Prism Technologies v. Adobe Systems Incorporated et al
MEMORANDUM AND ORDER - Prism's motion to compel (Filing No. 704 ) is granted. On or before July 31, 2012, Symantec will substantively respond to Prism's Fourth Set of Requests for Production (Requests 112-113) and Prism's Sixth Set of Interrogatories (Nos. 22-24). Ordered by Senior Judge Lyle E. Strom. (TEL)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,
ADOBE SYSTEMS, INCORPORATED; )
AUTODESK, INC.; McAFEE, INC.; )
and TREND MICRO INCORPORATED, )
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 respond to various discovery
requests (Filing No. 704, with accompanying brief and index of
evidence, Filing Nos. 705 and 706).
Symantec filed an opposing
brief with indices of evidence (Filing Nos. 732, 734, and 735),
and Prism filed a reply brief (Filing No. 747).
The Court finds
that the motion to compel should be granted.
Federal Rules of Civil Procedure 26(b) and 37(a).
“"Mutual knowledge of all the relevant facts gathered
by both parties is essential to proper litigation."
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).
Relevance during discovery is not
measured by the Federal Rules of Evidence:
need not be admissible at the trial if the discovery appears
reasonably calculated to lead to the discovery of admissible
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
Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir.
“Determinations of relevance in discovery rulings are
left to the sound discretion of the trial court . . . ."
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).
“The party resisting production bears the
burden of establishing lack of relevancy or undue burden.”
Paul Reinsurance Co., Ltd. v. Commercial Fin. Corp., 198 F.R.D.
508, 511 (N.D. Iowa 2000).
Prism’s Motion to Compel.
Prism seeks to compel Symantec to respond to its Fourth
Set of Requests for Production (Requests 112-113) “seeking
financial documents pertaining to Symantec’s use of its
U.S.-based software activation system to activate software sold
abroad” (Filing No. 704, at 1-2; Filing No. 747, at 11).
addition, Prism seeks to compel Symantec to respond to its Sixth
Set of Interrogatories (Nos. 22-24) “seeking activation data and
related financials pertaining to Symantec’s use of its U.S.-based
software activation system to activate software sold abroad” (Id.
The Patent Act states that “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.”
35 U.S.C. § 271(a).
At issue with this
motion is whether all elements of an accused system must exist on
U.S. soil in order for the infringement to occur “within the
Prism alleges that Symantec has infringed U.S. Patent
No. 7,290,288 (“‘288 patent”) in connection with software sold to
end users who live outside the territorial United States.
Prism has supplied adequate evidence of compliance with
the Nebraska “meet and confer” rule for discovery motions (Filing
No. 705, at 6; see NECivR 7.0.1(i)).
states, “The patent claims asserted in this case by [Prism]
include ‘system’ claims, which, under well-established law, can
be infringed in the United States even if some elements of the
accused system [here, the access key and the client computer] are
located outside the United States” (Filing No. 705, at 4).
“Prism seeks discovery sufficient to make a full calculation of
damages with respect to such claims” (Id.).
Prism does not appear to contend that the customer who
activates Symantec’s software outside the United States “uses”
the software in the context of its claims of infringement by
Rather, Prism’s argument stems from its contention
that Symantec’s customers are not the only users of the accused
Prism states that it will argue at trial that “Symantec
makes its own use of the infringing system for its own benefit.
Indeed, Prism will seek to prove that Symantec directly infringes
by controlling and operating its activation system to its own
advantage, namely anti-piracy and license enforcement benefits”
(Filing No. 705, at 10).
In support of its contention that foreign sales do lead
to infringement by Symantec, Prism cites Uniloc USA, Inc. v.
Microsoft Corp., 632 F. Supp. 2d 147 (D.R.I. 2009) (“Uniloc I”),
which Prism claims addresses the “precise circumstances of this
case” (Filing No. 705, at 4).
In Uniloc I, the court described
the issue at hand as follows:
While the parties tee this up as a
damages question, the issue is much
more fundamental: whether
Microsoft can be found to infringe
Uniloc’s ‘216 patent when part of
the MPA [Microsoft Product
Activation] system involves an
extraterritorial component. Put
another way, does Microsoft “use”
the claimed system “within the
United States” as required by 35
U.S.C. § 271(a) even when Product
Activation is used during
activation of software on a foreign
Uniloc I, 632 F. Supp. 2d at 155.
With regard to a system claim
of a patent, which both parties agree is at issue here, the
Uniloc I court noted, “use of a system claim may give rise to
infringement (and thus be included in damages) if the United
States is ‘the place at which the system as a whole is put into
service,’ i.e., ‘the place where control of the system is
exercised and beneficial use of the system is obtained.’”
156 (quoting NTP, Inc. v. Research in Motion, Ltd., 418 F.3d
1282, 1317-18 (Fed. Cir. 2005)).
Therefore, “a claim of
infringement is only actionable (and inclusion of foreign
licenses in the damages calculation proper) if the United States
is ‘the place at which the system as a whole is put into
service;’ i.e., ‘the place where control of the system is
exercised and beneficial use of the system is obtained.’”
In NTP, infringement was found to have occurred inside the
United States even when the defendant Research in Motion (RIM)’s
“relay,” part of the Blackberry system, was located in Canada.
The Uniloc I court noted, “When foreign individuals
obtain licenses and activate their Microsoft software via the
Microsoft Clearinghouse in the United States, the MPA system
truly is (as both parties acknowledge) ‘partly within and partly
outside’ the United States for purposes of infringement under
Uniloc’s § 271(a) theory, a system not unlike NTP.”
632 F. Supp. 2d at 156.
The Uniloc I court rejected Microsoft’s
conclusion that “all parts of a collective system must be within
the United States to infringe,” stating that this was “the
argument NTP rejected.”
The Uniloc I court resolved the
issue in this way:
Therefore, the questions that must
be answered before Microsoft’s
foreign licenses can be includable
in any damage calculation are:
1) where the system as a whole is
put into service; 2) where control
of the system is exercised; and
3) where beneficial use of the
system is obtained. Because the
answers to these questions are fact
intensive and will depend
substantially on the evidence at
trial, they are properly left for
the jury. Therefore, the Court
will allow evidence of foreign
The NTP court noted that an argument to the contrary “fails to
appreciate the way in which the claimed NTP system is actually
used by RIM’s customers. When RIM’s United States customers send
and receive messages by manipulating the handheld devices in
their possession in the United States, the location of the use of
the communication system as a whole occurs in the United States.
This satisfactorily establishes that the situs of the ‘use’ of
RIM’s system by RIM’s United States customers for purposes of
section 271(a) is the United States.” NTP, 418 F.3d at 1317.
licenses to be presented at trial;
however, the Court will instruct
the jury that it may only include
these licenses in the damage
calculation if the answer to each
of the above questions is the
United States. The Court will
require the jury to answer special
interrogatories to address the
above questions and further to
indicate how it arrived at any
damage award, by specifying the
number of domestic and foreign
licenses they found to be
Id. at 156-57.
Here, Prism argues for a similar result:
“Likewise, there is a fact-intensive inquiry yet to be performed
by the jury in this case on the question of foreign activations,
and Prism must be permitted to present relevant evidence,
including damages evidence, on that question” (Filing No. 705, at
In its opposition to Prism’s motion, Symantec relies on
the Federal Circuit’s analysis of the word “use” in a case that
“turn[ed] on what constitutes ‘use’ of a system or apparatus
claim under § 271(a).”
Centillion Data Sys., LLC v. Qwest
Communic’ns Int'l, Inc., 631 F.3d 1279, 1283 (Fed. Cir. 2011).
In Centillion, which Symantec claims involves “virtually
identical” facts to those at issue here, the Federal Circuit
noted, “We have never directly addressed the issue of
infringement for ‘use’ of a system claim that includes elements
in the possession of more than one actor.
However, we defined
the term in a very similar scenario in NTP.”
F.3d at 1283.
The Centillion court concluded, “We hold that to
‘use’ a system for purposes of infringement, a party must put the
invention into service, i.e., control the system as a whole and
obtain benefit from it.”
Id. at 1284 (citing NTP, 418 F.3d at
The court stated that while a user need not have
“physical or direct control” over every part of an accused
system, nevertheless, the user must “use” every element of the
Centillion, 631 F.3d at 1284.
Applying this standard to the facts before it, the
Centillion court concluded, “We agree with Qwest that, as a
matter of law, it does not ‘use’ the patented invention under the
appropriate test from NTP.
To ‘use’ the system, Qwest must put
the claimed invention into service, i.e., control the system and
obtain benefit from it.”
Id. at 1286.
“While Qwest may make the
back-end processing elements, it never ‘uses’ the entire claimed
system because it never puts into service the personal computer
data processing means.
Supplying the software for the customer
to use is not the same as using the system.”
Symantec emphasizes the fact that Centillion was
decided after Uniloc I.
Symantec states that “the Federal
Circuit’s holding in Centillion establishes that the issue of
The Centillion court also held that Qwest was not
vicariously liable for the use of its customers. Centillion, 631
F.3d at 1287.
foreign sales related to a system claim is an issue that can and
should be decided by the Court,” rather than by the jury, as the
district court concluded in Uniloc I “without the benefit of the
Federal Circuit’s analysis in Centillion” (Filing No. 732, at
Prism disagrees with Symantec’s conclusion that the
facts in Centillion are “virtually identical” to the facts of
this case, and claims that the distinction is dispositive.
Centillion, the patent at issue disclosed “a system for
collecting, processing, and delivering information from a service
provider, such as a telephone company, to a customer.”
Centillion, 631 F.3d at 1281.
The Centillion court considered
two “manners of operation” of the Qwest accused system.
“First, there is an on-demand function where a customer
seeks particular and specified information by creating a query
that the Qwest back-end system processes and provides a result
for download (on-demand operation).”
“Second, during the
normal functioning of the system after a user subscribes, Qwest’s
back-end systems create periodic summary reports (standard
operation) which are available for the user to download.”
Here, Prism is accusing Symantec of infringing only one
system claim, Claim 187.
Prism states that its “allegations are
different [from the Centillion case]; Claim 187 does not involve
a customer’s on-demand operation of software, and Prism is not
making a ‘use-of-software’ claim against Symantec.
Claim 187 is about ‘controlling access to protected computer
resources,’ which Symantec does for its own benefit, without
regard for customer demand” (Filing No. 747, at 8).
has asserted a valid theory of infringement, and Symantec’s
argument that it cannot possibly be a direct infringer of [the]
‘288 patent must fail” (Id.).
The Court finds that the
distinction between the Prism system claim and the Qwest system
claim in Centillion bears strong consideration.
The Prism patent
expressly describes a “system for controlling access to protected
computer resources provided via an Internet Protocol network”
(‘288 Patent at 51:1-2).
Prism reasonably argues that the
computer resources to be protected belong to Symantec, not
Symantec’s customers, such that it would be Symantec who would
“use” the system for protection.
Prism also cites the Federal Circuit’s opinion from the
second iteration of the Uniloc litigation, wherein defendant
Microsoft maintained that “Uniloc failed to prove direct
infringement because Microsoft did not supply or use the
end-users’ computers that implemented the local licensee unique
ID generating means and mode switching means.”
Uniloc USA, Inc.
v. Microsoft Corp., 632 F.3d 1292, 1308 (Fed. Cir. 2011), reh’g
denied (Mar. 22, 2011) (“Uniloc II”).
In rejecting Microsoft’s
argument, the Federal Circuit stated, “That other parties are
necessary to complete the environment in which the claimed
element functions does not necessarily divide the infringement
between the necessary parties.”
Uniloc II, 632 F.3d at 1309.
“For example, a claim that reads ‘An algorithm incorporating
means for receiving e-mails’ may require two parties to function,
but could nevertheless be infringed by the single party who uses
an algorithm that receives e-mails.”
At this stage of the litigation, the Court cannot say
whether or not Prism’s theory of Symantec’s “use” of the accused
system will succeed.
However, the Court finds that Prism’s
discovery requests are relevant to its infringement claim
involving Symantec’s accused use of its system, even when one
component of the system is physically located outside of the
IT IS ORDERED that Prism’s motion to compel (Filing No.
704) is granted.
On or before July 31, 2012, Symantec will
substantively respond to Prism’s Fourth Set of Requests for
Production (Requests 112-113) and Prism’s Sixth Set of
Interrogatories (Nos. 22-24).
DATED this 17th day of July, 2012.
BY THE COURT:
/s/ Lyle E. Strom
LYLE E. STROM, Senior Judge
United States District Court
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