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

Filing 393

ORDER that Plaintiff and Movants shall submit a supplemental brief of no longer than 10 pages by 10/24/2013. Signed by Magistrate Judge Nancy J. Koppe on 10/17/2013. (Copies have been distributed pursuant to the NEF - SLR)

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UNITED STATES DISTRICT COURT
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DISTRICT OF NEVADA
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AEVOE CORP.,

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Plaintiff(s),
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vs.
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AE TECH CO., LTD., et al,
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Defendant(s).
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__________________________________________)

Case No. 2:12-cv-00053-GMN-NJK
ORDER
(Docket No. 243)

Pending before the Court is a motion to quash filed by non-parties Racing Optics, Inc., Seth

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Wilson, Stephen Wilson, and Bart Wilson (“Movants”) regarding a subpoena for documents served by

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Plaintiff. Docket No. 243. Plaintiff filed a response in opposition and Movants filed a reply. Docket

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Nos. 259, 275. Prior to the hearing on the motion, the Court issued an order indicating that the parties

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had not briefed the motion in accord with the burden-shifting analysis used for motions to quash

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brought under Rule 45(c)(3)(B)(i). See Docket No. 347. The Court indicated that counsel should be

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ready to address those standards at the hearing. Id. at 3. The motion came on for hearing on September

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3, 2013. See Docket No. 351.

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One part of the Court’s analysis is whether the party who served the subpoena has shown a

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“substantial need” for the information sought. See, e.g., Gonzales v. Google, Inc., 234 F.R.D. 674, 684

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(N.D. Cal. 2006). As the Court understands it, Plaintiff’s argument presented at the hearing attempts to

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establish substantial need as follows: (1) Defendants contend that Plaintiff’s patent is invalid because

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the Wilson application is invalidating prior art and that Defendants have made this contention a “key

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issue” in this litigation, see, e.g., Hearing Tr. (9/6/2013) at 33; (2) Plaintiff requires information

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concerning, inter alia, the conception and reduction to practice of the invention described in the Wilson

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application to defend against Defendants’ invalidity contention, see, e.g., id. at 34; and (3) the Wilson

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inventors may be called to testify as to these facts at trial, see id. at 41 (“[T]o the extent this matter goes

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to trial, I would imagine that Racing Optics would be called as witnesses. And so the documents

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remain relevant, remain necessary to Aevoe’s, you know, defense of AE Tech’s counterclaims.”) Thus,

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it appears to be Plaintiff’s position that the information sought would be important in cross-examining

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and/or rebutting the testimony of Movants at trial.

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Plaintiff have presented no authority, however, that it is proper in an infringement trial to allow

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evidence regarding (1) the priority of the patentee’s invention over a non-party’s patent (or potential

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patent) or (2) the invalidity of a patent (or potential patent) resulting from a patent application that is

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cited as prior art. For their part, Movants argue that such evidence is not allowed in an infringement

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trial. See Hearing Tr. (9/6/13) at 30.1

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As noted above, the parties did not brief whether Plaintiff has a “substantial need” for the

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subpoenaed information. Although the Court heard some argument concerning “substantial need” at

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the hearing on the motion, the Court requires further briefing from Plaintiff and Movants.2 As such,

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Plaintiff and Movants shall submit a supplemental brief of no longer than 10 pages explaining whether

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Plaintiff has a “substantial need” for the subpoenaed documents in this case.3 In particular, Plaintiff

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should explain with particularity how the documents sought will actually be used in this litigation and

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“I don't know how this Court would even go through these proceedings and decide that maybe
by then an issued Wilson patent is invalid and then, therefore, is not prior art. I couldn't find any case
that discusses that there could be such a procedure. So I don't think that they've shown a substantial need
or that it's really relevant to their case.”
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The Court does not require further briefing at this time regarding whether the information
sought is confidential or whether any resulting prejudice may be mitigated through an appropriate
protective order.
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Defendants are not required to file a brief in response to this order, but may do so if they
choose, no later than October 24, 2013.
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provide authority that Plaintiff can actually use the documents in that way.4 The supplemental briefs

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shall be submitted no later than October 24, 2013.

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IT IS SO ORDERED.

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Dated: October 17, 2013

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________________________________________
NANCY J. KOPPE
UNITED STATES MAGISTRATE JUDGE

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To the extent Plaintiff believes that the documents will not actually be presented at trial or in
other proceedings in this case, it must provide a better explanation as to why it has a “substantial need”
for the documents.
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