StorageCraft Technology v. Kirby

Filing 187

MEMORANDUM DECISION AND ORDER GRANTING IN PART MOTION TO MOTION TO COMPEL (this is a redacted version of sealed order 180 filed on January 3rd, 2012.) Signed by Magistrate Judge David Nuffer on 12/30/11. (jlw)

This is a redacted version of an order filed under seal as docket no. 180 on January 3, 2012.

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
STORAGECRAFTTECHNOLOGY
CORPORATION, a Utah Corporation,

MEMORANDUM DECISION AND
ORDER GRANTING IN PART
MOTION TO MOTION TO COMPEL

Plaintiff,
REDACTED FOR PUBLIC FILING

v.
jAMES KIRBY, an individual, and JOHN
DOES 1-10,

Case No. 2:08-CV-921 DB
District Judge Dee Benson
Magistrate Judge David Nuffer

Defendant.

PlaintiffStorageCraft Technology Corporation (STC) moves to compel discovery from
Defendant James Kirby. 1 The facts of this case are well summarized in the district judge's order
2

granting partial summary judgment, finding that Kirby retained STC intellectual property in
violation of his warranty that he did not possess it3 and that he transferred STC intellectual
property to a third party in violation of copyright law.

4

This motion to compel comes after that summary judgment ruling, and after a June 2011,
order re-opening discovery for STC.5 That order was based on evidence STC uncovered in
discovery that

REDACTED

1

StorageCraft Technology Corporation's Motion to Compel, docket no. 167, filed October31, 2011.

2

Memorandum Decision and Order, docket no. 153, filed July 14,2011.

3

ld.at10-ll.

4

!d. at 12-13.

5

Order Granting in Part Motion to Reconsider Rulings on Motions to Compel and Reopen Discovery (Order
Reopening Discovery), docket no. 151, filed June 16, 2011.

REDACTED

The Order permitted STC to engage in the following discovery:

1. Written discovery and deposition testimony from James and Hannah Kirby
regarding:
a. The general scope of James Kirby's work for NetJapan and Rectiphy
from March 1, 2009 through the present, and the specific scope of his
work on source code which might infringe STC's intellectual property
rights and/or constitute a breach of the 2005 Settlement Agreement;
b. The Kirbys' communications with NetJapan and Rectiphy concerning
STC's source code from October 19, 2005 through December 31,
2010;and
c. All documents and information related to STC's source code,
exchanged between the Kirbys and NetJapan or Rectiphy from
October 19,2005 through December 31,2010.
2. Discovery from Leapfrog:
a. for production of any communications or documents exchangecl
between Leapfrog, NetJapan and/or James or Hannah Kirby
concerning STC's intellectual property, including its source code; and
b. a Rule 30(b)(6) deposition on the same subject.
3. Discovery from Rectiphy
a. Service of a subpoena seeking the production of any communications
or documents exchanged between Rectiphy, Leapfrog, NetJapan
and/or James or Hannah Kirby concerning STC's intellectual property,
including its source code; and
b. a Rule 30(b)(6) deposition ofRectiphy on the same subject. 7
STC seeks to compel
a. responses to discovery issued after the Order Reopening Discovery;
6

Order Reopening Discovery at 1-2.

7

!d. at 3-4.

2

b. re-designation of ce1tain documents Kirby produc~d with a "Highly
Contideritial 7'·desigriation;:.

c. production of certain attachments to emails; and
d. responses to discovery issued prior to the Order Reopening Discovery. 8
Discussion
Interrogatories
Kirby made several objections to new interrogatories 2 and 4 contained in STC's Fourth
Set ofinterrogatories.
INTERROGATORY N0.2: Identify and describe in detail the scope of your work
for NetJapan, from March 1, 2009 through the present, on source code, software
architecture, and/or product features that are based on, relate to or are similar to
STC IP, including any_work.on Activeimage_Protector..
INTERROGATORY NO.4: Identify and describe in deta~l the·scope ofyour
work for Rectiphy, from March i, 2009 through the presen(on source code,
software architecture, and/or product features that are based ·on, -relate to or are·
similar to STC IP, including any work on Activelmage Protector.
These interrogatories are within the scope of the language in the Order Reopening Discovery
permitting discovery of"[t]he general scope ofJames Kirby's work for NetJapan and Rectiphy
from March 1, 2009 through the present."9 The interrogatories specify work on various subjects
and ask for detail but this is within the intended scope of discovery. Kirby's arguments about the
definition of STC

rP10 and what was invented at what time serve only to illustrate why the

discovery should be permitted. Unless STC can get a complete contextual picture, the evidence
needed at trial will not be available. Pinpoint discovery is not feasible when one party holds all

8

Memorandum in Support of StorageCraft Technology Corporation's Motion to Compel (Supporting
Memorandum), at 20, docket ~o. :172·, fi-led under seal October 31; 2011.
9

Order Reopening Discovery at 4.

10

Defendant's Opposition to Plaintiff's Motion to Compel (Opposing Memorandum) at 3-4, docket no. 176, filed
under seal November 22, 2011.
·

3

the contextual information. These interrogatories shall be answered using the narrowed
definition of STC IP: "the trade secrets, intellectual prope1iy and source code identified in the
patiies' 2005 Settlement Agreement." 11
Similarly, Interrogatories 5-l 0 also seek information within the Order Reopening
Discovery. While phrased differently than the Order, these interrogatories seek the
communications, documents and information which the Order authorized STC to seek. Again,
the narrowed definition of STC IP shall apply.
Requests for Production
Requests for Production Nos. 1 and 3 are near twins which Kirby has identically evaded.
When asked for "documents that identify, describe or evidence the general scope of your work
for Rectiphy [orNetJapan] from March 1, 2009 through the present" Kirby responded "he is
unaware of any document that evidences the general scope of his work ... , as no such document
was prepared when Kirby began [work]." 12 In each instance, the re~ponse does not address the
request. The request does not ask for his awareness, but does require he make a search. Second,
the request is not limited to a single document but to any document which contributes to
understanding the general scope of his work. The requests must be responded to as written.
·Requests Nos. 2 and 4 must be ariswered for the same reasons given in the discussion of
Interrogatories Nos. 1 and 3 above and Requests Nos. 5-10 must be answered for the same
reasons given in the discussion oflnterrogatories Nos. 5-10 above.

11

Reply Memorandum in Support of StorageCraft Technology Corporation's Motion to Compel (Reply
Memorandum), at 1, docket no. 179, filed under seal December 9, 2011.
12

Defendant's Objections and Responses to Plaintiffs Sixth Set of Requests for Production of Documents, attached
as Exhibit F to Supporting Memorandum.

4

The search terms used by Rectiphy and James and Hannah Kirby must also be expanded

REDACTED

from the li?t used

REDACTED

include

14

to

The production from Leapfrog including emails

which contain searched terms but which were not produced also requires that Kirby certify that
he has searched his email accounts with the addresses [e-mail],
[e-mail] and [e-mail]. 15
Designation of Documents as Highly Confidential
Kirby alleges documents reflecting "the nature and status ofNetJapan's relationship with
its software subcontractor as well as documents relating to NetJapan's perceived advantages over
16

STC" meet the standard ofthe Protective Order .because Kirby reasonably believes (or believes
.
in good faith) that disclosure to. the adverse party would cause cm:npetitiv,e injury.

17

This is the

standard to which the parties agreed in the Protective Order, and it governs, even though the
"reasonable belief' standard does not meet the standard of Rule 26(c) which authorizes
protection of information which is actually "trade secret or other confidential research,
development, or commercial information."

13

Supporting Memorandum at 16.

14

!d., Reply Memorandum at 5.

15

Supporting Memorandum at 16.

16

Docket no. 57, filed D.ecember.l2, 2009 ..

17

!d. at ~3.

18

18

Fed. R. Civ. P. 26(c)(1)(G).

5

Email Attachments
During the briefing ofthis motion Kirby "agree[d] to produce the attachments to the
emails identified in STC's memorandum." 19 The attachments were not produced as of the time
the Reply Memorandum was filed. 20
Renewal of Prior Discovery
STC sought to "renew" prior discovery requests by a letter. 21 The Order Reopening
Discovery did not authorize reaching back to reopen prior discovery on topics not addressed in
the Order.

19

Opposing Memorandum) at 5.

20

Reply Memorandum in at 6.

21

Letter, September 21,2011, Heather M. Sneddon to Richard F. Ensor, at 6 attached as Exhibit K to Supporting
Memorandum.

6

ORDER
Based on the reasoning above, IT IS HEREBY ORDERED that the motion to compe122 is
GRANTED IN PART as provided herein. Responses shall be provided on or before January 20,
2012.
IT IS FURTHER ORDERED that within seven days of this order, Plaintiff shall propose
to Defendant a redacted version of this order to be filed in the public record. The parties shall
meet and confer. Within fourteen days after entry of this order, the parties shall submit their
agreed redacted version to [e-mail], or if no agreement is reached, they shall
submit their respective versions. If no redacted versions are filed, the magistrate judge will
direct that this order be unsealed.
Dated December 30,2011.

B~:rr

~

David Nuffer
U.S. Magistrate Judge

22

StorageCraft Teclmolo gy· Corporation's Motion ·to Compel, ·docket no. 'I 67,. filed 0 ctober 3 1, 2011.

7