Rensselaer Polytechnic Institute et al v. Apple Inc.
Filing
96
DECISION AND ORDER Apple shall certify to pltfs that it has made available or offered to make available all existing source code related to Siri's NLP functionality for inspection by pltfs' representatives by 5/22/14. With the exception of the foregoing, pltfs' 66 Motion to Compel discovery is denied. No costs or atty's fees are awarded to any party in connection with pltfs' motion to compel discovery. Signed by Magistrate Judge David E. Peebles on 5/8/14. (sfp, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF NEW YORK
RENSSELAER POLYTECHNIC
INSTITUTE, et al.,
Plaintiffs,
Civil Action No.
1:13-CV-0633 (DEP)
v.
APPLE INC.,
Defendant.
APPEARANCES:
OF COUNSEL:
FOR PLAINTIFFS:
SKIERMONT PUCKETT LLP
2200 Ross Avenue
Suite 4800W
Dallas, TX 75201
PAUL J. SKIERMONT, ESQ.
AMY E. LaVALLE, ESQ.
DONALD E. TILLER, ESQ.
LENNY HUANG, ESQ.
ALEXANDER E. GASSER, ESQ.
HESLIN ROTHENBERG FARLEY
& MESITI P.C.
5 Columbia Circle
Albany, NY 12203
NICHOLAS MESITI, ESQ.
HARRIS BEACH PLLC
333 West Washington Street
Suite 200
Syracuse, NY 13202
JAMES R. MULDOON, ESQ.
STEVEN P. NONKES, ESQ.
FOR DEFENDANT:
FENWICK & WEST LLP
555 California Street
12th Floor
San Francisco, CA 94101
TERESA M. CORBIN, ESQ.
HECTOR J. RIBERA, ESQ.
RYAN J. MARTON, ESQ.
DAVID M. LACY KUSTERS, ESQ.
WILLIAM A. MOSELEY, JR., ESQ.
MENTER, RUDIN
& TRIVELPIECE, P.C.
308 Maltbie Street
Suite 200
Syracuse, NY 13204
MITCHELL J. KATZ, ESQ.
DAVID E. PEEBLES
U.S. MAGISTRATE JUDGE
DECISION AND ORDER
Plaintiffs Rensselaer Polytechnic Institute ("RPI") and Dynamic
Advances, LLC ("Dynamic") have sued defendant Apple Inc. ("Apple") for
patent infringement. In their complaint, plaintiffs accuse Apple of infringing
United States Patent No. 7,177,798 (the "’798 Patent"), entitled "Natural
Language Interface Using Constrained Intermediate Dictionary of Results,"
through implementation of Siri, the personal assistant available on various
Apple devices, and specifically Siri's natural language input processing
functionality.
Currently before the court is plaintiffs' request for court intervention
regarding seven distinct discovery-related issues. In their motion, plaintiffs
challenge (1) the printing and copying limitations of Apple's source code
2
contained within the governing protective order; (2) the existing definition
of "source code" set forth in the protective order; (3) the provision in the
protective order governing designation of documents as "source code"; (4)
Apple's refusal to produce all requested Siri source code for inspection; (5)
the sufficiency of Apple's response to an interrogatory propounded by the
plaintiffs concerning Siri's function and source code; (6) Apple's alleged
improper designation of required disclosures under the court's local patent
rules; and (7) Apple's position as to the scope of a deposition to be taken
of its records custodian. For the reasons set forth below, plaintiffs' motion
is denied.
I.
BACKGROUND
This action was commenced on June 3, 2013. 1 On April 3, 2013, at
the joint request of the parties, the court issued a protective order,
pursuant to Rule 26(c) of the Federal Rules of Civil Procedure,
accompanied by an order governing electronic discovery. The protective
order placed strict parameters on plaintiffs' review of Apple source code,
requiring that such materials be made available for inspection at Apple's
1
A precursor action was filed on October 19, 2012, by Dynamic Advances, the
exclusive licensee under the ’798 Patent. See Dynamic Advances, LLC v. Apple, Inc.,
No. 12-CV-0159 (DNH/DEP). That action was discontinued without prejudice to the
right of the parties to litigate, in the instant case, the claims and defenses asserted in
that action.
3
offices, under supervision, on secured, stand-alone computers, with
limited ability of plaintiffs' representations to take notes or otherwise
replicate the source code. Id. Under the agreement, plaintiffs are
permitted to print limited source code excerpts "only when reasonably
necessary to prepare court filings or pleadings or other papers (including a
testifying expert's report)." The order presumes that the printing of either
more than ten pages of a continuous block of source code, or in excess of
200 pages in total, is excessive. The order further specifies that, in the
event plaintiffs believe that the page limits set forth in the protective order
are unduly burdensome, they must negotiate in good faith with Apple to
resolve the dispute prior to raising the issue with the court.
In October 2013, plaintiffs reviewed four versions of the Siri Natural
Language Processing ("NLP") source code, comprised of over 46,000 files
and 62,000 directories, and containing more than 17 million lines of code.
One of those versions, identified as "903," contained nearly 10,000 files
alone, distributed over more than 13,000 directories, and contained more
than two million lines of code. Apple's attorneys have informed plaintiffs'
counsel that yet another version of the server-side Siri NLP source code,
corresponding to the newest operating system, is now available for
inspection.
4
During the course of discovery, plaintiffs propounded a first set of
interrogatories. One of those interrogatories requested the following
information:
INTERROGATORY NO. 2:
Identify each of Siri’s functional blocks involved in
any task performed as part of Siri’s natural
language processing function, including Siri’s
natural language interface function, including by
listing: the name, code name, nickname, or other
identifier of the functional block; the name of every
data structure, object, method, property, library,
function, procedure, or other pertinent block of
source code that is an instance, implementation,
description, or definition of all or a portion of the
functional block; for each source code file that
includes an instance, implementation, description,
or definition of the functional block, the location of
the pertinent block of source code within each file;
and each document (by production number) that
contains a full or partial description of the functional
block.
Apple responded as follows:
RESPONSE TO INTERROGATORY NO. 2:
Apple incorporates by reference its General
Objections as if fully set forth herein. Apple objects
to this Interrogatory to the extent it calls for
production of confidential or proprietary
information. Apple objects to this Interrogatory to
the extent it seeks discovery of information
protected by the attorney-client privilege, work
product immunity, or any other applicable privilege
or protection. Apple objects to this Interrogatory to
the extent that it seeks discovery that is obtainable
5
from some other source that is more convenient,
less burdensome, or less expensive, including, but
not limited to, information that is publicly available
and information sought in response to other
discovery requests. Apple objects to this
Interrogatory as overly broad to the extent it seeks
information that is not relevant to the claims or
defenses asserted in this litigation or the subject
matter of this litigation, or that is not reasonably
expected to lead to the discovery of admissible
evidence. In particular, Apple objects to this
Interrogatory as overbroad, burdensome, vague,
ambiguous and unintelligible in general and in
particular to the extent that it seeks the
identification of all documents that contain a
description of the functional block, rather than
documents sufficient to show the functionality.
Apple objects to this Interrogatory as vague and
ambiguous, particularly with respect to the terms
'functional block' and 'natural language interface
function.' Apple objects to this Interrogatory as
impermissibly compound.
Subject to and without waiving the foregoing
General and Specific Objections, Apple responds
as follows: Pursuant to Rule 33(d), Apple identifies
the source code made available pursuant to Patent
L.R. 3-4(a) and documents labeled with Bates
numbers APLDynAdv_00000001 through
APLDynAdv_00000371.
On February 13, 2013, the court held a hearing in connection with
this action to address various issues. Among them was the number and
duration of depositions to be taken in the case. During that hearing, I
limited the total number of hours of deposition for fact and Federal Rule of
Civil Procedure 30(b)(6) witnesses to seventy hours per side, with a
6
maximum of seven hours for each individual witness. I also permitted an
additional seventy hour maximum for each expert identified, and an
additional seven hours for the deposition of one or more records
custodians. In accordance with that authorization, plaintiff Dynamic
Advances served a notice on August 23, 2013, seeking to depose an
Apple records custodian. The notice contained a comprehensive set of
definitions and identified fifty-eight separate topics to be addressed during
the deposition.
II.
DISCUSSION
A.
Relief from Stipulated Protective Order
In their motion, plaintiffs request modification of the existing
protective order in three respects. First, they argue that the printing and
copying limits contained within the protective order are unduly restrictive
and should be expanded. Second, they request that the definition of
"source code" be relaxed. Third, plaintiffs ask the court to amend the
requirements for designating a "source code" document under the
protective order.
Rule 26(c) of the Federal Rules of Civil Procedure empowers a court
to "issue an order to protect a party or person from annoyance,
embarrassment, oppression, or undue burden or expense[.]" Fed. R. Civ.
7
P. 26(c). In this instance, the governing protective order was the product
of extensive negotiations between the parties, involving the exchange of
nine drafts between December 17, 2012, and February 6, 2013. Following
a court hearing on February 13, 2013, the parties continued their
negotiations, exchanged additional drafts, and submitted a stipulated
protective order to the court on April 1, 2013. Following review, that order
was approved and entered by the court on April 3, 2013.
Notwithstanding the issuance of any protective order, the court
possesses the power to modify it, even over the objection of one of the
parties initially agreeing to its entry. Gambale v. Deutsche Bank AG, 377
F.3d 133, 141 (2d Cir. 2004). A party requesting modification, however,
bears a heavy burden to establish justification for granting that request.
See Am. Tel. & Tel. Co. v. Grady, 594 F.2d 594, 597 (7th Cir. 1978)
("[W]here a protective order is agreed to by the parties before its
presentation to the court, there is a higher burden on the movant to justify
the modification of the order."). In this case, plaintiffs have cited no
changed or unforeseen circumstances that would warrant relieving them of
their agreement in connection with the protective order.
It should be noted that the somewhat drastic strictures included in
the stipulated protective order reflect the extent to which Apple protects
8
the security of its proprietary, trade-secret source code. 2 To ensure the
desired measure of security, the protective order is specifically structured
to permit source code review only under rigid conditions, including use of
stand-alone computers at Apple, under the supervision of Apple
employees, and with limitations on printing and copying. Under the
protective order, source code printing is allowed only "when reasonably
necessary to prepare court filings or pleadings or other papers (including a
testifying expert's report)." Even then, the order sets forth limitations on
the extent of the printing. The protective order also provides a mechanism
for plaintiffs to address concerns that the specified page limits are overly
burdensome. When such a concern is raised, the order requires the
parties to negotiate prior to raising the issue with the court. 3
While plaintiffs' request seeks relief from the protective order's
printing and copying limits, it is not tied to any necessary preparation of
court filings or pleadings or other papers, including testifying expert
reports. Instead, plaintiffs' application for modification of that provision
points to other cases in which less severe limits upon copying have been
2
The importance of the source code and the measures of protection implemented
at Apple are detailed in a declaration provided by Siamak Hodjat, an Apple Software
Development Engineer. Dkt. No. 79-5.
3
According to Apple, plaintiffs have failed to follow the agreed-upon procedure
for resolving source code printing disputes.
9
imposed, and again is not tied to any particular need for copying in this
case. Based upon these circumstances, I find that plaintiffs have not
carried their burden of establishing a basis to relieve them of the agreedupon copying and printing limitations set forth in the protective order. 4
Plaintiffs also seek a modification to the definition of the term "source
code" as used in the protective order. As currently comprised, the order
defines "source code" as follows:
'Source Code' means computer code, scripts,
assembly, object code, source code listings, and
descriptions of source code, object code listings
and descriptions of object code, and Hardware
Description Language ('HDL') or Register Transfer
Level ('RTL') files that describe the hardware
design any ASIC or other chip.
Plaintiffs propose removing both "computer code" and "descriptions of
source code" from the existing definition of source code, and replacing
them with, respectively, "computer code in a format that can be directly
4
In this respect, the court pauses to make three observations. First, the court
agrees with Apple that the three sample documents cited by plaintiffs in fact contain
Siri computer code, scripts, and description of source code, contrary to plaintiffs'
assertions, and thus fall within the definition of source code under the protective order.
Those documents include Apple-SC000000 91-98, Apple-SC000000 91-123, and
Apple-SC00000124-162. Second, the governing protective order does not limit
plaintiff's access to source code and descriptions of source and object code. Instead, it
merely provides a limitation on the copying and printing of such documents. Third, the
court's denial of plaintiffs' current application does not limit their right, in the future, to
object with particularity to the limitations following the procedure outlined in the
protective order by first engaging in good-faith discussions with Apple, and then
submitting the dispute to the court.
10
compiled" and "source code in a format that can be directly compiled."
According to plaintiffs, their proposed modifications would eliminate
documents that merely describe Siri's design or architecture, which
plaintiffs contend are not part of the true source code, from the definition.
Apple objects, noting that documents describing the architecture of source
code are every bit as proprietary and trade-secret as the source code
itself, which is the reason for including source code and descriptions of
object code in the definition. Once again, I find no basis to modify the
previously agreed upon definition of source code.
Finally, plaintiffs request the court amend the requirements under
the protective order for designating a "source code" document. According
to plaintiffs, the protective order's provisions regarding the designations of
documents as "Confidential – Outside Attorneys' Eyes Only" and
"Confidential – Outside Attorneys' Eyes Only – Source Code" are
inconsistent in that the former requires a much higher standard. Apple
disagrees that there is an inconsistency, and acknowledges that
confidential source code "would always qualify as 'Confidential – Outside
Attorney's Eyes Only.'" Because the court cannot discern the
inconsistency asserted by plaintiffs, and because it appears the parties are
not actually in disagreement, plaintiffs' request to modify the provision
11
governing "source code" designation of documents is denied.
B.
Inspection of All Siri Source Code
During discovery, plaintiffs have requested specific versions of (1) all
server-side source code implementing any Siri function, (2) all client-side
source code for implementing or interfacing to any Siri function, and (3) all
device source code for implementing or interfacing to Siri. Apple
acknowledges that, in response to this request, it has produced only
portions of Siri source code corresponding to Siri's NLP functionality.
Plaintiffs argue that the undisclosed source code is relevant either to the
issue of infringement under the ’798 Patent, or, at a minimum, to a
reasonable royalty damage computation.5
A review of plaintiffs' complaint and infringement contentions reveals
5
The court rejects plaintiffs' assertion that Apple has waived an objection to their
request for the production of all Siri source code. That argument is based upon
Apple's failure to object to a source code inspection notice served by the plaintiffs
under the Rule 26(c) stipulated protective order. It is true, as plaintiff's note, that the
failure to object to a request for the production of documents or a notice of inspection
under Rule 34 in a timely fashion can result in a waiver of any objections. Land Ocean
Logistics, Inc. v. Aqua Gulf Corp., 181 F.R.D. 229, 236 (W.D.N.Y. 1998). In this case,
plaintiffs' request for the production of all Siri's source code is dated March 15, 2013.
Objections to that document request, specifically objecting to the demand for all Siri
source codes, were submitted on April 18, 2013, and thus within the thirty-day period
for raising such objections. Plaintiffs now contend that its notice-of-source-code
review, issued to Apple seven months later on August 23, 2013, is an additional, formal
document demand under Rule 34. It is clear, however, that the notice was intended
not as a demand, but rather a request to review source code as required by the
protective order. The court therefore does not view Apple as having waived the right to
object to the production of irrelevant source code.
12
their contention that Apple directly infringes the asserted claims by
performing all steps disclosed "in processing natural language through the
Siri technology." To support their position, plaintiffs point to two claim
limitations in the ’798 Patent, including "providing a natural language query
by the user" and "providing, through a user interface, a result of the search
to a user." The record now before the court discloses, however, that
Apple has made available for inspection the source code providing this
functionality.
Plaintiffs contend they need all Siri source code to calculate
reasonable royalty damages. It does not appear, however, that the entire
source code is necessary to determine the importance of NLP functionality
features to the other, non-accused features comprising Siri for purposes of
a reasonable royalty analysis. The court therefore rejects plaintiffs' efforts
to expand discovery in this action by utilizing a reasonably royalty
argument. To the degree there may be minimal relevance of the nonaccused source code for purposes of determining the importance of the
accused features to the whole of the Apple product, it is far outweighed by
the burden, annoyance, and expense of complying. The court therefore
finds that the rule of proportionality applies and dictates against requiring
the production of non-accused source code. Fed. R. Civ. P.
13
26(b)(2)(C)(iii).
In sum, the court rejects plaintiffs' request for an expanded
production of Siri's source code. Apple will be required, however, to certify
that it has produced all Siri source code related to NLP functionality for
inspection by plaintiffs.
C.
Interrogatory No. 2
Plaintiffs' interrogatory no. 2, which is recounted above, requests
detailed information concerning Siri's NLP functionality. As Apple argues,
on its face the interrogatory requests a full annotated narrative description
of Siri's source code. And, as plaintiffs have noted, the NLP source code
of Siri is exceedingly extensive. The court agrees with Apple that the
appropriate vehicle for discerning the information sought is to make
available, for plaintiffs' review, Apple's source code, which Apple has
agreed to do, and to provide one or more witnesses for deposition in order
to permit plaintiffs to probe the functionality and explanation for everything
that remains unclear after a review of the source code. While plaintiffs
argue that the prerequisites for invoking Rule 33(d)(1) of the Federal Rule
of Civil Procedure have not have been satisfied in the case, I conclude
that the foregoing procedure represents the most efficient and effective
14
means of obtaining the information sought. 6 I therefore find that defendant
Apple has made a proper response to interrogatory no. 2.
D.
Proper Designation of Disclosures Under Local Patent Rule
3.3
On April 4, 2013, Apple served non-infringement and invalidity
contentions on plaintiffs in the previously filed case, No.12-CV-1579
(DNH/DEP), pursuant to rule 3.3 of the local patent rules of practice for
this court. Those contentions were supplemented on April 25, 2013. The
bodies of both of those contentions were designated as "confidential"
under the parties' protective order. The accompanying appendices were
designated as "confidential-outside attorneys eyes only (technical)." In
6
That rule provides, in relevant part,
[i]f the answer to an interrogatory may be determined by
examining, auditing, compiling, abstracting, or summarizing
a party's business records, including electronically stored
information, and if the burden of deriving or ascertaining the
answer will be substantially the same for either party, the
responding party may answer by:
(1)
specifying the records that must be reviewed,
in sufficient detail to enable the interrogating party to
locate and identify them as readily as the responding
party could; and
(2)
giving the interrogating party a reasonable
opportunity to examine and audit the records and to
make copies, compilations, abstracts, or summaries.
Fed. R. Civ. P. 33(d). The court believes that these minimal requirements for invoking
Rule 33(d) actually have been met in this case.
15
their motion, plaintiffs request the court direct Apple to remove the
confidential designation from the main bodies of the two documents.
In its response to this portion of the motion, Apple contends that
plaintiffs have not suffered any prejudice. A redacted, confidential version
of its non-infringement chart was provided to plaintiffs. Of the forty pages,
twenty-seven short sections were redacted. Apple has also provided
plaintiffs with a redacted version of its contentions, designated as
confidential, meaning that counsel is able to share those redacted
versions with plaintiffs' representatives.
After careful consideration, the court discerns no prejudice
associated with the designation, and no compelling reason why the
designation should be modified. I note that the protective order provides
for a process to be followed should a party object to a designation. The
order also provides a standard by which designation changes should be
made, and casts the burden upon the party seeking modification to justify
a re-designation. In this case, it does not appear that the requisite
procedure was followed or that plaintiffs have justified the request for redesignation.
E.
Records Custodian Deposition
When addressing the question of depositions in this case, the court
16
has previously noted that, consistent with standard practice in these types
of cases, each side should be permitted seven hours to conduct the
deposition of one or more records custodians. It was envisioned that any
such deposition would broadly describe the system for retaining records
and the record retention policy of a party, and would identify the custodian
of the particular records. The aim was to provide sufficient information to
allow the inquiring party to serve a focused request for the production of
documents based upon what was learned during the deposition.
Taking advantage of that opportunity, plaintiffs have served a
deposition notice on Apple that contains fifty-eight expansive subjects to
be covered by an Apple representative. While, in a broad sense, those
fifty-eight categories purport to seek only information concerning the
existence of records, the notice requests specific information concerning a
broad array of documents. An example of the topics specified in the
notice of deposition is as follows:
The location and identity of documents and the
custodians of documents concerning any economic
evaluation, market analysis, sales analysis,
marketing plan, marketing strategy, market
research, forecast, business plan, development
plan, or consumer research or survey, advertising,
or other market evaluation or communications
relating to any natural language processing
technology or Siri that was created, performed,
reviewed, or published by or for Apple since April
17
7, 1999.
This request goes far beyond seeking testimony that may provide a broad
overview of the types of records contained, the format in which they are
retained, and the applicable document retention policy and the custodian
of records. Indeed, it purports to require a search by the records
custodian to discern whether specific documents exist. This was not what
was contemplated when the court permitted the deposition of a records
custodian. Accordingly, the court hereby strikes plaintiffs' notice of
deposition and directs that any deposition of an Apple records custodian
be conducted consistent with the foregoing guidance.
III.
ORDER
Based upon the foregoing, it is hereby
ORDERED as follows:
(1)
Within fourteen days from the date of this order, Apple shall
certify to plaintiffs that it has made available or offered to make available
all existing source code related to Siri's NLP functionality for inspection by
plaintiffs' representatives.
(2)
With the exception of the foregoing, plaintiffs' motion to compel
discovery (Dkt. No. 66) is DENIED.
(3)
No costs or attorney's fees are awarded to any party in
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connection with plaintiffs' motion to compel discovery.
Dated:
May 8, 2014
Syracuse, New York
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