The opinion of the court was delivered by: Lucy H. Koh United States District Judge
ORDER DENYING MOTION TO COMPEL EXPEDITED DISCOVERY
Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively "Samsung") move to compel expedited discovery from Plaintiff Apple, Inc. ("Apple"). Specifically, Samsung seeks an order compelling Apple to produce product samples, packaging, and packaging inserts for the next generation iPhone and iPad. The Court heard oral argument on June 17, 2011. Having considered the submissions 24 and arguments of the parties, the Court DENIES Samsung's motion to compel.
On April 15, 2011, Plaintiff Apple, Inc. ("Apple") filed suit against Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications 28 America, LLC (collectively "Samsung"). In its Complaint, Apple alleges that Samsung's Galaxy cell phones and computer tablets infringe Apple's trade dress, trademarks, and utility and design 2 patents. On April 19, 2011, Apple filed a motion seeking expedited discovery related to five 3 products that Samsung was allegedly preparing to introduce into the U.S. market: (1) the Galaxy 4 S2 cell phone, (2) the Galaxy Tab 8.9 tablet computer, (3) the Galaxy Tab 10.1 tablet computer, (4) 5 the Infuse 4G cell phone, and (5) the 4G LTE (or "Droid Charge") cell phone. Based on images 6 and models provided to the public, Apple alleged that these new products would mimic Apple's 7 protected designs in the iPhone and iPad and infringe Apple's intellectual property. In particular, 8 Apple claimed that Samsung delayed introduction of its new tablet computers "to give [Samsung] 9 additional time to mimic more closely" the recently released iPad 2, and that Samsung's 10 forthcoming cell phone products were designed to mimic the iPhone 4. See Pl.'s Mot. to Expedite Discovery at 3-5, ECF No. 10. Apple indicated that it was considering seeking a preliminary
injunction to prevent Samsung from introducing its new products into the U.S. market, and it 13 therefore sought expedited discovery in order to evaluate whether a preliminary injunction motion 14 was warranted. 15 The Court held a hearing on Apple's motion for expedited discovery on May 12, 2011, and 16 issued an order granting limited expedited discovery on May 18, 2011. The Court denied Apple's 17 request for expedited written discovery and a 30(b)(6) deposition, but ordered Samsung to produce 18 the latest iteration of product samples, packaging, and package inserts for its new products. See 19 Order Granting Limited Expedited Discovery, ECF No. 52. In so ordering, the Court found that 20 these product and packaging samples would be directly relevant to any preliminary injunction 21 motion. Id. at 4. Although the Court recognized that production of unreleased products could be 22 prejudicial, the Court found that Samsung's claim of prejudice was "undermined to some extent by 23 evidence that Samsung has already released images and samples of its forthcoming products to the 24 media and members of the public." Id. at 5. Accordingly, the Court granted limited expedited 25 discovery of product, packaging, and packaging insert samples under a stringent protective order, 26 to be produced with the designation "Outside Counsel Eyes Only." Id. at 6. 27
At the hearing on Apple's motion for expedited discovery, counsel for Samsung argued that 28 if Apple were granted expedited discovery, Samsung should be entitled to some form of reciprocal discovery. See Tr. of May 12, 2011 Proceedings before Judge Koh, Decl. of Todd M. Briggs ISO 2 Samsung's Mot. to Compel ("Briggs Decl."), Ex. 28 at 24:2-7, ECF No. 57. Specifically, Samsung 3 stated:
[T]here are things that we fairly should be entitled to get, through discovery, to oppose a preliminary injunction, such as any evidence they have of any confusion, or lack of confusion, between [Samsung's] products and Apple products; any documents concerning good will; loss of good will; market share; reputation to Apple . . . .
If they've done research surveys or studies relating to the likelihood of confusion, we would be entitled to those if we were to fairly oppose a preliminary injunction motion.
Id. at 34:10-22. Apple indicated that it would agree to some reciprocal expedited discovery, 10 provided the requested discovery was reasonable and necessary to oppose a preliminary injunction. might be appropriate, but found that the issue was not ripe for decision at that time. Id. at 49:4-7, Shortly after the hearing on Apple's motion for expedited discovery, Samsung contacted
Apple to request reciprocal expedited discovery. Briggs Decl. ¶ 30.
Rather than seeking the 16 evidence of consumer confusion and loss of
good will discussed at the motion hearing, Samsung 17 asked Apple to
produce samples of the most current version of the next generation
iPhone and 18 iPad, along with the retail packaging and package
inserts. Id. ¶ 30 & Ex. 10. Apple refused to 19 provide the requested
discovery, on grounds that future Apple products would have no
relevance to 20 any preliminary injunction motion. Id. ¶ 32-34 & Ex.
12-13. Apple indicated, however, that it 21 remained willing to engage
in expedited discovery directed to relevant issues and proposed a 22
schedule for production of documents and depositions of declarants
following the filing of a 23 preliminary injunction motion.*fn1
Id. Ex. 13. Samsung now moves to compel Apple to produce, as
24 reciprocal expedited discovery, samples of Apple's next generation
iPhone and iPad and the 25 associated packaging and inserts. Apple
opposes Samsung's motion.
regarding any non-privileged matter that is relevant to any party's claim or defense." Fed. R. Civ. 4 P. 26(b)(1). The Rules also provide a method for compelling such discovery, in the event that a 5 party refuses to provide requested discovery that falls within the scope of Rule 26(b). If, after 6 notice and an attempt to meet and confer, a party fails to provide requested discovery, the 7 requesting party "may move for an order compelling disclosure or discovery." Fed. R. Civ. P. 8
The Federal Rules also dictate the timing of discovery. Pursuant to Rule 26(d), a party "may not seek discovery from any source" prior to the conference required by Rule 26(f), which 26(d), (f). In this case, because the parties have not held a 26(f) conference and discovery has not 13 formally commenced, Samsung must show that expedited discovery is warranted in order to 14 compel production by Apple. Courts within the Ninth Circuit generally use the "good cause" 15 standard to determine whether to permit discovery prior to a Rule 26(f) conference. See, e.g., 16 (N.D. Cal. Jan. 7, 2010); Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273, 276 (N.D. 18 Cal. 2002). "Good cause may be found where the need for expedited discovery, in consideration of 19 the administration of justice, outweighs the prejudice to the responding party." Semitool, 208 20 F.R.D. at 276. In determining whether good cause justifies expedited discovery, courts commonly 21 consider factors including: "(1) whether a preliminary injunction is pending; (2) the breadth of the 22 discovery requests; (3) the purpose for requesting the expedited discovery; (4) the burden on the 23 defendants to comply with the requests; and (5) how far in advance of the typical discovery process 24 the request was made." American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 25 2009).
introducing allegedly infringing products into the U.S. market. Apple previously sought expedited
Under the Federal Rules of Civil Procedure, parties generally "may obtain ...