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Cary A. Jardin v. Datallegro


May 9, 2011


The opinion of the court was delivered by: Hon. William V. Gallo U.S. Magistrate Judge


This case appeared on the Court's docket when the United States District Court for the Western District of Washington transferred Plaintiff's motion to compel Microsoft, Inc., to respond to Plaintiff's requests for document production in Jardin v. DATAllegro, Inc., et al., S.D. Cal. No. 08-CV-1462-IEG(WVG) ("2008 Case"). The only issue for resolution in the instant case remains Plaintiff's motion to compel, which the Court finds suitable for decision without oral argument. S.D. Cal. Civ. L. R. 7.1. For the reasons stated below, Plaintiff's motion is GRANTED IN PART and DENIED IN PART.


Before Plaintiff's claims were summarily adjudicated in Defendants' favor, he alleged patent infringement against Defendants Frost and DATAllegro, Inc., which has been purchased by non-party Microsoft, Inc. On September 30, 2010, Plaintiff served Microsoft with a subpoena duces tecum that sought various categories of documents related to Microsoft's purchase of DATAllegro. Although it appears that Microsoft initially complied by producing some documents, the company later refused to produce other documents it found. The instant motion to compel followed on December 20, 2010, in Washington.

On January 14, 2011, the fully-briefed motion was transferred to this Court after Plaintiff and Microsoft jointly moved for the transfer. (Doc. Nos. 11-13.)*fn1 At that time, Microsoft "expressly consent[ed] to the transfer for the limited purpose of resolving the pending discovery dispute," (Doc. No. 11 at 2:3-4), and "agree[d] to be bound by, and comply with, any order issued from [this Court]," (id. at 2:19-3:1).

On February 4, 2011, this matter was low-numbered to the 2008 Case. On February 18, 2011, Defendants asked for a stay of discovery in the 2008 Case pending the outcome of a motion to dismiss that was pending in another related case, Jardin v. DATAllegro, Inc. et al., S.D. Cal. No. 10-CV-2552-IEG(WVG) ("2010 Case"). (Doc. No. 155.)

On March 23, 2011, the Court stayed discovery after hearing arguments and deferred ruling on the present motion until the stay lifted. (Doc. No. 188.) On April 12, 2011, the stayed lifted after Judge Gonzalez ruled on Defendants' motion to dismiss in the 2010 Case. (Doc. No. 205.)


A motion to compel is appropriate when a party fails to produce relevant, non-privileged documents that a party has subpoenaed. Fed. R. Civ. P. 45(c)(2)(B)(i). The party seeking to compel compliance bears the burden of establishing that its document requests satisfy the relevancy requirements of Rule 26(b)(1).*fn2 See Soto v. City of Concord, 162 F.R.D. 603, 610 (N.D. Cal. 1995) (finding that a relevant matter is "any matter that bears on, or that reasonably could lead to other matters that could bear on, any issue that is or may be in the case."). Moreover, the scope of federal discovery is broad. See Herbert v. Lando, 441 U.S. 153, 177 (1979); Epstein v. MCA, Inc., 54 F.3d 1422, 1423 (9th Cir. 1995) ("[W]ide access to relevant facts serves the integrity and fairness of the judicial process by promoting the search for truth."). The broad scope of permissible discovery encompasses "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." Doe v. Archdiocese of Portland, 717 F. Supp. 2d 1120, 1126 (D. Or. 2010) (citing Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)).

Discovery is not limited to the merits of a case, "for a variety of fact-oriented issues may arise during litigation that are not related to the merits." Id. Courts have "wide latitude in controlling discovery, and [their] rulings will not be overturned in the absence of a clear abuse of discretion." Volk v. D.A. Davidson & Co., 816 F.2d 1406, 1416-17 (9th Cir. 1987).

After the moving party makes the requisite showing of relevance, the party opposing the discovery has the burden of showing that it should be prohibited, as well as the burden of clarifying, explaining, and supporting its objections. DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002) (citing Blankenship v. Hearst Corp., 519 F.2d 418, 429 (9th Cir. 1975)).


A. Relevancy Predicated on Plaintiff's Former Claims

Plaintiff's subpoena contains fourteen document categories. Microsoft objected on the ground, inter alia, that the documents are not relevant. Plaintiff's current proffer of relevancy relies heavily on the following argument: "[T]he documents identified by Microsoft relate to its evaluation of the accused technology and, at a minimum, are relevant to Jardin's proof of infringement and value of the accused technology. The other requested documents are likewise relevant to Jardin's damages theories, infringement theories and defenses." (Doc. No. 1 at 4:17-20.) However, this argument is no longer valid in light of recent events in the 2008 Case.

On April 1, 2011, Judge Gonzalez granted in toto Defendants' motion for summary judgment of non-infringement. (Doc. No. 191.) On April 11, 2011, Judge Gonzalez denied Plaintiff's motion for summary judgment of infringement. (Doc. No. 197.) These orders resulted in the complete disposition of Plaintiff's case. As a result, any relevancy arguments that relate in any way to Plain-tiff's former claims (e.g., to establish damages and to prove Defendants' infringement of his technology) are now moot.

The foregoing notwithstanding, this case lives on, as Defendants currently have two counterclaims for declaratory relief pending against Plaintiff. (See Doc. Nos. 44, 45.) As explained below, Defendants seek to invalidate various claims in Plaintiff's patent ("2008 Patent") and render it unenforceable. As a result, only the relevancy arguments that bear on the counterclaims remain at issue.

B. Plaintiff's Conclusory Statements Are Unpersuasive

Although the main thrust of Plaintiff's motion is Microsoft's documents' relevancy to infringement and damages, Plaintiff inserts, seemingly as an afterthought, the following sentence at the end of each argument section: "[S]econdary considerations of non-obviousness regarding the [2008 Patent], including long-felt need, failure of others, and commercial success of the accused products."

Microsoft objects that these passages are conclusory and unhelpful: "This mere listing of unspecified factors is insufficient to meet Plaintiff's burden of proving the relevance of his requests." (Doc. No. 8 at 9:1-2.) Microsoft continues:

For instance, what exactly are Plaintiff's equitable defenses resulting from Defendants' infringement" (he never identifies them) and how could they possibly relate to documents Microsoft might have in its possession (he does not say)? And what do Microsoft's documents have to do with the validity of Plaintiff's patent? Moreover, the shotgun approach is not helpful to either Microsoft or the Court in determining whether the expense of conducting full custodial searches is warranted, and is precisely why Microsoft could not reach agreement with Plaintiff. Plaintiff, for the most part, makes no effort to align the requested materials with the alleged "defenses" he has not even identified or explain how exactly they would be relevant. (Id. at ll. 2-10.) For the most part, the Court agrees with Microsoft's assessment. However, the Court notes that Microsoft's representation that a "full custodial search" is necessary here is inaccurate since it appears that Plaintiff has narrowed his requests to documents that the so-called "Deal Team" produced or possessed. Thus, Plaintiff's requests, as narrowed during meet and confer efforts, no longer ask Microsoft to search the records of all of its employees. In any event, Defendants are correct that Plaintiff's cursory "shotgun" approach does not flesh out how the subpoenaed documents are relevant to his "secondary considerations of non-obviousness." Plaintiff's Reply does not flesh out this argument. Without Plaintiff's adherence to the basic tenet of persuasive writing (i.e., "show me, don't tell me"), the Court is left to its own devices to construct an argument that supports the documents' relevance. The Court declines to do so. As a result, these conclusory statements do not satisfy his initial burden to show the relevancy of the documents he seeks.

C. Frost's Reduction of the Invention to Practice

Plaintiff's motion contains a final argument, that documents requests 11, 13, and 14*fn3 are relevant because they bear on Defendants' counterclaim allegations that the 2008 Patent is invalid and unenforceable, and that Stuart Frost invented the disputed technology before Plaintiff did. (Doc. No. 1 at 14:3-4, 15:7-8 ("Frost claims to have invented what is claimed by the [2008 Patent] before Jardin did, thereby rendering the [2008 Patent] invalid . . . .") (emphasis in original).) Specifically, Jardin posits that the documents "should include notes or other evidence regarding when Frost conceived and reduced to practice Jardin's claimed inventions." (Id. at 14:5-6, 15:9-10.) The Court concludes that document requests 11, 13, and 14 reasonably bear on issues raised by Defendants' counterclaims.

In the summary judgment motion of invalidity, Defendants argue that filing timelines establish that the 2008 Patent anticipates Frost's patent ("2010 Patent"), and the 2008 Patent is invalid as a result. (Doc. No. 179-1 at 7-9.) Defendants claim the 2010 Patent is prior art to the 2008 Patent. However, even if this is true, application filing dates are not necessarily conclusive or dispositive, as the United States currently embraces a first-to-invent, not a first-to-file, patent system. Although Congress may change this soon, the law as it stands now provides that "[a] person shall be entitled to a patent unless":

[B]efore such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

35 U.S.C. § 102(g)(2). An inventor may "swear back" to establish his inventorship up to one year prior to his application filing date. See 35 U.S.C. § 102(b). Importantly, "prior conception of the invention by another does not defeat one's right. No possible barrier is created by § 102(g) unless another has either actually reduced the invention to practice or has constructively reduced it to practice by filing a patent application." In re Katz, 687 F.2d 450, 454 (C.C.P.A. 1982).

In this case, timing matters. The 2008 Patent theoretically could be sworn back to March 23, 2003. However, since Frost has been granted the 2010 Patent, Microsoft's records may contain relevant information regarding Frosts reducing the invention at issue to practice.

Because Section 102(g) does not invalidate the 2008 Patent unless Frost "actually reduced the invention to practice," a factual dispute about the timing of Frost's and Plaintiff's reduction of the invention to practice could exist. Plaintiff's opposition to the summary judgment motion advances this argument. (See Doc. No. 193 at 10-11.) Plaintiff's motion to compel does the same. (Doc. No. 1 at 14:3-7, 15:6-10.) The Court finds that some documents in Microsoft's possession may be relevant to the extent that they potentially bear on this issue. As a result, the Court finds that Plaintiff has satisfied his burden of showing the relevance of these limited document requests.

Finally, Microsoft avers that it has "produced the file histories of Mr. Frost's patents," lists Bates stamp numbers of responsive documents it has apparently produced, and states that it "is unclear what additional information Plaintiff seeks." (Doc. No. 8 at 14:12-17, 15:9-10.) This weighs against the claimed burden Microsoft will suffer, and the Court finds that the company will not suffer undue burden as a result of this limited Order. Of course, Microsoft need not produce duplicate documents. However, to the extent that Microsoft's search reveals un-produced, responsive documents (e.g., among the McDermott, Will & Emory files), Microsoft shall produce those additional documents. If Microsoft's good-faith search genuinely fails to uncover additional responsive documents, then the company obviously has nothing left to produce, shall inform Plaintiff, and file with the Court a declaration or other paper that certifies as much.


Based on the foregoing, the Court DENIES IN PART Plaintiff's motion as to document requests 1-10 and 12 and GRANTS IN PART Plaintiff's motion as to requests 11, 13, and 14. However, Microsoft shall not be compelled to produce the documents until Judge Gonzalez's ruling on Defendants' summary judgment motion of invalidity. In the meantime, Microsoft shall diligently search for responsive documents and prepare them for production. If Judge Gonzalez denies the motion, Microsoft shall produce the documents within four (4) court days of Judge Gonzalez's order.*fn4


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