Tex Apr. 2, 2007)).

Further, the Epicrealm

court interpreted this to mean “that this Dallas Division local
rule intends that the scope of discovery is determined on a

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case-by-case basis and as contemplated by the ‘relevant to the
claim or defense of any party’ language in Federal Rule of Civil
Procedure 26(b)(1).”

Id. at *3.

The Epicrealm court quoted approvingly, “Judge Ward of
the Eastern District of Texas has found that relevant discovery
in a patent infringement suit includes discovery relating to the
technical operation of the accused products, as well as the
identity of and technical operation of any products reasonably
similar to any accused product.”

Id. at *3 (quotation omitted).

This “reasonably similar” language appears in other
Texas cases, as well.

See, e.g., Honeywell Intern. Inc. v. Acer

America Corp., 655 F.Supp.2d 650, 654 (E.D. Tex. 2009)
(discussing the “‘reasonably similar’ standard”).

In Honeywell,

the court noted that the “reasonably similar” test is grounded in
the notion that “the primary purpose of [patent infringement
contentions] is to give a defendant notice of a plaintiff’s
specific theories of infringement.”
655.

Honeywell, 655 F.Supp.2d at

However, this goal is tempered by the fact that when

discoverable material is not publicly available, the specificity
of the theory on infringement is limited.

For example, unlike

cases where desired information was available on the Internet, in
Honeywell, the desired information “at issue in this case [is]
not publicly available, and hence, absent this discovery,

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[plaintiff] cannot determine which [defendant] products to
accuse.”

Id. at 657.
Putting this all together, if this Court is to follow

the reasoning of the learned courts of the Eastern District of
Texas and the Northern District of California, the following
guidelines appear.

First, the general contours of a desire for

broad discovery apply as much in patent cases as in any other.
Second, defendants should have some kind of notice as to the
specific theory of infringement.

Third, the objects about which

the moving party seeks discovery must ordinarily be “reasonably
similar” to the already accused products, whether those
accusations are made in infringement contentions as required by
local rule or, as here, in the course of discovery via answers to
defendant’s interrogatories.

This “reasonably similar” standard

must necessarily be determined on a case by case basis, since
every patent is different.
Fourth, whether or not the desired information is
publicly available will impact the ability of the plaintiff to
articulate infringement contentions and discovery requests with
specificity.

This, in turn, may limit plaintiff’s ability to

demonstrate how the discovery request is related to products that
are “reasonably similar” to already accused products.

Finally,

all of these factors must be analyzed using a “totality of the
circumstances” weighting.

See Honeywell, 655 F.Supp.2d at 658.

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D. Prism properly gave notice to various defendants of
new infringement contentions on October 27, 2011, and November
18, 2011.
On October 27, 2011, Prism served first supplemental
objections and responses to the first set of interrogatories on
defendants McAfee, Inc. (“McAfee”) (Ex. 2, Filing No. 375), Adobe
Systems Incorporated (“Adobe”) (Ex. 6, Filing No. 375), and
Symantec Corporation (“Symantec”) (Ex. 7, Filing No. 375).

In

addition, on November 18, 2011, Prism served first supplemental
objections and responses to the first set of interrogatories on
defendant Trend Micro Incorporated (“Trend Micro”) (Ex. 4, Filing
No. 397).

In Prism’s brief in opposition to defendants’ motion

(filed before the supplemental responses to Trend Micro, so
referring only to the supplemental responses to McAfee, Adobe,
and Symantec), Prism claims that these supplemental responses
identify products of the selected defendants that
infringe the ’288 patent because
they employ the same system as
disclosed and claimed in the ’288
patent: controlling access to
protected resources in a computer
network by requiring the user to
present information from a
‘hardware key’ when trying to gain
access to the system from a client
computer device.
(Filing No. 374, at 6).

Each of the products uses a “hardware

key” that is not a CD-ROM, and will be referred to herein as
“supplemental infringement products.”
8).
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See Filing No. 374, at 6-

Prism claims that since discovery began in July 2011,
Prism “has uncovered evidence of systems that Defendants make,
use, or sell that are unrelated to software activation but also
infringe the ’288 patent, as set forth in Prism’s . . .
supplemental interrogatory responses to Defendants” (Filing No.
374, at 9).

Defendants aver that since these newly accused,

supplemental infringement products have nothing to do with
software activation (as Prism admits), they cannot be “reasonably
similar” to the initially accused products (Filing No. 7, at 7).
As defendants point out, Prism does not offer any explanation as
to why these claims were only available to it “once discovery was
begun.”2

Should other infringement theories evolve as discovery

continues, the Court assumes that Prism will be able to explain
why it could not have raised the issues earlier.
Prism claims that the supplemental infringement
products “constitute ‘authentication systems and methods for
controlling access to protected computer resources associated
with’ Defendants’ software products,” thus falling well within
the confines of Prism’s complaint (Filing No. 374, at 16 (quoting

2

Defendants also claim that “these supplemental contentions
do not provide a basis to deny the Motion [for protective order]”
(Filing No. 396, at 9). The Court’s reading of Prism’s brief
suggests that Prism is calling attention to the supplemental
contentions in part to show that not all of its accused products
involve software activation and CD-ROMs. Prism seemed to be
saying that its other offending discovery requests were inquiring
into technologies that, like the supplemental contention
technologies, do not involve software activation or CD-ROMs.
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Filing No. 1, at 6)).

On the other hand, defendants argue in

some detail that Prism’s supplemental contentions with regard to
Adobe, Symantec, McAfee, and Trend Micro are deficient because
the supplemental infringement products, as described by Prism, do
not infringe the ’288 patent (Filing No. 396, at 14-17).

The

Court finds that this is a question of fact to be decided at
trial.
The question is whether or not Prism can augment its
infringement contentions after filing its first set of
interrogatory responses.

By analogy with the Patent Rules of the

Eastern District of Texas, defendants argue that Prism should not
be allowed to augment its infringement contentions.
However, the parties’ report of their Rule 26(f)
planning meeting indicated that they did not come to an agreement
as to any limitations on the timing of patent infringement, noninfringement, or invalidity contentions (Filing No. 155, at 1314).

Unlike the Eastern District of Texas or the Northern

District of California, as noted above, there is no local rule in
the Nebraska district court to guide the way.
This Court was presented with a similar, but not
identical, issue in a previous case involving Prism:

Prism

Technologies, LLC v. Research in Motion, LTD, No. 8:08CV537, 2010
WL 1254940 (D. Neb. Mar. 24, 2010).

Unlike in the present case,

in Research in Motion, the parties agreed as follows:

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that

Prism’s initial infringement contentions would be served by a
particular date; that the contentions could be amended without
leave of court for a little over two months hence; and that Prism
could amend for a period of fifteen days after the claim
construction hearing.

Research in Motion, 2010 WL 1254940 at *1.

Otherwise, Prism would need to seek leave of court to amend.

Id.

In Research in Motion, the question before the Court was whether
to grant Prism’s motion to amend its infringement contentions
when the motion was filed thirteen months after the commencement
of the case and five months after the end of the period where
amendment could occur without leave of court.

Id.

As here, defendant Research in Motion objected to the
amendment, claiming that Prism could have included its
supplementary contentions with its original contentions because
“the information providing the basis for the amendment was
publicly available.”

Id. at *3.

There, this Court quoted from

Am. Video Graphics, L.P. v. Elec. Arts, Inc., 359 F. Supp. 2d 558
(E.D. Tex. 2005) to establish that “‘software cases present
unique challenges’ because plaintiffs typically do not have
access to the underlying technical information alleged to
infringe the patent.”

Research in Motion, 2010 WL 1254940 at *3,

(quoting Am. Vide 359 F. Supp. 2d. at 560).

This Court

continued,
This case is similar to American
Video insofar as both of these
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software cases involve
alleged-infringing products that
require analysis of highly
technical information that is not
necessarily apparent in the
products’ final manifestation.
While the final manifestation of
RIM’s products and some of the
technical information underlying
them may have been publicly
available, similar to the product
in American Video, this does not
mean Prism could have meaningfully
utilized that information in making
its preliminary infringement
contentions.
Research in Motion, 2010 WL 1254940 at *3.
“Moreover, even assuming the highly technical
information Prism needed to craft its infringement contentions
was publicly available, this would not necessarily mean that
Prism lacked good cause to amend its infringement contentions.”
Research in Motion, 2010 WL 1254940 at *3 n.3.

“Litigants are

entitled to rely on the information disclosed to them during
discovery to hone their theories of the case.”

Id.

This Court

also noted, “Prejudice to the non-moving party ‘is significantly
lessened when amendment occurs prior to the [claim construction]
hearing.’”

Id. at *14 (quoting Performance Pricing, Inc. v.

Google, Inc., No. 2:07-CV-432, 2009 U.S. Dist. LEXIS 84211, at *7
(E.D. Tex. Aug. 28, 2009)).
Regarding Prism’s contentions about the supplemental
infringement products, defendants state, “Allowing a party to
accuse products in this manner would gut the limitations on
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discovery outlined in Samsung and Honeywell” (Filing No. 396, at
12).

The Court disagrees.

The Court finds that the reasoning in

Research in Motion is equally applicable to the present case,
where Prism has asserted additional infringement contentions
after its initial offering, but before the principal Markman
hearing currently scheduled for January 2012.

The Court finds

that the supplemental infringement contentions have been made in
a timely way so as to “give a defendant notice of a plaintiff’s
specific theories of infringement.”

Honeywell, 655 F.Supp.2d at

655.
E. The motion for protective order will be partly
granted and partly denied.
In support of its discovery requests, Prism claims that
“the discovery requests at issue in the instant motion are
directly relevant to Prism’s various infringement theories”
(Filing No. 374, at 9).

In addition, Prism claims that it is

“entitled to discovery” of products that are “reasonably similar”
to those already accused of infringement (Id.).

Conversely, the

question is whether defendants, as the moving party, have
satisfied their burden of showing “a particular and specific
demonstration of fact, as distinguished from stereotyped and
conclusory statements . . . .” as to the undue difficulties they
would suffer if Prism’s discovery requests were allowed to stand.
Gen. Dynamics Corp., 481 F.2d at 1212.

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1.

Requests for Admissions 1-14 (Ex. 3, Filing No.

332, at 3-5).

Prism claims that these requests for admissions

“ask Defendants to admit or deny whether they have used various
types of ‘hardware keys’ at any time from the issuance date of
the ’288 patent to the present to control access to computer
resources within their organizations” (Filing No. 374, at 11).
Prism states, “these RFAs reasonably relate to Prism’s
infringement theories, and Defendants have no basis for objecting
to them” (Id.).

In addition, as with the offending requests for

production and interrogatories, Prism claims that it is asking
for “information that Prism cannot obtain from public sources, as
Defendants obviously do not publicize the network security
systems that they employ within their companies” (Filing No. 374,
at 10).
Defendants make their case generally for all the
offending discovery requests.

They state that because “Prism

concedes that its supplemental contentions do not accuse any
Defendant’s internal usage of security devices,” and “all but one
of the discovery requests for which Defendants seek protection go
to such internal use,” the requests for admissions should not be
allowed (Filing No. 396, at 12).

Defendants claim that “the

requests are not tied to any software actually produced,
marketed, or sold by each Defendant to a third party” (Filing No.
331, at 9).

In addition, defendants object generally that the

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requests are “vague and open-ended” (Filing No. 331, at 9).
Defendants maintain that fulfilling such discovery requests would
cost considerable time and money, as yet to be quantified (Filing
No. 396, at 18).
Considering the Court’s findings on the nature of
Prism’s complaint, its initial and supplemental infringement
contentions, and the difficulty of elucidating infringement
contentions that are based on information solely in the hands of
the defendants, as outlined above, the Court finds that Requests
for Admissions 1-12 are relevant to the case at hand, are not
unduly burdensome to defendants, relate to products that would be
“reasonably similar” to accused products, and should be answered
by defendants.

However, because Requests for Admissions 13 and

14 do not refer to security applications that require a hardware
key3 but only to two-factor authentication systems generically,
the Court finds that these requests are outside the scope of the
present action and need not be addressed by defendants.
2.
332, at 3).

Requests for Production 71-75 (Ex. 4, Filing No.
Prism claims that these “requests ask for documents

regarding Defendants’ use of various hardware keys and computer
systems that employ hardware keys” and that these “requests
properly seek information relating to Prism’s infringement

3

The parties have agreed, and the Court has addressed the
fact in other orders in this case, that in order to infringe the
’288 patent, a defendant product must contain a “hardware key.”
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theories” (Filing No. 374, at 9).

As with the requests for

admissions, the Court finds that Requests for Production 71-73
are relevant to the case at hand, are not unduly burdensome to
defendants, relate to products that would be “reasonably similar”
to accused products, and should be answered by defendants.
However, because Requests for Production 74 and 75 do not refer
to security applications that require a hardware key but only to
two-factor authentication systems generically, the Court finds
that these requests are outside the scope of the present action
and need not be addressed by defendants.
3.

Interrogatory Nos. 2 (Ex. 2, Filing No. 332, at 4)

and 9 (Ex. 5, Filing No. 332, at 3).

Prism claims that

Interrogatory No. 2 “seeks information regarding Defendants’ use
of hardware keys . . . in their corporate computer networks
. . . .

Prism has requested this information in order to

determine the full scope of infringing products the Defendants
make and use” (Filing No. 374, at 10).

Prism states that

Interrogatory No. 9 asks for the identification of “devices that
can constitute ‘hardware keys’ to control access to resources in
a computer network” (Filing No. 374, at 11).

The Court finds

that Interrogatory Nos. 2 and 9 are relevant to the case at hand,
are not unduly burdensome to defendants, relate to products that
would be “reasonably similar” to accused products, and should be
answered by defendants.

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4.

Rule 30(b)(6) Deposition Notice Topics 1 and 2 (Ex.

6, Filing No. 332, at 7-9).

Prism states that these “topics seek

information from which Prism can determine all ‘hardware keys’
and systems that employ ‘hardware keys’ made or used by
Defendants that are reasonably similar” to the supplemental
infringement products (Filing No. 374, at 13).

The Court finds

that Deposition Notice Topics 1 and 2 are relevant to the case at
hand, are not unduly burdensome to defendants, relate to products
that would be “reasonably similar” to accused products, and
should be answered by defendants at future depositions, as
applicable.
V.

Plaintiff’s Request for Rule 26(c)(2) Order.
Prism “requests that the Court compel Defendants to

provide complete responses to the discovery requests at issue in
the present motion” pursuant to Federal Rule of Civil Procedure
26(c)(2).

(Filing No. 374, at 19).

Rule 26(c)(2) states, “If a

motion for a protective order is wholly or partly denied, the
court may, on just terms, order that any party or person provide
or permit discovery.”

Fed. R. Civ. P. 26(c).

To ensure that

discovery proceeds in this action, the Court will grant Prism’s
request for a Rule 26(c)(2) order, to the extent that defendant’s
motion for protective order has been denied.

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Accordingly,

IT IS ORDERED:
1) Defendants’ motion for Rule 26(c) protective order
(Filing No. 330) is granted as to the following discovery
requests:
a) Requests for Admissions 13-14; and
b) Requests for Production 74-75.
2) Defendants’ motion for Rule 26(c) protective order
(Filing No. 330) is denied as to the following discovery
requests:
a) Requests for Admissions 1-12;
b) Requests for Production 71-73;
c) Interrogatories 2 and 9; and
d) Rule 30(b)(6) Deposition Notice Topics 1 and 2.
3) Prism’s motion to compel discovery is granted as to
those discovery requests listed in (2)(a)-(c) above.

Defendants

will have until January 6, 2012, to comply with such discovery
requests, to the extent that they have not already done so.

Each

defendant will file with the Court a certificate indicating such
compliance by January 6, 2012.

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4) At future depositions, defendants will answer
questions regarding Rule 30(b)(6) Deposition Notice Topics 1 and
2, as applicable.
DATED this 14th day of December, 2011.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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