Carvana, LLC v. International Business Machines Corporation

Filing 136

OPINION & ORDER: For the reasons above, Defendant's Motion to Compel is GRANTED in part and DENIED in part. SO ORDERED. (Signed by Magistrate Judge Victoria Reznik on 11/22/2024) (ks)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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Carvana, LLC,

11/22/2024

23-cv-8616
Plaintiff,
OPINION & ORDER
-against-

International Business Machines Corp.,
Defendant.
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VICTORIA REZNIK, United States Magistrate Judge:
Plaintiff Carvana, LLC, (Carvana) sued Defendant International Business
Machines Corporation (IBM), seeking a declaratory judgment of non-infringement
for several of its patents. (ECF No. 1). IBM counterclaimed for patent infringement.
(ECF No. 36 at 13).
Before the Court is the parties’ dispute over whether Carvana must (1)
produce metrics data as outlined in IBM’s August 30, 2024, letter (ECF No. 117 at
3); and (2) designate one or more Rule 30(b)(6) witnesses to sit for a deposition and
answer questions on various enumerated topics. (Id. at 5). For the reasons
explained below, IBM’s motion to compel is GRANTED in part and DENIED in
part.

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DISCUSSION 1
To begin, parties “may obtain discovery regarding any nonprivileged matter
that is relevant to the party’s claim or defense and proportional to the needs of the
case.” Fed. R. Civ. P. 26(b)(1). “Although not unlimited, relevance, for the purpose of
discovery, is an extremely broad concept.” Durling v. Papa John's Int'l, Inc., No.
16CIV3592CSJCM, 2018 WL 557915, at *2 (S.D.N.Y. Jan. 24, 2018) (quoting
Greater New York Taxi Ass'n v. City of New York, No. 13 Civ. 3089 (VSB) (JCF),
2017 WL 4012051, at *2 (S.D.N.Y. Sept. 11, 2017)) (internal quotation marks
omitted). Indeed, Courts in this circuit have construed relevance to “encompass 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.” Durling, 2018 WL 557915, at *2
(quoting Scott v. Chipotle Mexican Grill, Inc., 67 F. Supp. 3d 607, 618 (S.D.N.Y.
2014)).
Under Rule 37 of the Federal Rules of Civil Procedure, a party seeking
discovery may move for an order compelling an answer, designation, production, or
inspection if “a deponent fails to answer a question” or if a party “fails to produce
documents or . . . fails to permit an inspection.” Fed R. Civ. P. 37(a)(3)(B). Such
motions are “left to the court’s sound discretion.” Liz v. A Perfect Dealer, Inc., No.
1:23-CV-10670 (JLR) (SDA), 2024 WL 4250364, at *2 (S.D.N.Y. Sept. 20, 2024).
In evaluating motions to compel, Courts will employ a “two-step analytical
framework.” Johnson v. J. Walter Thompson U.S.A., LLC, No. 16-cv1 Familiarity with the procedural history and background facts is assumed.

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1805(JPO)(JCF), 2017 WL 3055098, at *2 (S.D.N.Y. July 18, 2017). First, “the
moving party must demonstrate that the information sought is discoverable,
including, among other things, that it is relevant. Johnson, 2017 WL 3055098, at *2
(citing Mason Tenders District Council of Greater New York v. Phase Construction
Services, Inc., 318 F.R.D. 28, 36 (S.D.N.Y. 2016)). Next, “[o]nce relevance has been
shown, it is up to the responding party to justify curtailing discovery.” Johnson,
2017 WL 3055098 at, *2 (quoting Allison v. Clos-ette Too, L.L.C., No. 14 CIV. 1618
LAK JCF, 2015 WL 136102, at *8 (S.D.N.Y. Jan. 9, 2015)). If a responding party
seeks to limit discovery of ESI as not reasonably accessible because of undue burden
or cost, it must make such a showing. Fed. R. Civ. P 26(b)(2)(B).
1. Technical metrics data
IBM alleges that Carvana has “access to comprehensive sets of metrics data
regarding the performance of its accused website and mobile applications” (ECF No.
117 at 3), some of which it has failed to produce. (Id.) IBM argues that Carvana’s
production of technical metrics is “sparse” and “does not cover the entire period of
infringement,” among other issues. (Id.) In response, Carvana maintains that it has
produced substantial amounts of metrics data already and that collection of any
past data beyond the screenshots already produced would be “prohibitive and not
proportional to the needs of the case.” (ECF No. 120 at 3).
During the Court conference on September 13, 2024 (ECF No. 121 (Minute
Entry)), IBM reduced its demand to data underlying Exhibits 23-25, which appear
to relate to metrics data obtained from Lighthouse or Datadog. (ECF Nos. 117 at 4;
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130-1 at 2; 130-2). Carvana argued that the underlying data does not exist in any
readable format and obtaining it would be unduly burdensome. IBM had separately
suggested that Carvana search for the underlying data among sharefiles or among
the files of the custodians who created the Exhibits. Since the Court conference,
Carvana submitted affidavits that describe the burden of obtaining the underlying
data from Exhibits 23-25 and confirm that it conducted a reasonable search, but no
other data exists among the custodians. (ECF Nos. 130; 130-1; and 130-2).
Although IBM has sufficiently established that the sought-after metrics data
may be relevant to its claims, Carvana has equally established that it produced all
responsive, reasonably accessible documents in its possession, custody, or control.
IBM has pointed to no evidence to suggest otherwise. And for its part, Carvana has
submitted affidavits explaining the significant burden involved with obtaining
additional metrics data for any given point in time. (ECF Nos. 130-1; 130-2).
Compare Samsung Elecs. Co. v. Microchip Tech. Inc., 347 F.R.D. 252, 261 (S.D.N.Y.
2024) (finding that burden did not exist where party failed to “contend that the
requested production is likely to be voluminous or that the expense of production
would impose an undue burden”) (citing In re T-Sys. Scheiz AG, No. 1:20-MC-308GHW, 2020 WL 7384007, at *2 (S.D.N.Y. Dec. 16, 2020)).
Thus, the Court will not order Carvana to produce metrics data beyond what
it has already produced. But the parties are directed to meet and confer to
determine whether IBM, at its own time and expense, can obtain the Lighthouse

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data in unreadable form and then spend the time and money to figure out how to
use it.
2. IBM’s 30(b)(6) topics
IBM raises four categories of problems with Carvana’s responses to its
30(b)(6) topics (ECF No. 117 at 4), which Carvana disputes. (ECF No. 120 at 4). The
Court addresses each of these categories below.
(a) Undesignated topics
First, IBM argues that Carvana designated no witness on certain topics:
Topics 10 (testing of accused features), 29 (value of accused features), 32 (info
collected about users), 43 (opinions of counsel), 47 (communications with third
parties re accused features/patents), 51 (practices for identifying patented
technology), 59-60 (document sources/retention), 69-71 (marketing/customer
feedback), and 75-78 (testing of accused features). (ECF No. 117 at 4). In response,
Carvana appears to agree that certain topics were left undesignated but asserts
that others were covered by its designees. (ECF No. 120 at 4-5).
For topics that Carvana agrees it left undesignated (Topics 43, 51, 59-60, and
69-71), the Court largely agrees that additional testimony is unnecessary. On Topic
43 (opinions of counsel), the Court agrees that testimony about opinions of counsel
is premature and better addressed only if Carvana chooses to rely on them. For
Topic 51 (practices for identifying patented technology), Carvana argues that any
relevant information would be privileged because it involves the legal department,
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and the Court is inclined to agree. But non-privileged information may be obtained
through a targeted interrogatory request, as with Topic 46. Topics 59-60, relating to
document sources and retention, seem unnecessary as part of a 30(b)(6) deposition
at this late stage of discovery. There is no whiff of spoliation or allegations about
Carvana’s failure to conduct reasonable searches for documents. In re Honeywell
Int'l, Inc. Sec. Litig., 230 F.R.D. 293, 302 (S.D.N.Y. 2003) (denying in part a motion
to compel as it related to a party’s document retention polices because the moving
party did not have a concrete reason for the request). As to Topics 69-71
(marketing/customer feedback), Carvana has stated that no such information exists,
making a 30(b)(6) deposition on this topic unnecessary. But Carvana should confirm
that no relevant information exists in an affidavit. See, e.g., Brown v. Coleman, 514
F. App’x 6, 8–9 (2d Cir. 2013) (Summary Order) (finding that district court did not
abuse its discretion “in denying a motion to compel the production of information in
the face of a sworn declaration that such evidence no longer existed and only vague
assertions to the contrary”).
That leaves Topics 10, 29, 32, 47, 2 and 75-78, which Carvana argues were
already covered by various designees. For example, Carvana asserts that Mr. Pinho

2 Carvana refers to Topic 47 as relating to “pre-suit communications” and argues that this topic was

covered by Mr. McReynolds who “authenticated and confirmed the written communications.” (ECF
No. 120 at 2). But Topic 47 appears to relate to communications with third parties regarding IBM or
any of the accused features and patents (ECF No. 117-7 at 21), not pre-suit communications between
Carvana and IBM. Thus, it is unclear whether Carvana designated any witness to cover this topic. In
any case, some portion of this topic appears to relate to Carvana’s licensing policies and practices
with third parties, which will be covered by Ms. Wilson’s forthcoming deposition separately ordered
by the Court. Any additional information can be obtained through document production and written
discovery from Carvana, if not already done so.

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covered topics relating to Next.js and 3P Auth account creation through his
designated testimony on Topics 22/74, and 32/37, respectively. (ECF No. 120 at 4).
Mr. McReynolds allegedly covered topics relating to 3P auth account creation and
A/B testing through his designated testimony on Topics 8, 61, 68. (Id.) Mr. Huber
allegedly covered topics on Datadog through his designated testimony on Topics 24,
28, and 30. (Id.) And Mr. Johnson allegedly covered topics relating to the benefits of
Next.js through his designated testimony on Topic 19. (Id.) But Carvana relies on
testimony from witnesses who were designated on topics other than 10, 29, and 7578 to make its point. The same is true of Topic 32, in which Carvana says a part of
that topic is irrelevant given the withdrawn ‘849 patent but was otherwise covered
by Mr. Huber (in Topic 23(h)) and Mr. Johnson (in Topics 23(g) and 81). Again, it
appears that Carvana did not designate Huber and Johnson to cover a portion of
Topic 32 before their depositions, only after-the-fact.
The Court cannot wade through the technical testimony of all these witnesses
to decipher whether testimony on some designated topics was sufficient to cover
others. And the parties have not provided sufficient clarity either way. Thus, the
Court will not order additional deposition testimony at this time. But to the extent
Carvana claims that other witnesses covered the topics in 10, 29, 32, and 75-78,
they must designate that testimony accordingly and make clear which portions
relate to which topics. If gaps remain, IBM can renew its request for additional
testimony but must identify more precisely what information it still needs and why
it cannot be obtained through alternative means.
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(b) Designated topics on metrics but with limitations
Second, IBM argues that Carvana provided a witness on topics relating to
metrics but unilaterally limited them to exclude certain technical metrics (Topics 9,
20, 33-35, 66, and 83). (ECF No. 117 at 4). It is unclear from the cited testimony
that Mr. McReynolds’ testimony excludes technical metrics, as IBM asserts. In any
case, Carvana argues that other designees covered similar topics. (ECF No. 120 at
5). But as with the topics discussed above, if Carvana believes that other witnesses
sufficiently covered these noticed topics, they must designate that testimony
accordingly and make clear which portions relate to which topics. If gaps remain,
IBM can renew its request for additional testimony but must identify more precisely
what information it still needs and why it cannot be obtained through alternative
means.
(c) Insufficient testimony on Topics 45 and 46
Third, IBM argues that Carvana failed to provide a knowledgeable witness
about Topics 45 (pre-suit communications) and 46 (Carvana’s first awareness of the
patents). This dispute has been resolved by the Court’s order about Ms. Wilson’s
deposition. (ECF No. ----).
(d) Inadequate testimony from Mr. Johnson, including source code
Fourth, IBM argues that Carvana’s 30(b)(6) witness Mr. Johnson failed to
provide adequate responses for Topics 11, 13, 14, 17, 22, and 37, and should also
testify about the source code produced by Carvana after his deposition. The Court
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reviewed the entire transcript submitted by the parties and agrees that Mr.
Johnson at times seemed unnecessarily evasive, which no doubt made for a
frustrating deposition for IBM. Even so, in most instances, IBM’s counsel was able
to frame questions that Mr. Johnson would eventually answer. And with just a few
exceptions noted below, IBM does not identify specific information it was unable to
obtain. Carvana has already offered to remedy some of these issues with another
deposition on Topics 22 and 37. (ECF Nos. 120 at 5; 117 at 5 n.3).
As noted above, the Court did identify some questions that Mr. Johnson
failed to answer altogether: whether and why Carvana attempted to decrease load
times of its web pages. (ECF No. 126-2 (Tr. at 163-169)). IBM also identifies one
other substantive topic Mr. Johnson was unprepared to answer: whether certain
Carvana source code identified by IBM was used on a server or a client/browser.
(ECF No. 117 at 5).
Thus, the Court will order a 3-hour deposition of Mr. Johnson (or another
designee) to cover Topics 22 and 37, the topics raised in pages 163-169 of Mr.
Johnson’s transcript, and whether certain Carvana source code identified by IBM
was used on a server or a client/browser.
The Court will not order any further deposition of Mr. Johnson in his
personal capacity, unless it is combined with his designation on the 30(b)(6) topics
mentioned above and limited to the same 3-hour deposition. Nor will the Court
order any depositions based on the pages of source code produced by Carvana at this

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stage of the case but will permit IBM to renew its request as part of expert
discovery, if necessary.
CONCLUSION
For the reasons above, Defendant’s Motion to Compel is GRANTED in part
and DENIED in part.

SO ORDERED.
DATED:

White Plains, New York
November 22, 2024
______________________________
VICTORIA REZNIK
United States Magistrate Judge

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