Prism Technologies v. Adobe Systems Incorporated et al
MEMORANDUM AND ORDER - Prism's motion to compel (Filing No. 707 ) is granted in part and denied in part. 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 Trend
Micro Incorporated (“Trend”) to respond to various discovery
requests (Filing No. 707, with accompanying brief and indices of
evidence, Filing Nos. 708, 709, and 711).
Trend filed an
opposing brief with indices of evidence (Filing Nos. 725, 726,
and 727), and Prism filed a reply brief with indices of evidence
(Filing Nos. 749, 750, and 751).
The Court finds that the motion
to compel will be granted in part and denied in part.
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 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."
v. Sanders, 437 U.S. 340, 351 (1978).
Oppenheimer Fund, Inc.
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
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 an order granting its motion to compel
Trend to respond to several discovery requests,1 to which Trend
Interrogatory Nos. 12-14 and 18.
Interrogatory No. 1 asked Trend to “[i]dentify every Trend Micro
software product available for purchase by the public after
October 30, 2007, that is distributed at least in part on a
CD-ROM disc, DVD disc, or other physical object and can be
activated over the internet” (Ex. 5, Filing No. 709, at 3).
its supplemental response to Interrogatory No. 1 given on
November 18, 2011, Trend identified forty-three CD/DVD products
(Id. at 4-5).
Prism claims that Trend has not given complete
answers to Interrogatory Nos. 12-14 and 18 because the answers do
not include all forty-three CD/DVD products.
In addition, Prism
complains that for Interrogatory Nos. 13 and 14, Trend has used
different product names in its responses that do not correlate
with the forty-three names listed in its interrogatory response,
“further confusing the issue” (Filing No. 708, at 13).
With regard to Trend, Prism produced initial
infringement contentions on September 6, 2011 (Ex. 3, Filing No.
727), accusing seven CD/DVD products, and supplemental
Prism has supplied adequate evidence of compliance with
the Nebraska “meet and confer” rule for discovery motions (Filing
No. 708, at 6-9; see NECivR 7.0.1(i)).
infringement contentions on November 18, 2011 (Ex. 4, Filing No.
727), accusing Trend’s Endpoint Encryption suite of products.
Now, as of April 30, 2012, Prism has attempted to supplement its
infringement contentions a second time in order to include the
other thirty-six CD/DVD products previously identified by Trend,
for a total of all forty-three CD/DVD products (Ex. 1, Filing No.
Trend objects to Interrogatory Nos. 12-14 and 18 to the
extent that they request information for the newly accused
thirty-six CD/DVD products, stating,
[T]he true nature of Prism’s
requested relief is to have the
Court grant Prism after-the-fact
leave to amend its infringement
contentions to add 36 accused Trend
Micro products to the case, thereby
multiplying the accused Trend Micro
products six fold, and depriving
Trend Micro of any ability to take
discovery from Prism as to its
infringement position concerning
these 36 products.
(Filing No. 725, at 11).
In response to Prism’s November 18, 2011, supplemental
infringement contentions, Trend and the other defendants at the
time moved for a protective order with this Court (Filing No.
The Court issued an order in response to the motion
where it commented extensively on the relationship between
discovery requests and supplementation of infringement
contentions (December 14, 2011, Memorandum and Order, Filing No.
In that order, issued before the major Markman hearing on
January 12, 2012, this Court allowed further discovery regarding
Prism’s products that were “reasonably similar” to accused
products and approved, albeit after the fact, Prism’s November
18, 2011, supplemental infringement contentions.
However, also in the December 14, 2011, order, this
Court stated, “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” (Filing
No. 410, at 15).
Prism waited until three months after the
January Markman hearing to attempt to supplement its infringement
contentions a second time, without leave of Court.
attempt to offer new infringement contentions on the last day of
discovery, April 30, 2012, is not acceptable.2
While it is true
that this District does not have local patent rules that delimit
the dates by which infringement contentions must be made, this
Court clearly stated in the December 14, 2011, order that there
is a calculus by which to analyze the situation.
The Court notes
again that the Eastern District of Texas requires disclosure of
preliminary infringement contentions “before discovery has even
Connectel, LLC, v. Cisco Sys., Inc., 391 F. Supp. 2d
526, 527 (E.D. Tex. 2005).
As Prism correctly points out, discovery was extended
beyond this date for one limited purpose, to take depositions of
Trend employees living in Taiwan (Filing No. 679).
This Court’s more liberal policy of allowing Prism to
supplement its infringement contentions last December, ten months
before trial and almost a month before the major Markman hearing,
should not have been taken as a carte blanche that would allow
for supplementation at anytime thereafter.
infringement contentions at this late date in the discovery
process cannot possibly be in accord with “the primary purpose of
[patent infringement contentions, which] is to give a defendant
notice of a plaintiff’s specific theories of infringement.”
Honeywell Intern. Inc. v. Acer America Corp., 655 F. Supp. 2d
650, 655 (E.D. Tex. 2009).
Even though Trend itself did identify
the additional thirty-six CD/DVD products in its answer to
Prism’s Interrogatory No. 1, Trend still would have no way of
knowing whether or not Prism intended to claim infringement of
these products without timely supplemental infringement
contentions to that effect.
Prism states that Interrogatory Nos. 12-14 seek
“damages-related information” (Filing No. 708, at 6).
point, absent timely supplemental infringement contentions
regarding the other thirty-six non-accused products, the Court
cannot see that Prism’s discovery requests are now relevant as to
those products, even by discovery standards, that is, even by the
standard that asks if the discovery could at least lead to a
“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
Oppenheimer, 437 U.S. at 351.
Interrogatory No. 18 requests, “For each software
product identified by you in response to Prism Interrogatory No.
1, identify with specificity (e.g., name and version number) each
software activation system used by you to control the activation
of that product over the Internet” (Ex. 27, Filing No. 709,
Prism states, “[S]ince Trend refuses to provide a
complete answer to Interrogatory No. 18, which asks for nothing
more than a basic identification of the activation system used by
Trend for the 43 Trend CD/DVD products, Prism remains in the dark
as to exactly which of these products, if any, utilize a
different software activation system than the currently accused
system” (Filing No. 749, at 12).
Although the forty-three CD/DVD products were
identified by Trend on November 18, 2011, Interrogatory No. 18
was not served on Trend until March 20, 2012, four months later,
and two months after the January 12, 2012 Markman hearing.
Court finds that Prism has not shown good cause as to why this
interrogatory, which asks for “basic information” and seems to be
leading to the newly proposed infringement contentions, could not
have been issued months earlier, before the January 12, 2012,
Markman hearing, so that responses could have led to supplemental
infringement contentions at a reasonable time in the discovery
Even a prompt response from Trend in April 2012 would
have necessitated Prism to supplement its infringement
contentions within only days or weeks of the close of discovery,
which the Court finds to be too late to afford Trend adequate
As to the naming problem, the Court is surprised that
its help is needed with such an elementary issue.
to the extent that direction is required, Trend will use whatever
“uniform naming convention” is necessary so that its
interrogatory responses for each product can be understood to
correspond to products previously identified to Prism.
Accordingly, the Court grants Prism’s motion to compel
Trend to produce full, complete, and correct responses to
Interrogatory Nos. 12-14 and 18, but only as to the accused
products identified in Prism’s infringement contentions dated
September 6, 2011, and November 18, 2011.
Trend shall answer
such interrogatories fully and completely to the extent it has
not already done so, using uniform naming conventions.
other respects, Prism’s motion to compel Trend to produce
responses to Interrogatory Nos. 12-14 and 18 will be denied.
Interrogatory Nos. 15 and 29.
Interrogatory No. 15
“asks Trend to state the quarterly costs of goods sold, broken
down by sales channels, for the accused products in the U.S., so
that Prism can meaningfully understand Trend’s allocation of COGS
(‘costs of goods sold’) for the products at issue in this case,
for Prism’s damages analysis” (Filing No. 708, at 14).
complains that Trend’s response does not allow Prism to
“correlate the listed costs to ‘each software product identified
in [Trend’s] response to Interrogatory No. 1,’ as the
Interrogatory requests” (Id.).
Trend responds that “Trend Micro does not store costs
data on a per-product basis,” quoting its corporate designee:
“[W]e don’t record expenses by product … it’s by group and by
department … I pull [costs] by department, not by product,
because we don’t record it that way” (Filing No. 725, at 17-18).
Trend explains that its corporate designee, Erika Knapman, “also
made clear that she could not collect expense data per product:
‘… by product expense, by product, I can’t do that.’” (Id. at
Trend concludes, “Prism is therefore seeking additional
information that does not exist” (Id.).
Prism does not respond
to this specific testimony, only citing earlier, more general
testimony from Ms. Knapman’s deposition.
The Court will not require Trend to produce information
Trend has avowed to the Court is impossible to produce.
Accordingly, Prism’s motion to compel as to Interrogatory No. 15
will be denied.
Interrogatory No. 29 states:
State in detail, by category and
amount on a monthly, quarterly, or
annual basis from 2006, to the
present, your costs for purchasing,
licensing, acquiring, building,
maintaining, managing, and/or using
the systems and methods used by you
to activate software over the
(Filing No. 708, at 10).
Prism complains that Trend has provided
“no response at all” to Interrogatory No. 29 (Id.).
responds that such information is not available because “Trend
Micro does not track costs associated particularly with the
product activation component of Trend Micro’s software” (Filing
No. 725, at 18).
Trend states, “To the extent Trend Micro has
costs information even approaching what Prism is seeking, which
would be costs for its consumer business unit and the other costs
set forth in the costs spreadsheet described above, Trend Micro
already has provided that information in the costs spreadsheet”
“To the extent Prism is seeking additional information in
response to Interrogatory No. 29, Trend Micro cannot provide such
information as it does not exist, as Trend Micro explained to
Prism during the meet and confer process”
Prism explains, “This interrogatory is not limited to a
software component, and Trend has not explained why it cannot
provide costs associated with, for example (and without
technology and patent licenses; the purchase and
operation of servers, databases, and other hardware and
infrastructure components; and the materials and labor used to
build, operate and maintain the various components of Trend’s
activation systems and methods” (Filing No. 749, at 16).
Court finds that Prism’s elucidation of Interrogatory No. 29 is
substantially different and more expansive than what is suggested
by the language used in the interrogatory itself, and that
Prism’s new elucidation amounts to a supplemental interrogatory
that is not allowed after the close of discovery.
Prism’s motion to compel as to Interrogatory No. 29 will be
Request for Production of Documents Nos. 50 and
Request for Production of Documents No. 50 “seeks
information showing on a monthly, quarterly or annual basis the
gross profits generated and/or recognized by Trend as a result of
the sale of the accused technology at issue” (Filing No. 708, at
Prism states that “Trend has failed to provide any
documents responsive to this RFP” (Id.).
Trend responds that
“Ms. Knapman spent substantial effort preparing a second
spreadsheet of financial information, which contains thousands of
cells of revenue data” (Filing No. 725, at 19).
apparently seeking further information that would be calculated
using costs and expenses on a per-product basis.
But such data
does not exist, as was explained to Prism during Ms. Knapman’s
deposition and during the meet and confer process . . .” (Id. at
Prism replies, “The fact that Trend produced certain
other financial information does not satisfy RFP No. 50’s request
for gross profits data and does not allow Prism to calculate the
gross profits . . .” (Filing No. 749, at 17).
Request for Production of Documents No. 54 “asks for
documents sufficient to show the costs and/or expenses deducted
by Trend from net revenues to calculate net profits for the
accused technology” (Filing No. 708, at 16).
complains that Trend has not complied.
Trend responds, “Trend
Micro provided the best information that it has on this issue in
the costs spreadsheet described above. . . . In addition, Trend
Micro’s document production also includes, for example, Trend
Micro annual reports with various expense, revenue, and profit
calculations” (Filing No. 725, at 19).
“To the extent Prism
is seeking specific cost information on a product-by-product
basis, Ms. Knapman testified that such information does not exist
. . .” (Id.).
Prism replies, “[S]preadsheet TM90000386 (Exhibit 37) –
purportedly responsive to RFP No. 54 – does not contain
costs/expenses data to show how Trend derives net profits from
net revenues on a per-product basis, as requested in the RFP.
Rather, it contains only a single ‘Cost of Goods Sold’ line item”
(Filing No. 749, at 17).
Prism concedes, “As for providing the
data on a per-product basis, Prism understands Trend’s claim that
it may not track Costs of Goods Sold in this manner (Opp. at 13,
15), but Trend has never stated that it does not track other
costs and expenses on a per-product basis for purposes of
deriving net profits from net revenues” (Id.).
“Trend should be compelled to produce the information, or if it
truly does not exist, to provide a verified discovery response to
that effect” (Id. at 18).
The Court agrees.
will either produce the information in Request for Production of
Documents Nos. 50 and 54, or, if the requested information does
not exist, Trend will inform the Court of that fact by filing an
Interrogatory Nos. 21-23 and Request for Production
of Documents Nos. 102-103.
Prism seeks to compel Trend to
respond to Interrogatory Nos. 21-23 and Request for Production
Nos. 102-103 involving “activation statistics and related
financials pertaining to Trend’s use of its U.S.-based activation
system to activate software installed on client computers located
abroad” (Filing No. 708, at 9).
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 Trend 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.
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. 708, at 17).
Thus, “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 Trend’s software outside the United States “uses” the
software in the context of its claims of infringement by Trend.
Rather, Prism’s argument stems from its contention that Trend’s
customers are not the only users of the accused system.
states that it will argue at trial that “Trend makes its own use
of the infringing system for its own benefit.
Indeed, Prism will
seek to prove that Trend directly infringes by controlling and
operating its activation system to its own advantage, namely
anti-piracy and license enforcement benefits” (Filing No. 708, at
In support of its contention that foreign sales do lead
to infringement by Trend, 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. 708, at 18).
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.’”
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:
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 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.
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
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. 708, at
In its opposition to Prism’s motion, Trend 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, 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.”
Centillion, 631 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.”
(citing NTP, 418 F.3d at 1317).
Id. at 1284
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 accused system.
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.”
The Centillion court also held that Qwest was not
vicariously liable for the use of its customers. Centillion, 631
F.3d at 1287.
Trend emphasizes the fact that both NTP and Centillion
established that “the use of the system as a whole” occurs where
the end user, or customer, “puts the system into service” (Filing
No. 725, at 21).
Prism disagrees with Trend’s conclusion,
emphasizing that NTP and Centillion were decided with the
emphasis on the end user, or customer, because of the specific
facts presented by those cases.
“Trend appears to be claiming
that these cases establish black-letter law stating that systems
with disparately-located components can only be ‘used’ by
This claim is incorrect; Trend is merely stating the
end-result of these courts’ analyses as to the specific facts of
specific cases” (Filing No. 749, at 24).
For example, Prism
claims that “Centillion is distinguishable on its facts,” and
that the distinction is dispositive (Id.).
In 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 Trend 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 Trend.
187 is about ‘controlling access to protected computer
resources,’ which Trend does for its own benefit, without regard
for customer demand” (Filing No. 749, at 24).
“Thus Prism has
asserted a valid theory of infringement, and Trend’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 Trend, not Trend’s
customers, such that it would be Trend who would “use” the system
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 Trend’s “use” of the accused
system will succeed.
However, the Court finds that Prism’s
discovery requests are relevant to its infringement claim
involving Trend’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.
707) is granted in part and denied in part, as follows:
1) Prism’s motion to compel Trend to produce responses
to Interrogatory Nos. 12-14 and 18 is granted, but only as to the
accused products identified in Prism’s infringement contentions
dated September 6, 2011, and November 18, 2011.
answer such interrogatories fully and completely to the extent it
has not already done so, using uniform naming conventions.
all other respects, Prism’s motion to compel Trend to produce
responses to Interrogatory Nos. 12-14 and 18 is denied;
2) Prism’s motion to compel Trend to produce responses
to Interrogatory Nos. 15 and 29 is denied;
3) Prism’s motion to compel Trend to produce responses
to Requests for Production of Document Nos. 50 and 54 is granted.
Trend shall either produce the requested information, or, if the
requested information does not exist, Trend shall inform the
Court of that fact by an affidavit filed on or before August 8,
On or before August 8, 2012, Trend will
substantively respond to Prism’s Fourth Set of Requests for
Production (Requests 102-103) and Prism’s Sixth Set of
Interrogatories (Nos. 21-23); and
5) Trend will file with the Court a certificate of
compliance with this order on or before August 8, 2012.
DATED this 26th day of July, 2012.
BY THE COURT:
/s/ Lyle E. Strom
LYLE E. STROM, Senior Judge
United States District Court
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