Prism Technologies v. United States Cellular Corporation

Filing 166

MEMORANDUM AND ORDER - U.S. Cellular will produce the following RFPs within ten business days: 1, 2, 3, 11, 12, 16, 19, 20, 28, 37, 38, 39, 40, 41, 42, 55, 59, 60, 62, 63, 79, 96. U.S. Cellular will set a date certain when the following RFPs will be delivered to Prism: 22, 23, 24, 26, 27, 30, 32, 33, 34. The Court will wait to rule on these RFPs. The following RFCs are also denied without prejudice a this time: 13 and 66. Prism has five business days from the filing of this order to su pplement its original RFPs. U.S. Cellular has five business days to produce those requested documents after the request is made. The following RFPs are denied without prejudice: 56, 88, 25, 29, 31. On or before January 17, 2014, the parties shall meet and confer in good faith to "identify the proper custodians, search terms, and proper time frame" in order for Prism to create specific production requests according to the e-discovery order. Then, Prism will request production of specific discovery within ten business days of the parties' meet and confer. Ordered by Senior Judge Lyle E. Strom. (MKR)

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

)
)
Plaintiff,
)
)
v.
)
)
UNITED STATES CELLULAR
)
CORPORATION, d/b/a U.S.
)
CELLULAR,
)
)
Defendant.
)
______________________________)

8:12CV125

MEMORANDUM AND ORDER

This matter is before the Court on the status report of
the plaintiff, Prism Technologies, L.L.C. (“Prism”) (Filing No.
159) regarding an ongoing discovery dispute between the parties.
In its motion, Prism requested that the Court grant its prayer
for relief in its earlier motion to compel (Filing No. 134),
which the Court denied without prejudice (Filing No. 150).

The

defendant, United States Cellular Corporation (“U.S. Cellular”)
has responded to the status report (Filing No. 164).

The Court

finds that the status report should be granted in part and denied
in part.
I.

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).

Hickman v.

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:

“Relevant information

need not be admissible at the trial if the discovery appears
reasonably calculated to lead to the discovery of admissible
evidence.”

Id.

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
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 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.” Fed. R.
Civ. P. 37(a)(1).

“The party resisting production bears the

burden of establishing lack of relevancy or undue burden.”
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Prism

Tech., L.L.C. v. Adobe Sys. Inc., 284 F.R.D. 448, 449 (D. Neb.
2012).
II. Prism’s Motion to Compel.
Prism seeks to compel U.S. Cellular to respond to its
requests for production (“RFP”) for the following various
discovery items:
Defendant’s corporate structure,
defendants’ IP networks structure,
roaming agreements, defendant’s
proprietary interests in IP
networks, authorization statistics,
authorization licenses, analyses
regarding authentication systems
with authorization levels for
controlling data networks, netneutrality compliance, defendant’s
wireless software and hardware used
in defendant’s wireless data
network(s), defendant’s IP address
allocations, flow charts of
identity data used within
defendant’s data network.
Filing No. 159, at 2-3.

Also, Prism requests that the Court

intercede in an ongoing dispute regarding the parties’ Ediscovery agreement.
According to U.S. Cellular, Prism’s motion to compel
may be viewed in four groups: (1) Documents not contemplated
during their meet and confer; (2) “Third party network provider”
documents; (3) Net neutrality documents; and (4) Roaming
agreements (Filing No. 164).

In its first category, U.S.

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Cellular claims that Prism dropped its requested discovery from
its original motion to compel because it did not discuss those
documents during this Court’s mandated meet and confer.

Without

citation to case law or statute, U.S. Cellular claimed that any
relief that the Court may grant is improper.

Id. at 2.

In regard to “third party network provider” documents,
U.S. Cellular claims the term is too vague to produce discovery.
In regard to Prism’s request for net neutrality1
documents, U.S. Cellular first objected on the grounds of
relevance.

However, once Prism defined the term, U.S. Cellular

replied that it did not possess documents concerning its
compliance or noncompliance with net neutrality (Filing No. 1591, at 3).

U.S. Cellular maintains this assertion in its

responsive status report (Filing No. 164, at 3).
In regard to Prism’s request for roaming agreements,
U.S. Cellular states it is “in the process of completing the
steps required to give the parties to those agreements notice and
an opportunity to seek a protective order if they so desire”
(Filing No. 159-1, at 5; Filing 164, at 3-4.).

1

U.S. Cellular

Prism defines “net neutrality” as “the principle that
Internet service providers may not discriminate between different
kinds of content and applications online and should not choose
which data to privilege with higher quality service.” Filing No.
159-1, at 6.
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assured the Court that the product would arrive shortly, yet gave
no time frame (Filing No. 164, at 4).
III. Requests for Production
The Court has reviewed the parties’ positions.

The

Court finds the following RFPs are relevant and will grant
Prism’s motion to compel the following RFPs:
37, 38, 39, 40, 41, 42, 62,2 79.

Nos. 1, 2, 3, 12,

Also, in regard to terms that

U.S. Cellular claimed to be ambiguous, the Court defined these
terms from the Markman hearing and resolved the ambiguities
(Filing No. 129).

Therefore, the following RFPs will be granted

and the ambiguities therein shall be construed according to the
Court’s Markman order:

Nos. 11, 16, 19, 20, 28, 55, 59, 60, 63,

96.
In regard to RFPs in the possession of third parties,
the Court will order U.S. Cellular to set a date certain for the
production of each of the following RFPs:
27, 30, 32, 33, 34.

Nos. 22, 23, 24, 26,

The Court will rule on whether to compel

these RFPs once U.S. Cellular has complied with this Order.
In the following RFP, U.S. Cellular objected on the
grounds that the request was vague or ambiguous:

2

Nos. 13 and 66.

U.S. Cellular agreed to produce RFP 62, yet, Prism
requested that this Court compel U.S. Cellular to produce that
same RFP in its status report (Filing No. 136-6).
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The Court will deny those RFPs without prejudice and will order
Prism to serve U.S. Cellular with a supplemental RFP explaining
its terms within five business days.

U.S. Cellular will respond

to those RFPs within five business days after the receipt of the
supplemental RFPs.
The Court will deny Prism’s motion to compel for the
following items:

Nos. 56, 88, 25, 29, 31.

For RFP No. 56, U.S. Cellular’s objection is sustained
insofar as the RFP calls for all customer contacts.

Not all

contacts can be relevant to discovery (Filing No. 136-6, at 28).
No. 56 will be denied without prejudice at this time.
For RFP No. 88, U.S. Cellular’s objection is sustained
insofar as the word “benefit” lacks any meaning within the
context of the request.

No. 88 will be denied without prejudice

at this time.
For RFP Nos. 25, 29, and 31:

U.S. Cellular claims that

it possesses no discoverable evidence regarding Hard Keys or
Access Keys, as defined by this Court.

See Filing No. 136-6, at

13, 15, and 16; Filing No. 129, at 68.

Because U.S. Cellular

lacks discoverable evidence in this matter, the motion to compel
these items will be denied.
The issue of e-discovery must be resolved by the
parties.

Prism and U.S. Cellular are to meet and confer again.
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First, on or before January 17, 2014, the parties shall meet in
good faith in order to “identify the proper custodians, search
terms, and proper time frame” in order for Prism to create
specific production requests according to the e-discovery order
(Filing No. 73, at 4).

Then, Prism will request production of

specific discovery within ten business days of the parties’ meet
and confer.
IT IS ORDERED:
1)

U.S. Cellular will produce the following RFPs

within ten business days:

1, 2, 3, 11, 12, 16, 19, 20, 28, 37,

38, 39, 40, 41, 42, 55, 59, 60, 62, 63, 79, 96.
2)

U.S. Cellular will set a date certain when the

following RFPs will be delivered to Prism:
30, 32, 33, 34.
3)

22, 23, 24, 26, 27,

The Court will wait to rule on these RFPs.

The following RFCs are also denied without

prejudice a this time:

13 and 66.

Prism has five business days

from the filing of this order to supplement its original RFPs.
U.S. Cellular has five business days to produce those requested
documents after the request is made.
4)

The following RFPs are denied without prejudice:

56, 88, 25, 29, 31.
5) On or before January 17, 2014, the parties shall
meet and confer in good faith to “identify the proper custodians,
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search terms, and proper time frame” in order for Prism to create
specific production requests according to the e-discovery order.
Then, Prism will request production of specific discovery within
ten business days of the parties’ meet and confer.
DATED this 18th day of December, 2013.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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