Prism Technologies v. Adobe Systems Incorporated et al

Filing 955

ORDER - Defendants' motion (Filing No. 884 ) is granted in part, and the amended final progression order (Filing No. 482 ) is amended as follows: 1) On or before September 18, 2012, Prism will produce to defendants a fully unredacted copy of the April 2010 Korth deposition transcript, along with Exhibits 9, 12, and 13 thereto; 2) Defendants may conduct one half-day deposition of each of the following Prism employees: Greg Duman, Rick Gregg, and Jerry Korth. Such depositions will be compl eted by October 23, 2012. In addition, defendants may conduct a full-day deposition of one relevant third party, also to be completed by October 23, 2012. Defendants may also demand additional production of documents from Prism on or before October 2 3, 2012. The issues covered in the depositions and any additional documents that defendants demand Prism to produce shall be limited in scope as described above; 3) The motions for summary judgment currently before the Court will not be considered at this time. If any party chooses to do so, it may submit a "Supplemental Brief" in further support of its motion for summary judgment on or before November 13, 2012. If a supplemental brief is filed, the opposing party may file a " Supplemental Reply Brief" on or before November 20, 2012. The Court will consider the motions to be fully briefed as of November 20, 2012. If the Court deems it necessary to hear oral argument on the motions, the Court will so inform the parties . Jury Trial set for 1/14/2013 at 09:00 AM in Courtroom 1, Roman L. Hruska Federal Courthouse, 111 South 18th Plaza, Omaha, NE before Senior Judge Lyle E. Strom. If the parties desire to have another pretrial conference, they shall advise the Court on or before December 21, 2012. Defendants' motion for leave to file a supplemental reply brief (Filing No. 949 ) is denied as moot. Ordered by Senior Judge Lyle E. Strom. (AOA)

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

)
)
Plaintiff,
)
)
v.
)
)
McAFEE, INC.; SYMANTEC
)
CORPORATION; and TREND MICRO )
INCORPORATED,
)
)
Defendants.
)
______________________________)

8:10CV220

ORDER

This matter is before the Court on defendants’
expedited motion to continue trial, reopen discovery, and compel
production of improperly withheld documents (Filing No. 884, with
brief and indices of evidence, Filing Nos. 889, 887, and 888).
Plaintiff Prism Technologies, LLC (“Prism”) filed a brief in
opposition (Filing No. 896, with index of evidence, Filing No.
895), to which defendants replied (Filing No. 915, with index of
evidence, Filing No. 916).

On September 11, 2012, the Court held

a telephonic conference with the parties, and on September 14,
2012, the Court heard oral argument on the motion.

After review

of the motion, briefs, submitted evidence, oral argument, and
relevant law, the Court will grant defendants’ motion in part.
Defendants also filed a motion for leave to file a
supplemental reply brief in support of their motion to continue
trial (Filing No. 949, with index of evidence, Filing No. 951).
The Court will deny the motion as moot.

I.

Motion to Continue Trial.
Trial for this case is currently set to begin on

October 9, 2012 (Amended Final Progression Order, Filing No. 482,
at 3).

Defendants move the Court to modify the amended final

progression order to continue the trial until late January 2013
or soon thereafter (Filing No. 884, at 1).
In support of this request, defendants claim, “Without
justification for doing so, Prism improperly withheld highly
relevant documents, responsive to numerous document requests
served in July 2011, for the entire fact discovery period”
(Filing No. 889, at 6).

At a minimum, the Court agrees with

defendants that Prism improperly redacted the April 2010
deposition transcript of Jerry Korth and that Prism’s delay in
producing the mostly unredacted version in August 2012 prejudiced
defendants in their discovery efforts.

The Court will continue

the trial until January 2013.
II.

Motion to Compel Production.
“[T]he attorney-client privilege attaches when the

communication in question is made: ‘(1) in confidence; (2) in
connection with the provision of legal services; (3) to an
attorney; and (4) in the context of an attorney-client
relationship.’”

Harris v. D. Scott Carruthers & Assoc.,

8:09CV154, 2010 WL 610978 at *2 (D. Neb. Feb. 18, 2010) (quoting
United States v. BDO Seidman, LLP (BDO Seidman II), 492 F.3d 806,

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815 (7th Cir. 2007)).

In addition, Federal Rule of Civil

Procedure 26 provides, “Ordinarily, a party may not discover
documents and tangible things that are prepared in anticipation
of litigation or for trial by or for another party or its
representative . . . .”

Fed. R. Civ. P. 26(b)(3).

“But, subject

to Rule 26(b)(4), those materials may be discovered if:

(i) they

are otherwise discoverable under Rule 26(b)(1); and (ii) the
party shows that it has substantial need for the materials to
prepare its case and cannot, without undue hardship, obtain their
substantial equivalent by other means.”

Id.

Defendants seek to compel production of the following:
(1) the remaining two redacted paragraphs from the April 2010
Korth deposition transcript; (2) Exhibits 1, 9, 12, and 13 to the
April 2010 Korth deposition; and (3) sixty other documents that
Prism claims to be privileged (Entries 1, 2, 4, 140, 148, 149,
155, 160, 165, 167, 176, 186-210, 222-232, 238, 250-251, 254,
256-263, and 342 from Prism’s Second Amended Privilege Log).

The

Court has conducted an in camera review of these materials and
rules as follows.
First, the remaining redacted paragraphs on pages 76
and 77 of the April 2010 Korth deposition transcript and Exhibits
9, 12, and 13 thereto are not privileged and will be produced.
Second, Exhibit 1 to the April 2010 Korth deposition is
protected by the attorney-client privilege.

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Finally, the Court finds that entries 1, 2, 4, 140,
148, 149, 155, 160, 165, 167, 176, 186-210, 222-232, 238,
250-251, 254, 256-263, and 342 from Prism’s Second Amended
Privilege Log were created “in anticipation of litigation.”
Because the Court also finds that defendants have not proven that
they have a “substantial need for the materials to prepare
[their] case,” those sixty entries will remain privileged.
III.

Motion to Reopen Discovery.
Defendants seek to modify the amended final progression

order to allow for additional discovery.

“To be clear, the

Defendants are not seeking to reopen discovery on all issues in
the case.

Instead, the Defendants seek to reopen discovery only

on issues reasonably related to the late-produced documents”
(Filing No. 889, at 22-23).

“Defendants ask only to be able [to]

take the discovery they would have taken if the documents Prism
produced two weeks ago had been properly produced during the fact
discovery period” (Id. at 23).
Because the Court finds that defendants have been
prejudiced due to Prism’s delayed production, the Court will
allow defendants to conduct additional discovery, but only as to
issues related to the following: (1) the now unredacted portions
of the April 2010 Korth deposition transcript, including the
portions unredacted in August 2012 and the last two paragraphs
ordered to be unredacted above; (2) the nine documents produced

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by Prism in August 2012;1 and (3) Exhibits 9, 12, and 13 to the
April 2010 Korth deposition.

Accordingly,

IT IS ORDERED that defendants’ motion (Filing No. 884)
is granted in part, and the amended final progression order
(Filing No. 482) is amended as follows:
1) On or before September 18, 2012, Prism will produce
to defendants a fully unredacted copy of the April 2010 Korth
deposition transcript, along with Exhibits 9, 12, and 13 thereto;
2) Defendants may conduct one half-day deposition of
each of the following Prism employees:
and Jerry Korth.
23, 2012.

Greg Duman, Rick Gregg,

Such depositions will be completed by October

In addition, defendants may conduct a full-day

deposition of one relevant third party, also to be completed by
October 23, 2012.

Defendants may also demand additional

production of documents from Prism on or before October 23, 2012.
The issues covered in the depositions and any additional
documents that defendants demand Prism to produce shall be
limited in scope as described above;
3) The motions for summary judgment currently before
the Court will not be considered at this time.

If any party

chooses to do so, it may submit a “Supplemental Brief” in further
support of its motion for summary judgment on or before November

1

Exhibits 7, 8, 10, and 11 to the January 2006 Korth
deposition, Exhibits 5, 6, 7, and 8 to the April 2010 Korth
deposition, and the additional July 2, 2007, email chain.
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13, 2012.

If a supplemental brief is filed, the opposing party

may file a “Supplemental Reply Brief” on or before November 20,
2012.

The Court will consider the motions to be fully briefed as

of November 20, 2012.

If the Court deems it necessary to hear

oral argument on the motions, the Court will so inform the
parties.
4) Trial in this matter is set for
Monday, January 14, 2013 at 9 a.m.
Courtroom No. 1, Fourth Floor, Roman L. Hruska United States
Courthouse, 111 South 18th Plaza, Omaha, Nebraska.
5) If the parties desire to have another pretrial
conference, they shall advise the Court on or before December 21,
2012.
6) Defendants’ motion for leave to file a supplemental
reply brief (Filing No. 949) is denied as moot.
DATED this 17th day of September, 2012.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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