Prism Technologies v. Adobe Systems Incorporated et al

Filing 679

MEMORANDUM AND ORDER - Prism's motion to compel (Filing No. 583 ) is granted, as follows: Trend Micro will have until May 22, 2012, to specifically designate the witnesses who will testify on its behalf as to topics 1(c)-(e), 2(c)-(e), and 3, and to set out the matters on which each person designated will testify. Prism and Trend Micro will have until May 31, 2012, to meet and confer, in person or by telephone, to identify the date and time of the Rule 30(b)(6) depositions. The Rule 30(b)(6) depositions will take place at the principal place of business of Trend Micro, in the state of California, on or before June 29, 2012. 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.; )
SYMANTEC CORPORATION;
)
and TREND MICRO INCORPORATED, )
)
Defendants.
)
______________________________)

8:10CV220

MEMORANDUM AND ORDER

Before the Court is the motion of plaintiff Prism
Technologies, LLC (“Prism”) to compel defendant Trend Micro
Incorporated (“Trend Micro”) to produce Rule 30(b)(6) witnesses,
filed pursuant to Federal Rule of Civil Procedure 37(a), with
accompanying brief and index of evidence (Filing Nos. 583, 584
and 585).

Trend Micro filed an opposing brief with index of

evidence (Filing Nos. 613 and 614), and Prism filed a reply brief
with index of evidence (Filing Nos. 663 and 664).

After

reviewing the motion, briefs, evidence, and relevant law, the
Court finds that the motion to compel will be granted.
Prism is a Nebraska limited liability company, but has
retained counsel in Northern California for the purposes of this
action.

Trend Micro is a California corporation, with its

principal place of business in Cupertino, California.

Trend

Micro has also retained counsel in Northern California for the

purpose of this action.

Trend Micro is a wholly owned subsidiary

of a Japanese corporation of the same name.
On February 29, 2012, Prism served an amended Rule
30(b)(6) deposition notice on Trend Micro, including topics
1(c)-(e), 2(c)-(e), and 3 that “relate to the functioning and
technical operation of Trend’s accused infringing systems” in
this patent case (Filing No. 583, at 1-2).

Trend Micro has

listed four potential witnesses for these topics, all of whom
live in Taiwan, and only two of whom have the appropriate visas
that would allow them to travel to the United States.
The parties disagree as to where the depositions on
these topics should occur.

Prism states that the depositions

should occur in Northern California, at the principal place of
business of Trend Micro.

At issue in this case is possible

patent infringement by Trend Micro.

The source code associated

with Trend Micro’s products has been made available to Prism for
inspection at the offices of Trend Micro’s counsel in Northern
California, near Trend Micro’s principal place of business.

The

source code is contained in over 43,000 files and is subject to
the Court’s protective order.

Prism maintains that having close

access to all of the source code during the depositions would
facilitate the interview of Trend Micro’s witnesses.

Moreover,

Prism maintains that it would be more efficient for a few Trend
Micro witnesses to travel from Taiwan to California, rather than

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for both teams of lawyers to travel from California to Taiwan,
carrying with them extensive documentation of the source code (to
the extent possible while complying with the protective order).
Trend Micro disagrees.

Trend Micro states that “the

only Trend Micro employees who can meaningfully testify on the
deposition topics at issue in this motion live and work in
Taiwan, and those witnesses should be deposed there” (Filing No.
613, at 1).

However, notably, Trend Micro does not claim that

any of the topics at issue can only be addressed by one of the
Trend Micro employees without visas.

In addition to the expense

and inconvenience of travel for the witnesses, Trend Micro states
that its business would suffer due to their absence from Trend
Micro’s operations in Taiwan.
I.

“Meet and Confer” Requirement.
United States District Court for the District of

Nebraska local rule 7.0.1(i) requires that the party moving to
compel discovery must “meet and confer” with the other party
before filing a motion compelling discovery.

Prism has

documented its extensive efforts at resolving the present
discovery dispute without Court intervention.

The Court is

appreciative of the parties’ efforts to resolve this problem
independently.

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II.

Prism’s Motion to Compel.
Federal Rule of Civil Procedure 30(b)(6) states,
In its [deposition] notice
[directed to an organization],
. . . a party may name as the
deponent a public . . . corporation
. . . and must describe with
reasonable particularity the
matters for examination. The named
organization must then designate
one or more officers, directors, or
managing agents, or designate other
persons who consent to testify on
its behalf; and it may set out the
matters on which each person
designated will testify.

Fed. R. Civ. P. 30(b)(6).

In the event of noncompliance with a

discovery request, such as a Rule 30(b)(6) deposition notice,
Rule 37(a) provides, “[A] party may move for an order compelling
disclosure or discovery.”

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

“The party

resisting production bears the burden of establishing . . . undue
burden.”

St. Paul Reinsurance Co., Ltd. v. Commercial Fin. Corp.

198 F.R.D. 508, 511 (N.D. Iowa 2000).
“It is well settled that the district court has great
discretion in designating the location of taking a deposition
. . . .”
1975).

Thompson v. Sun Oil Co., 523 F.2d 647, 648 (8th Cir.
Generally, a Rule 30(b)(6) deposition is taken at the

corporation’s principal place of business.

8A Charles Alan

Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice
and Procedure § 2112 (3d ed. 2010).

“This customary treatment is

subject to modification, however, when justice requires.”
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Id.

The Court is sympathetic to the inconvenience and
expense that any Taiwanese deponents, and Trend Micro itself,
might incur as a result of traveling to the United States for the
depositions.

Nevertheless, on balance, Trend Micro has not

established that having its Rule 30(b)(6) witnesses appear at the
site of its own principal place of business in California is an
undue burden to the extent that the Court would depart from the
general rule.

Therefore, the Court will order that the

depositions regarding the topics at issue in this motion will
take place in California.

To the extent that this order is in

conflict with the amended progression order dated February 28,
2012 (Filing No. 482), this order supersedes the amended
progression order.

Accordingly,

IT IS ORDERED that Prism’s motion to compel (Filing No.
583) is granted, as follows:
1) Trend Micro will have until May 22, 2012, to
specifically designate the witnesses who will testify on its
behalf as to topics 1(c)-(e), 2(c)-(e), and 3, and to set out the
matters on which each person designated will testify.
2) Prism and Trend Micro will have until May 31, 2012,
to meet and confer, in person or by telephone, to identify the
date and time of the Rule 30(b)(6) depositions.

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3) The Rule 30(b)(6) depositions will take place at the
principal place of business of Trend Micro, in the state of
California, on or before June 29, 2012.
DATED this 15th day of May, 2012.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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