Prism Technologies v. AT&T et al

Filing 214

MEMORANDUM AND ORDER - IT IS ORDERED: AT&T's motion regarding RFA Nos. 223, 224, 225, 226 and 233 is granted. Plaintiff shall respond to those requests for admission by May 2, 2014. The remainder of AT&T's motion to compel is denied as moot. Ordered by Senior Judge Lyle E. Strom. (TCL )

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

)
)
Plaintiff,
)
)
v.
)
)
AT&T MOBILITY, LLC,
)
)
Defendant.
)
______________________________)

8:12CV122

MEMORANDUM AND ORDER

This matter is before the Court on the motion of the
defendant to compel discovery (Filing No. 196).

The defendant

has also filed an accompanying brief (Filing No. 197) and index
of evidence (Filing No. 198).

The plaintiff filed a reply brief

(Filing No. 205) with an index of evidence (Filing No. 206) in
opposition of the motion.
brief (Filing No. 210).

The defendant has filed its reply
The Court will grant the motion in part

and deny it in part.
I.

BACKGROUND
The plaintiff, Prism Technologies, L.L.C. (“Prism”),

has brought a patent infringement action against the defendant,
AT&T Mobility, L.L.C. (“AT&T”).

Under Rule 37 of the Federal

Rules of Civil Procedure, AT&T moves to compel Prism to admit the
authenticity of certain documents and to describe in detail the
secondary indicia of non-obviousness in Interrogatory number 4.
Filing No. 196, at 2.

II.

LAW
Requests for admission may be served under Fed. R. Civ.

P. 36(a) on matters related to, among other things, the
genuineness of any described documents.

The purpose of Rule

36(a) is to expedite trial by eliminating the necessity of
proving undisputed issues, thus narrowing the range of issues for
trial.

See Qausis v. Schwan Food Co., 596 F.3d 947, 959 (8th

Cir. 2010).

It has long been held that a party has no right to

categorically deny an allegation that it knows or believes to be
true, for the sole purpose of forcing its adversary to bear the
burden and cost of its proof.
443 (D. Neb. 1950).

United States v. Long, 10 F.R.D.

Moreover, when good faith requires that a

party qualify an answer or deny only a part of a matter, the
answer must specify that part admitted and qualify or deny the
rest.

Fed. R. Civ. P. 36(a)(4).

A requesting party may move to

determine the sufficiency of an answer or objection to any
request for admission, and on finding that an answer does not
comply with the rules, the Court may order either that the matter
is admitted or that an amended answer be served.

See Praetorian

Insurance Co. v. Site Inspection, LLC, 604 F.3d 509 (8th Cir.
2010); Fed.R.Civ.P. 36(a)(6).

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III. REQUESTS FOR ADMISSIONS.
In its Requests for Admissions (“RFAs”), AT&T asked the
following four statements be admitted or denied:
[RFA No. 236]: The documents
produced by Prism are authentic
under Federal Rule of Evidence 901;
[RFA No. 238]: The documents
produced by Prism are business
records kept in the regular and
ordinary course of Prism’s
business;
[RFA No. 239]: The documents
produced by Prism are business
records created by a Prism employee
or employees working within the
scope of his or her employment when
making the writing; and,
[RFA No. 240]: The documents
produced by Prism are true and
correct copies of what they purport
to be.
Filing 198-2, at 204-05.

In addition, AT&T objects to Prism’s

categorical denial of prior art documents which Prism submitted
to the patent office.

Filing No. 197, at 3.

Specifically, Prism

denied knowledge of when Bates numbers JDG_PRISM_INV_0009666JDG_PRISM_INV_0009807 (“JDG Documents”) were published and Prism
did not expressly admit or deny the truth of information
disclosures Prism submitted to the United States Patent and
Trademark Office (“PTO Documents”).
122, 223, 224, 225, 226 and 233.
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Filing No. 198-2, RFA Nos.

A. Burden of Authentication.
Under the Federal Rules of Evidence 901, for one to
authenticate an item of evidence, “the proponent must produce
evidence sufficient to support a finding that the item is what
the proponent claims it is.”

Fed. R. Evid. 901(a).

Here, AT&T

has requested that Prism meet AT&T’s burden for authenticating
documents that AT&T may offer at trial.

Although the Court has

found anecdotal information regarding the practice of admitting
authenticity in RFAs, the Court finds no authority to compel a
party to admit the authenticity of documents which they produced
during discovery.

Fed. R. Evid. 901 cmt. a (1972).

AT&T’s

motion regarding RFA No. 236 will be denied on this basis.
B. Overly Burdensome.
In addition, Prism objected to RFA Nos. 236, 238-240 on
the basis that it would be unduly burdensome to review the
thousands of documents on behalf of AT&T because AT&T made no
reference for which documents it might offer at trial.

The Court

will deny At&T’s motion regarding RFA Nos. 236, 238, 239 and 240.
See Hydro Eng’g, Inc. Petter Invs., Inc., No. 2:11-CV-139, 2013
WL 6621099, at *2 (D. Utah Dec. 16, 2013) (citations omitted).
C. Date of JDG Documents.
The Court finds that Prism sufficiently responded to
AT&T’s request as to when the JDG Documents were published.
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As

Prism stated, it did not publish the JDG Documents.
198-2, at 107-08.

Filing No.

Prism proffered that the JDG Documents were

“approved 14 June 2001 . . . 25 October 2001;” however, Prism
denied the RFA for lack of sufficient information.

Id.

Therefore, Prism sufficiently responded to the RFA and the Court
will deny AT&T’s motion regarding RFA No. 122.
D. PTO Documents.
In RFA Nos. 223-226, 233, AT&T asked Prism to admit
that Prism supplied “true and correct copies of the references”
Prism identified to the PTO.

Id. at 193-95, 200.

Prism stated

that it “endeavored to provide true and accurate copies of the
references Plaintiff identified to the PTO.”
this response inappropriate.

The Court finds

Id.

Under Fed. R. Civ. P 26, an answer must admit, deny or
state in detail why the answering party cannot truthfully admit
or deny it.

AT&T asked Prism to admit the PTO documents were

true and correct.

Prism’s “endeavors” to provide true and

accurate documents are non-responsive.

The Court will grant

AT&T’s motion regarding RFA Nos. 223, 224, 225, 226, 233.

Prism

will supplement its answers to these RFAs and those supplements
will either admit, deny, or explain why Prism cannot answer those
RFAs.

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IV.

INTERROGATORY NO. 4
Finally, AT&T contends that Prism provided an

insufficient response to Interrogatory No. 4.
4.

Filing No. 196, at

Since the filing of this motion to compel, Prism has provided

a third supplemental response to Interrogatory No. 4; therefore,
the motion to compel will be denied as moot.

Filing No. 208.

IT IS ORDERED:
1)

AT&T’s motion regarding RFA Nos. 223, 224, 225, 226

and 233 is granted.

Plaintiff shall respond to those requests

for admission by May 2, 2014.
2)

The remainder of AT&T’s motion to compel is denied

as moot.
DATED this 21st day of April, 2014.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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