AEVOE CORP. v. AE Tech Co., Ltd.

Filing 277

ORDER Granting in part and Denying in part 218 Motion to Compel. To the extent the motion to compel is granted above, Plaintiff shall provide the compelled discovery responses within 20 days of this order. Signed by Magistrate Judge Nancy J. Koppe on 5/6/13. (Copies have been distributed pursuant to the NEF - MMM)

1
2
3
4
UNITED STATES DISTRICT COURT
5
DISTRICT OF NEVADA
6
7
AEVOE CORP.,
8
Plaintiff,
9
vs.
10
AE TECH. CO., et al.,
11
Defendants.
12
13

)
)
)
)
)
)
)
)
)
)

Case No. 2:12-cv-00053-GMN-NJK
ORDER GRANTING IN PART AND
DENYING IN PART MOTION TO
COMPEL (Docket No. 218)

Pending before the Court is Defendants’ motion to compel. Docket No. 218. Plaintiff filed a

14

response and Defendants filed a reply. Docket Nos. 237, 245. The motion came on for hearing on

15

April 29, 2013. See Docket No. 268. Based on the parties’ submissions and the argument of

16

counsel, and for the reasons discussed more fully at the hearing, the Court hereby GRANTS in part

17

and DENIES in part the motion as follows:

18

(1) Request for Production 4: The motion to compel is GRANTED in part, but the request

19

for production shall be limited to policies related to intellectual property to the extent not already

20

produced.

21

(2) Requests for Production 13-15: These requests relate to several non-touch screen

22

products, which Defendants assert are relevant to, inter alia, their amended unenforceability

23

counterclaim. See Mot. at 11. The Court agrees with Defendants that the information sought is

24

relevant to the counterclaim, see Docket No. 217 at 12, and discoverable generally, see Surfvivor

25

Media, Inc. v. Survivor Prods., 406 F.3d 625, 635 (9th Cir. 2005) (discussing relevancy standard).1

26
27

1

28

controls.

To the extent this ruling is inconsistent with any statement at the hearing, this written order

1

Plaintiff resists producing the documents by arguing that the amended counterclaim will

2

ultimately fail, see Response at 6-7, and that the amended counterclaim is being challenged in a

3

pending motion to dismiss, see id. at 7. As a result, Plaintiff argues that “it is impractical to grant

4

broad discovery on claims that have already been dismissed and are likely to be dismissed again.”

5

Id. Plaintiff’s argument is not persuasive. The pendency of a motion to dismiss does not in itself

6

allow a party to avoid discovery. Tradebay, LLC v. eBay, Inc., 278 F.R.D. 597, 600 (D. Nev. 2011)

7

(“The Federal Rule of Civil Procedure do not provide for automatic or blanket stays of discovery

8

when a potentially dispositive motion is pending”). When a party seeks to avoid responding to

9

discovery requests pending resolution of a motion to dismiss, the proper mechanism for doing so is

10

through a motion to stay discovery. See, e.g., id. at 600-03.2 To succeed in such a motion, the

11

movant carries a “heavy burden of making a strong showing why discovery should be denied.” Id.

12

at 601.

13

To be sure, Judge Navarro previously noted several deficiencies in Defendants’ counterclaim

14

as initially pleaded. See Docket No. 217 at 9-16. But Judge Navarro also concluded that

15

“Defendants could possibly cure the defects” and granted leave to amend. Id. at 16. Plaintiff has

16

failed to carry its burden of showing that discovery should not go forward based on its motion to

17

dismiss the amended counterclaim. See Tradebay, 278 F.R.D. at 603 (staying discovery pending

18

resolution of motion to dismiss is proper where, inter alia, the Court conducts a preliminary peek at

19

the motion and is “convinced” that a claim cannot be stated).3
Accordingly, the motion to compel is GRANTED.

20
21
22
23
24

2

Parties seeking a stay of all discovery must generally establish that the motion to dismiss is
case-dispositive, but courts have also considered staying discovery related to certain claims subject to a
non-case-dispositive motion to dismiss. See id. at 602 (“the pending motion must be potentially
dispositive of the entire case or at least dispositive of the issue on which discovery is sought”
(discussing Mlejnksy v. Olympus Imaging America, Inc., 2011 WL 489743, *6 (E.D. Cal. Feb. 7, 2011)).

25
3

26
27
28

Nor was the Court persuaded by Plaintiff’s counsel’s assertions at the hearing that an informal
agreement existed based on the conduct of the parties to take a “wait and see approach” on this
discovery. Among other deficiencies in that argument, the parties are not permitted to make such an
agreement without Court approval. See Local Rule 7-1(b) (“Any stipulation that would interfere with
any time set for completion of discovery . . . may be made only with the approval of the Court”).
2

1

(3) Request for Production 33: The motion to compel is GRANTED in part, but the request

2

for production shall be limited to touch screen protectors and only to the extent such documents

3

have not already been produced.

4

(4) Request for Production 53: The motion to compel is GRANTED in part, but the request

5

for production shall be limited to (a) documents within Plaintiff’s possession, custody or control; (b)

6

a time-frame 2 years before the application and 6 months after the application; and (c) only to the

7

extent such documents have not already produced.
(5) Request for Production 54: The motion to compel is GRANTED in part with respect to

8
9

all related patent applications, as well as published applications and file histories related to touch

10

screen protectors, to the extent not already produced, as further clarified at the hearing (Tr. at 46-

11

48).

12

(6) Request for Production 57-58: These requests relate to Defendants’ amended false

13

marking counterclaim. As with Requests for Production 13-15, Plaintiff’s primary argument is that

14

the false marking counterclaim to which these documents relate was previously dismissed and the

15

amended false marking counterclaim is currently being challenged through a renewed motion to

16

dismiss. For the same reasons discussed above, Plaintiff is not excused from complying with

17

discovery requests based solely on the pendency of a motion to dismiss.

18

Plaintiff also objects to the fact that Request for Production 57 seeks documents for “each

19

and every screen protector” sold by Plaintiff, questioning the relevance of the screen protectors

20

beyond those identified in the amended counterclaim. See Response at 10. The Court agrees that

21

screen protectors beyond those identified in the amended counterclaim are not relevant.4 The Court

22

is not persuaded by Defendants’ argument that false marking on other products can be used as

23

evidence of intent to falsely mark other products. See Response at 15.
Accordingly, with respect to Requests for Production 57-58, the motion to compel is

24
25

GRANTED in part, except that the response to Request for Production 57 shall be limited to the

26
27
28

4

The iVisor Pro for MacBook, iVisor AG for MacBook, and iVisor XT for iPad are expressly
identified in the amended counterclaim. See, e.g., Docket No. 231 at ¶¶ 157-159.
3

1
2

screen protectors identified in the amended counterclaim.
(7) Requests for Admission 5-8, 11: The motion to compel is DENIED, as the requests seek

3

information about privileged communications. To the extent Defendants challenge the sufficiency

4

of Plaintiff’s privilege log, that issue was not sufficiently briefed for the Court to rule at this time.

5

(8) Requests for Admission 34-39: These requests seek responses related to Defendants’

6

amended false marking counterclaim. As with Requests for Production 13-15 and 57-58, Plaintiff

7

argues that the false marking counterclaim to which the requested admissions are relevant was

8

previously dismissed and the amended false marking counterclaim is currently being challenged

9

through a renewed motion to dismiss. For the same reasons discussed above, Plaintiff is not excused

10

from complying with discovery requests based solely on the pendency of a motion to dismiss. The

11

motion to compel is GRANTED.

12

(9) Interrogatories 10-12: The parties next dispute the number of interrogatories Defendant

13

AE Tech served on Plaintiff. Plaintiff contends that Interrogatories 10 through 12 each constitute

14

more than one interrogatory, while AE Tech argues each constitutes only one. Parties are allowed to

15

serve “no more than 25 written interrogatories, including all discrete subparts.” Fed. R. Civ. P.

16

33(a)(1). There is no rigid test to determine whether subparts constitute separate interrogatories and

17

the Court must take a pragmatic approach in analyzing them. See Switch Communications Group v.

18

Ballard, 2011 WL 3957434, *6 (D. Nev. Sept. 7, 2011). Generally, subparts of an interrogatory

19

should be counted as part of one interrogatory if the subparts are logically or factually subsumed

20

within and necessarily related to the primary question. Id. (citing Kendall v. GES Exposition Servs.

21

Inc., 174 F.R.D. 684, 685 (D. Nev. 1997)). Where a subpart can be answered independently of the

22

primary question, then the subpart should be treated as a separate interrogatory. Id.

23

The Court agrees with Plaintiff that Interrogatories 10 and 11 constitute multiple

24

interrogatories. Both of the interrogatories include no overarching primary question, but simply

25

request information for “each claim in the ‘942 patent.” As written, Interrogatories 10 and 11 seek

26

distinct information for each claim of the ‘942 patent. See Jones v. Hardy, 727 F.2d 1524, 1528

27

(Fed. Cir. 1984) (each claim in the patent is considered as defining a separate invention). As such,

28

Interrogatories 10 and 11 each constitute 15 interrogatories.
4

1

The lack of a primary question distinguishes these interrogatories from the authority relied

2

upon by Defendant. See Overture Servs., Inc. v. Google Inc., No. C-02-1991 CRB (EDL) (N.D. Cal.

3

Jan. 8, 2004). In Overture, the interrogatory sought for Google to “[f]ully describe [its] bases for its

4

assertion of noninfringement of the ‘361 patent, including . . . [various information] for each claim

5

limitation.” Id. at 2. Google argued that the interrogatory constituted multiple interrogatories

6

because of the numerous claims in the patent, but the Court determined that the claim-specific

7

information was necessarily subsumed within the primary question regarding the bases for Google’s

8

assertion of non-infringement. Id. at 2-3.5 Unlike that situation, there is no primary question in

9

Interrogatories 10 and 11 under which the subparts are subsumed.
Because Plaintiff has answered 25 interrogatories already, no additional answers are required

10
11

and the motion to compel is DENIED.

12

(10) Documents in possession of affiliated companies: Defendants seek documents in part

13

that are in the possession of Plaintiff’s affiliated companies. Federal Rule of Civil Procedure 34(a)

14

requires production of documents in a party’s “possession, custody or control.” “Control is defined

15

as the legal right to obtain documents on demand.” In re Citric Acid Litig., 191 F.3d 1090, 1107

16

(9th Cir. 1999) (addressing parallel provision for subpoenas in Federal Rule of Civil Procedure

17

45(a)). The “practical ability to obtain the requested documents” is not sufficient to establish the

18

requisite “control” over the documents. Id. “The party seeking the production of the documents . . .

19

bears the burden of proving that the opposing party has such control.” United States v. Int’l Union

20

of Petroleum & Indus. Workers, 870 F.2d 1450, 1452 (9th Cir 1989). Defendants have failed to

21

meet their burden of proving that Plaintiff “controls” the documents for purposes of Federal Rule of

22

Civil Procedure 34(a). Accordingly, the motion to compel is DENIED with respect to documents in

23
24
25
26
27
28

5

The Court is also unpersuaded by Defendants’ reliance on Wowza Media Systems, LLC v.
Coffee Cup Partners, Inc., No. 11-2243 CW (JSC) (N.D. Cal. July 25, 2012). In that case, the
responding party did not argue that an interrogatory requesting a description related to each patent claim
constituted a separate interrogatory for each claim. Instead, the responding party argued that the
information sought for each claim collectively constituted a single interrogatory, but that other aspects
of the interrogatory constituted separate interrogatories. See id. at 5. As the issue before the Court was
not argued in Wowza, that order provides no guidance here.
5

1

the possession of Plaintiff’s affiliated companies.

2

(11) Certification: Defendants’ reply seeks certification from Plaintiff that all responsive

3

documents have been produced. See Reply at 13, 20. Because this issue was raised for the first time

4

in reply, the Court ordered at the hearing that any response by Plaintiff was to be filed no later than

5

May 3, 2013. See Tr. at 77-79. That response has now been filed by Plaintiff, and the Court has

6

reviewed it. See Docket No. 271.6 In instances above where the Court has granted the motion to

7

compel “only to the extent such documents have not already been produced” and Plaintiff believes

8

there are no more unproduced responsive documents for that request, then Plaintiff shall so certify

9

that all responsive documents have been produced already. See Federal Rule of Civil Procedure

10

26(g); see also Mathews v. County of Butte, 2008 WL 1767013, *2 (E.D. Cal. Apr. 15, 2008)

11

(granting motion to compel to the extent party may have documents in its possession, and requiring

12

response certified pursuant to Rule 26(g) in the event such documents were not in its possession).7

13
14

(12) To the extent the motion to compel is granted above, Plaintiff shall provide the
compelled discovery responses within 20 days of this order.

15

IT IS SO ORDERED.

16

DATED: May 6, 2013

17

______________________________________
NANCY J. KOPPE
United States Magistrate Judge

18
19
20
21
22
23
24
25
26
27
28

6

That supplemental response argues primarily that Defendants’ certification argument is waived
because it was raised for the first time in reply. See Docket No. 271 at 2. Plaintiff is correct that issues
raised for the first time in reply are generally deemed waived, but the Court still retains discretion to
consider those issues. See, e.g., Glenn K. Jackson Inc. v. Roe, 273 F.3d 1192, 1202 (9th Cir. 2001)
(“The district court had discretion to consider the [new] issue even if it was raised in a reply brief.”). A
court does not abuse its discretion in considering new issues raised in reply so long as it has given the
opposing party the opportunity to respond. See El Pollo Loco, Inc. v. Hashim, 316 F.3d 1032, 1040-41
(9th Cir. 2003); Provenz v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996). The Court provided Plaintiff
the opportunity to respond to the request for certification by allowing it to file the supplemental papers.
As such, the Court will exercise its discretion to consider the issue.
7

This ruling is consistent with the Court’s ruling on Plaintiff’s motion to compel, in which it
ordered that, “[t]o the extent Defendants contend that they fully complied with any disputed discovery
request, they shall so certify under Federal Rule of Civil Procedure 26(g).” See Docket No. 202 at 2.
6