Prism Technologies v. Adobe Systems Incorporated et al

Filing 411

MEMORANDUM AND ORDER - Prism's motion to compel (Filing No. 359 ) is granted, as follows: Prism will have until January 6, 2012, to submit to each defendant a letter documenting the status of Requests for Production 5, 14, 17, 36, 41, and 44, addressing each request for production individually, with regard to that particular defendant. Prism will file with the Court a certificate indicating its compliance with this requirement by January 6, 2012. Prism will have until Janua ry 20, 2012, to meet and confer, in person or by telephone, with each defendant or defendants counsel to discuss the contents of the January 6, 2012 letter regarding Requests for Production 5, 14, 17, 36, 41, and 44 and to come to a mutual unders tanding as to what Prism is requesting of each defendant. Prism will file with the Court a certificate indicating its compliance with this requirement by January 20, 2012. Defendants will have until February 3, 2012, to comply with such re quests for production, to the extent that they have not already done so. Each defendant will file with the Court a certificate indicating such compliance by February 3, 2012. No attorney fees and costs are awarded. 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 Prism’s motion

to compel filed pursuant to Federal Rule of Civil Procedure
37(a), with accompanying brief and indices of evidence (Filing
Nos. 359, 360, 361, 362, 363, and 365).

Defendants filed an

opposing brief with index of evidence (Filing Nos. 394 and 395),
and Prism filed a reply brief with index of evidence (Filing Nos.
407 and 408).

I.

“Meet and Confer” Requirement.
Both Federal Rule of Civil Procedure 37(a) and United

States District Court for the District of Nebraska local rule
7.0.1(i) require that the party moving to compel discovery must
“meet and confer” with the other party:

“The motion must include

a certification that the movant has in good faith conferred or
attempted to confer with the person or party failing to make
disclosure or discovery in an effort to obtain it without court
action.”

Fed. R. Civ. P. 37(a)(1).

In particular,

To curtail undue delay in the
administration of justice,
this court only considers a
discovery motion in which the
moving party, in the written
motion, shows that after personal
consultation with opposing parties
and sincere attempts to resolve
differences, the parties cannot
reach an accord. This showing must
also state the date, time, and
place of the communications and the
names of all participating persons.
“Personal consultation” means
person-to-person conversation,
either in person or on the
telephone. An exchange of letters,
faxes, voice mail messages, or
emails is also personal
consultation for purposes of this
rule upon a showing that
person-to-person conversation was
attempted by the moving party and
thwarted by the nonmoving party.
NECivR 7.0.1(i).

The purpose of the rule is to require the

parties to attempt to resolve disputes over the disclosure of
information among themselves before seeking court assistance.
-2-

Counsel and the parties are much more informed than the court
concerning the disputed issues.
Prism has filed a “Nebraska Civil Rule 7(i) Certificate
of Conference” with its motion, wherein it details phone calls
that it claims it had with each defendant regarding the
unsatisfied requests that it complains about in its motion to
compel (Filing No. 359, at 5-6).

Prism claims that it “has

endeavored not to reach out to the Court for help in the first
instance, but has instead conducted extensive meet and confer
efforts with the Defendants, most of which have been fruitless”
(Filing No. 360, at 4).
Defendants claim that “those statements are false”
(Filing No. 394, at 4).

Defendants claim that “Prism filed its

motion to compel . . . without engaging in the mandatory meetand-confer process” (Id.).

Defendants dispute most of the claims

made by Prism as to the content of the claimed phone calls.
Filing No. 394.

See

Many defendants claim that they would have been

willing to discuss the matters more fully with Prism, but only if
Prism had been willing to withdraw the motion to compel.

E.g.,

Ex. 27, Filing No. 395, at 2.
However, Prism would only consider withdrawing the
motion to compel after having a further discussion about the
issues contained therein.

E.g., Ex. 27, Filing No. 395, at 4.

Prism claims that while “Defendants raised a variety of

-3-

objections to these RFPs [Requests for Production], during the
meet and confer process all Defendants eventually agreed to
produce technical documents responsive to these requests.”
(Filing No. 360, at 7).

Prism states, “Defendants’ argument that

Prism failed to comply with Local Rule 7.0.1(i) is unfounded.

As

evidenced by the 90 exhibits to Prism’s Motion to Compel, Prism
met and conferred with each Defendant regarding discovery
deficiencies and document production by telephone and followed up
with extensive correspondence” (Filing No. 407, at 14).
On the one hand, Prism claims that it met and conferred
with defendants about the disputed requests for production.
However, like defendants, the Court does not find evidence of
this in all instances in Prism’s proffered letters to defendants
“memorializing our . . . meet and confer.”
361, and letters cited therein.

See Ex. 1, Filing No.

On the other hand, by their

objections to Prism’s ostensible meet and confer compliance,
defendants have turned the meet and confer requirement into yet
another discovery issue in which the Court is invited to involve
itself.

The Court directs the parties to do more to shoulder the

laboring oar of identifying and resolving discovery disputes
themselves.
As a practical matter, the Court has no way to
determine what was actually discussed during any given phone
call.

The Court finds that while defendants have provided some

-4-

evidence to the contrary, on balance, Prism has made a
sufficient showing of an attempt to meet and confer to satisfy
the local rule, as evidenced by the documentation of phone calls,
letters, and emails between Prism and each defendant.
Nos. 361, 362, 363, 365, 395, and 408.

See Filing

The Court will not deny

Prism’s motion for lack of compliance with the meet and confer
requirement.
II.

Federal Rules of Civil Procedure 26(b) and 37(a).
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).

“Broad discovery is an important tool for the litigant, and so
‘[r]elevant information need not be admissible at the trial if
the discovery appears reasonably calculated to lead to the
discovery of admissible evidence.’”

WWP, Inc. v. Wounded

Warriors Family Support, Inc., 628 F.3d 1032, 1039 (8th Cir.
2011)(quoting Fed. R. Civ. P. 26(b)(1)).
That said, “the [district] court
must limit the frequency or extent
of discovery otherwise allowed ...
if it determines that ... the
burden or expense of the proposed
discovery outweighs its likely
benefit, considering the needs of
the case, the amount in
-5-

controversy, the parties’
resources, the importance of the
issues at stake in the action, and
the importance of the discovery in
resolving the issues.”
Id. (quoting Fed. R. Civ. Pro. 26(b)(2)(C)(iii)).
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.”
R. Civ. P. 37(a)(1).

Fed.

“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).

St.

198 F.R.D.

“The party resisting discovery has

the burden to show facts justifying its objection by
demonstrating that the time or expense involved in responding to
requested discovery is unduly burdensome.”

Whittington v. Legent

Clearing, L.L.C., No. 8:10CV465, 2011 WL 6122566, at *3 (D. Neb.
Dec. 8, 2011).
III.

Prism’s Motion to Compel.
Prism filed its complaint in this action on June 8,

2010.

Due to a discovery stay in place before an initial Markman

claim construction hearing, discovery did not begin until July
22, 2011, when this Court issued an order denying defendants’
motion for a summary judgment hearing schedule (Filing No. 198).
The Court also issued a progression order with a discovery
deadline of April 30, 2012 (Filing No. 199).

-6-

Thus, at this

point, the discovery period is approximately half over.

The

progression order also set the date of January 12, 2012, for a
second Markman claim construction hearing regarding the other
disputed claim terms in the ’288 patent.
Prism served its requests for production on all eight
defendants on the first date it could do so, July 22, 2011 (Ex.
1, Filing No. 361).

Included in those requests were the

contested Request Nos. 5, 14, 17, 36, 41, and 44.

Prism claims

that despite defendants’ agreement to comply, “Defendants have
continued to delay in producing the actual documents to Prism”
(Filing No. 360, at 7-8).

Prism states that “it is beyond

dispute that the technical documents Prism seeks from Defendants
are relevant to the issue of infringement” (Filing No. 360, at
11).
In addition to their complaint about the meet and
confer requirement, defendants complain that “Prism also argues
that it ‘urgently needs’ certain unspecified technical documents.
However, as evidenced in its motion, Prism has not even made the
effort to review the technical documents that have been produced”
(Filing No. 394, at 5).

Defendants state, “Prism declined or

simply did not respond to offers from most Defendants to make the
source code relating to activation for the accused CD-ROM
products available for Prism’s review” (Id.).

-7-

Prism replies, “If the Defendants have in their
possession technical documents that explain in illustrations and
plain English how their products operate, these documents are
highly relevant and should be produced” (Filing No. 407, at 4).
Further, “[w]ithout a doubt, many of these documents will become
trial exhibits” (Id.).

The Court will review the specifics of

the parties’ arguments with respect to each defendant.
A.

Adobe Systems Incorporated (“Adobe”).

At the time

Prism filed its motion, it claimed, “Adobe’s production does not
include many technical documents relating to the operation of
Adobe’s accused systems” (Filing No. 360, at 14).

In addition,

Prism claimed that Adobe’s “production of technical documents is
incomplete” due to the lack of responsive emails (Id.).

Prism

further states that the email files of Adobe employee Vivek
Misra, whom Prism has already deposed, “should have relevant
technical information regarding Adobe’s accused software
activation systems that should be produced” (Id.).

In addition,

Prism contends that Adobe should submit the responsive emails of
several other Adobe employees that “Mr. Misra identified as
having knowledge of the technical operation of Adobe’s accused
software activation system” (Id. at 15).

Prism cites a District

of Nebraska case to bolster its contention that responsive emails
are discoverable.

See Meccatech, Inc. v. Kiser, No. 8:05CV570,

2007 WL 1456211 (D. Neb. May 16, 2007).

-8-

Adobe claims that it “produced over 5,500 documents -including documents responsive to the requests at issue in
Prism’s motion -- before Prism filed its motion” (Filing No. 394,
at 13).

Adobe claims that it is “working to respond” to submit

“a few documents identified by Mr. Misra and documents that may
have been omitted from Adobe’s production due to technical
issues” (Id. at 15).
With regard to the production of email, Adobe claims
that Prism “has never provided any justification for such
production and never discussed this issue with counsel for Adobe”
(Id. at 13).

Adobe complains that “Prism’s further insistence

that Adobe collect and produce all responsive email of twelve
(12) specified Adobe employees is unjustified and nothing but an
attempt to raise the costs of litigation” (Id. at 16).

Without

citation to case law, Adobe claims, “It is increasingly
recognized that email is not generally relevant or discoverable
absent a showing of particularized or specific need” (Id.).
Like every discovery request, the requests for
production of email must comply with Rule 26(b)(1), which sets
the standard for relevance in discovery, as discussed above.
Moreover, Rule 26(b)(2)(c)(iii) stands to protect litigants from
undue “burden and expense.”

With regard to the production of

email, the Court finds that Adobe, as the “party resisting
discovery,” has not satisfied “the burden to show facts

-9-

justifying its objection by demonstrating that the time or
expense involved in responding to requested discovery is unduly
burdensome.”

Whittington, 2011 WL 6122566 at *3.

The Court

finds that Adobe has not satisfied its “burden of establishing
lack of relevancy or undue burden.”

St. Paul Reinsurance Co.,

Ltd., 198 F.R.D. at 511.
B.

Autodesk, Inc. (“Autodesk”).

At the time Prism

filed its motion, it claimed that Autodesk had “produced a total
of 97 documents,” but that with one exception, “all of the
documents . . . are publically available” (Filing No. 360, at
13).

Autodesk claims, “Other than contending that Autodesk has

not produced a large volume of ‘confidential’ technical
materials, Prism has not identified any substantive deficiencies
in the document production” (Filing No. 394, at 10).

“Moreover,

since the filing of Prism’s motion, Autodesk has produced over
10,000 pages of highly confidential technical documents” (Id.).
Prism replies that “Autodesk has not affirmed that its production
of technical documents is now complete” (Filing No. 407, at 10).
C.

McAfee, Inc. (“McAfee”).

At the time Prism filed

its motion, it claimed that McAfee had “produced no documents in
this case” until four days before, when it produced 274 documents
(Filing No. 360, at 16).

McAfee claims it has produced

“available documents responsive to the six RFPs at issue in
Prism’s motion” and that Prism “has not identified any

-10-

deficiencies in the content of the documents produced” (Filing
No. 394, at 23).

Prism replies that McAfee’s production “is

still deficient” (Filing No. 407, at 12-13).

Prism states,

“[E]ntirely missing from McAfee’s production are the documents
sufficient to show the structure and function or operation of the
software . . .” (Id. at 13).
D.

National Instruments Corporation (“National

Instruments”).

At the time Prism filed its motion, it claimed

that National Instruments had “produced only 261 documents in
this case” and that, “based on its review of NI’s production to
date, Prism has identified numerous technical documents that
should exist at NI but have yet to be produced” (Filing No. 360,
at 15).
In addition, as with Adobe, Prism claims that “NI
refuses to search any of its employees’ e-mail files for
documents responsive to Prism’s document requests” (Filing No.
360, at 15).

Prism contends that National Instruments is

required to submit the responsive emails of several employees
that “NI has itself identified as the individuals most
knowledgeable regarding its accused software activation systems”
(Id. at 16).
National Instruments states that it “has produced 261
confidential technical documents related to product activation

-11-

. . . [including] available documents responsive to the six RFPs
at issue in Prism’s motion” (Filing No. 394, at 19).

In

addition, National Instruments claims that some of the requested
documents are “generally not within the custody of control of NI”
(Id.).
With regard to the production of email, National
Instruments states that Prism’s request “is unjustified and
nothing but an attempt to raise the costs of litigation” (Id.).
National Instruments cites the arguments “noted above,” meaning
those given by Adobe, to bolster its claim that “[e]mails among
NI employees that touch upon this technology are tangential at
best and extremely unlikely to reveal anything more about the
design and operation of the accused technology” (Id. at 20).
As with Adobe, with regard to the production of emails,
the Court finds that National Instruments, as the “party
resisting discovery,” has not satisfied “the burden to show facts
justifying its objection by demonstrating that the time or
expense involved in responding to requested discovery is unduly
burdensome.”

Whittington, 2011 WL 6122566 at *3.

The Court

finds that National Instruments has not satisfied its “burden of
establishing lack of relevancy or undue burden.”

St. Paul

Reinsurance Co., Ltd., 198 F.R.D. at 511.
E.

Sage Software Inc. (“Sage”).

At the time Prism

filed its motion, it claimed that Sage had “produced a total of

-12-

97 documents” that consist of “Sage advertisements and software
brochures, installation guides, and pictures of software CDs”
(Filing No. 360, at 13).

Sage claims that it has “produced

documents responsive to Prism’s Requests for Production,
including the requests identified by Prism in its motion” (Filing
No. 394, at 10).

Sage states that it “produced an additional

306,000 pages of documents in response to Prism’s requests” and
that it “further expects to produce additional documents in
coming weeks” (Id.).

Prism replies that “Sage entirely misses

the point of Prism’s motion to compel” because “Sage’s mere
representation that it will eventually complete its production
sometime before the close of fact discovery in April 2012 does
not resolve the issue” (Filing No. 407, at 9).
F.

Symantec Corporation (“Symantec”).

At the time

Prism filed its motion, it claimed that Symantec had “produced
only 142 documents,” and that “[i]t is unclear whether Symantec
has completed its production of its technical documents” (Filing
No. 360, at 16).

Symantec claims that it has “offered to make

technical documents with the relevant source code available for
Prism’s inspection” that are “responsive to at least the six RFPs
at issue in Prism’s motion” (Filing No. 394, at 25).

However,

Symantec claims that Prism “has apparently made no effort to
review the produced documents” (Id.).

Prism replies that it “has

reviewed Symantec’s production” and that it “does not include

-13-

documents sufficient to show the structure and function or
operation of the software . . . .” (Filing No. 407, at 13).
Moreover, “Symantec also refuses to make any representation as to
the completeness of its production of technical documents” (Id.).
G.

The MathWorks, Inc. (“MathWorks”).

At the time

Prism filed its motion, it claimed that Mathworks had “produced
no documents in this case whatsoever” (Filing No. 360, at 12).
Since that time, like McAfee, MathWorks claims it has produced
“available documents responsive to the six RFPs at issue in
Prism’s motion” and that Prism “has not identified any
deficiencies in the content of the documents produced” (Filing
No. 394, at 23).

Prism replies that “MathWorks produced its

documents in a manner that made it impossible for Prism to
access” (Filing No. 407 at 13).
H.

Trend Micro Incorporated (“Trend Micro”).

At the

time Prism filed its motion, it claimed that Trend Micro had
“produced a total of only 41 documents” that consist of “case
filings, organizational charts, Trend Micro patents, and license
agreement documents” (Filing No. 360, at 12-13).

“Moreover, as

far as Prism can tell, none of these documents provide any
description regarding the technical operation of Trend Micro’s
accused software activation system” (Id. at 13).

Trend Micro

claims that even before Prism filed its motion, “Trend Micro made
available for inspection over 9,500 documents related to the

-14-

functionality of Trend Micro’s software product activation”
(Filing No. 394, at 7).

Furthermore, “Prism never inspected the

9,500 source code documents” (Id.).
Prism replies that “source code documents are not a
substitute for the technical documents requested in Prism’s RFPs”
(Filing No. 407, at 8).

Prism claims that the documents it is

requesting “would describe at a higher-level and in plain English
how Trend Micro’s accused systems operate” (Id.).

Prism

complains that as of the date of its reply, “Trend Micro has
produced a mere 41 non-source-code documents, none of which is
responsive to Prism RFP Nos. 5, 14, 17, 36, 41, and 44" (Id.).
* * *
Prism generally claims that at the time it finalized
its motion on November 10, 2011, some two and a half months after
Prism’s July 22, 2011, requests, the production of documents from
the majority of the defendants was meager (Chart, Filing No. 360,
at 9).

Since it filed the motion to compel, Prism acknowledges

an improvement in compliance (Chart, Filing No. 407, at 7).

The

Court recognizes that defendants have not been as forthcoming in
their document production as they might have been, particularly
prior to Prism’s filing of this motion.

Consequently, the Court

will grant Prism’s motion to compel, as outlined below.
However, the Court notes that Prism filed its motion to
compel against all eight defendants concerning the same six

-15-

requests for production.

The Court finds it surprising that

there would be such uniformity in the lack of compliance with
Prism’s discovery requests.
As noted above, defendants offer varying responses to
Prism’s demands, depending on the documents each individual
defendant has already produced.
befuddled by Prism’s motion.

Some defendants seem genuinely

Adobe: “Other than to assert that

it is entitled to email, Prism has not articulated any
deficiencies in Adobe’s collection and production of documents
with respect to the six RFPs at issue in Prism’s motion” (Filing
No. 394, at 15).

Autodesk: “In fact, the follow-up

communications after the [meet and confer telephone call] show
that the parties did not reach an impasse” (Filing No. 394, at
11).

Symantec: “[A]ll Prism alleges in its motion with respect

to Symantec is that ‘[i]t is unclear whether Symantec has
completed its production of technical documents.’ (Mot. At 13).
Prism therefore admittedly filed its motion without even knowing
whether it had a dispute as to the content of Symantec’s
production” (Filing No. 394, at 25-26).
Despite the submission of scores of pages of
correspondence among the parties, the Court finds a noticeable
lack of communication between Prism and defendants.

The Court

urges Prism, in particular, as it complies with the order set out
below, to be much more explicit about the exact nature of each

-16-

defendant’s supposed deficiencies in its responses to Requests
for Production 5, 14, 17, 36, 41, and 44.
IV.

Attorney Fees and Costs.
Federal Rule of Civil Procedure 37(a)(5)(A) provides:
If the motion [to compel] is
granted -- or if the disclosure or
requested discovery is provided
after the motion was filed -- the
court must, after giving an
opportunity to be heard, require
the party or deponent whose conduct
necessitated the motion, the party
or attorney advising that conduct,
or both to pay the movant’s
reasonable expenses incurred in
making the motion, including
attorney’s fees. But the court
must not order this payment if
. . . . (ii) the opposing party’s
nondisclosure, response, or
objection was substantially
justified . . . .

Fed. R. Civ. P. 37(a)(5)(A).

The Court finds that defendants’

nondisclosure was “substantially justified” under the
circumstances.

Thus, the Court will not award attorney fees and

costs to Prism.
Defendants request costs and attorney fees pursuant to
Federal Rule of Civil Procedure 37(a)(5)(B).

Because Prism’s

motion to compel will be granted, defendants’ request will be
denied.

Accordingly,
IT IS ORDERED:

Prism’s motion to compel (Filing No.

359) is granted, as follows:

-17-

1) Prism will have until January 6, 2012, to submit to
each defendant a letter documenting the status of Requests for
Production 5, 14, 17, 36, 41, and 44, addressing each request for
production individually, with regard to that particular
defendant.

Prism will file with the Court a certificate

indicating its compliance with this requirement by January 6,
2012.
2) Prism will have until January 20, 2012, to meet and
confer, in person or by telephone, with each defendant or
defendant’s counsel to discuss the contents of the January 6,
2012 letter regarding Requests for Production 5, 14, 17, 36, 41,
and 44 and to come to a mutual understanding as to what Prism is
requesting of each defendant.

Prism will file with the Court a

certificate indicating its compliance with this requirement by
January 20, 2012.
3) Defendants will have until February 3, 2012, to
comply with such requests for production, to the extent that they
have not already done so.

Each defendant will file with the

Court a certificate indicating such compliance by February 3,
2012.

-18-

4) No attorney fees and costs are awarded.
DATED this 16th day of December, 2011.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

-19-