Katrinecz v. Motorola Mobility LLC
Katrinecz v. Motorola Mobility LLC
2014 WL 12160773 (W.D. Tex. 2014)
August 21, 2014

Lane, Mark,  United States Magistrate Judge

Failure to Produce
Proportionality
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Summary
Motorola had produced ESI in the form of emails, but had objected to the production of certain documents based on confidentiality. The court denied Plaintiffs' motion to compel, finding that Motorola had provided sufficient information regarding its knowledge of the '872 Patent.
Additional Decisions
Andrew Katrinecz and David Byrd, Plaintiffs,
v.
Motorola Mobility LLC, Defendant
A-12-CV-235 LY
Signed August 21, 2014

Counsel

Christopher R. Johnson, Yetter Coleman LLP, Jennifer Tatum Lee, Sergio R. Davila, Cabrach J. Connor, Isabelle Maria Antongiorgi, David E. Dunham, Taylor Dunham and Rodriguez LLP, Willem G. Schuurman, Eric B. Meyertons, Ryan Tyler Beard, Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C., Austin, TX, Marc S. Tabolsky, Yetter Coleman LLP, Houston, TX, for Plaintiffs.
Andrew R. Sommer, Winston & Strawn LLP, Washington, DC, David Enzminger, Winston & Strawn LLP, Los Angeles, CA, James Winn, Jonathan E. Retsky, Kurt Mathas, Stephen Wurth, Winston & Strawn LLP, Chicago, IL, Paige Arnette Amstutz, Stephen E. McConnico, Steven J. Wingard, Scott, Douglass & McConnico, LLP, Austin, TX, for Defendant.
Lane, Mark, United States Magistrate Judge

ORDER

*1 Before the Court are Plaintiffs' Motion to Compel Discovery Responses Regarding Motorola's Knowledge of the '872 Patent, Attempted Purchase of An Interest in the '872 Patent, and Documents From Prior Motorola Litigation Involving the Technology at Issue (Clerk's Dkt. #118); and Motorola Mobility LLC's Response to Plaintiffs' Motion to Compel Discovery Responses Regarding Motorola's Knowledge of the '872 Patent, Attempted Purchase of An Interest in the '872 Patent, and Documents From Prior Motorola Litigation Involving the Technology at Issue (Clerk's Dkt. #113).
I.
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense, including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter. FED. R. CIV. P. 26(b)(1). For good cause, the court may order discovery of any matter relevant to the subject matter involved in the action, and relevant information need not be admissible at the trial if the discovery appears “reasonably calculated to lead to the discovery of admissible evidence.” Id. If a party fails to fully answer an interrogatory or request for production of documents, the party seeking the discovery may move for an order compelling an answer to that discovery request. FED. R. CIV. P. 37(a)(3)(B).
II.
By way of Plaintiffs' Motion to Compel, Plaintiffs seek to compel information falling into three categories. Specifically, Plaintiffs contend Defendant Motorola Mobility LLC (“Motorola”) should be compelled to respond to discovery concerning: (a) Motorola's attempt to purchase an interest in the '872 Patent, the patent at issue in this case; (b) Motorola's knowledge of the '872 Patent, prior to this suit; and (c) prior litigation involving a Motorola patent which cited the parent patent to the '872 Patent as prior art. The undersigned will address the categories in reverse order.
A. Prior Litigation
Plaintiffs contend Motorola should be compelled to respond to a number of document requests seeking informaiton from prior patent litigation in Motorola Inc. v. Vtech Communications, Inc., et al., No, 5:07-171 (E.D. Tex.). Plaintiffs descibe their discovery requests as seeking damages-related expert opinions, facts, and analysis relating to the Motorola keyboard patents, settlement-related documents and information, and technical information reflecting Motorola's own position on keyboard components, infringement, and validity issues, again related to the keyboards.
As an initial matter, the undersigned notes Plaintffs contend Motorola expressed objections and, after meeting and conferring, confirmed its refusal to produce the requested documents. However, the correspondence Plaintiffs cite for this contention indicates Motorola did object, but stood ready to meet and confer on the issues. (Plf. Mot. Ex. C). According to Motorola, Plaintiffs chose not to meet and confer and instead filed this motion.
*2 Plaintiffs are not contending Motorola has wholly failed to respond to their discovery requests. Rather, Motorola objects to the broad scope of Plaintiffs' requests. Specifically, Motorola points out the prior litigation involved a number of issues and patents not related to the '872 Patent which covers keyboard design. Motorola also objects to production of expert reports and settlement-related documents as irrelevant. Plaintiffs maintain such documents would be relevant to the issue of damages in this case. Motorola, in turn, charatcterizes this argument as inconsistent because Plaintiffs have not cited or relied upon the settlement-related information already produced in their damage disclosures.
Even if the undersigned were to agree with Plaintiffs concerning the relevance of information Motorola has declined to produce, Motorola's objections based on confidentiality are well taken. Motorola has presented affidavit testimony establishing that the prior litigation involved more than fifty third parties and a restrictive protective order governing disclosure of information produced in that litigation. (Motorola Resp. Decl. of Kevin Post). Before Motorola can produce documents governed by that order it would need to seek the consent of numerous third parties. Plaintiffs have not shown the rather limited relevance of the documents sought outweighs this burden on Motorola.
Accordingly, Plaintiffs' motion to compel this category of information is denied.
B. Motorola's Prior Knowledge of the '872 Patent
The second category of information sought by Plaintiffs relates to when and how Motorola received notice of the '872 Patent. Plaintiffs maintain Motorola has failed to fully respond to their discovery requests aimed at obtaining such information. Specifically, Plaintiffs contend Motorola has not produced e-mails which would be responsive to these requests and also contend Motorola has refused to confirm all responsive documents relating to consideration by Motorola of the purchase of Plantiffs' patents have been produced.
Motorola, in turn, denies it has failed to fully comply with Plaintiffs' requests. Specifically, Motorola states it provided the confirmation Plaintiffs seek by August 6, 2014. Motorola also maintains it has produced, and is continuing to produce in the e-discovery process, responsive emails. As Motorola points out, Plaintiffs themselves stated it was Motorola's email production which revealed Motorola's prior knowledge of the '872 Patent. In short, Motorola maintains there is nothing for the court to compel. Plaintiffs have not pointed to any specific deficiency which rebuts Motorola's position or causes the court to doubt Motorola's truthfulness at this point.
Accordingly, Plaintiffs' motion to compel this second category of information is denied.
C. Motorola's Attempt to Purchase an Interest in the '872 Patent
Finally, Plaintiffs maintain Motorola should be compelled to respond to discovery requests related to the acquisition by Google, Inc.(“Google”), Motorola's parent company, of a potential interest in the '872 Patent. Google acquired its interest at some point in July 2014 from Plaintiff Andrew Katrinecz's ex-wife Ms. Cothern. Plaintiffs now request the court order Motorola to collect and produce all responsive information concerning the Cothern transaction including (i) all documents (including email) sent to or received from Ms. Cothern, or anyone acting on her behalf, (ii) all drafts of Ms. Cothern's declaration, the patent assignment agreement, any and all agreements (and drafts) proposed for Ms. Cothern; (iii) all bank records showing payment of any sum to Ms. Cothern; (iv) phone records showing contact with Ms. Cothern or her counsel; (v) documents (and drafts) discussing payment to Ms. Cothern; and (vi) documents reflecting the hiring or retaining counsel for Ms. Cothern by Counsel for Motorola/Google.
*3 Plaintiffs first contend Motorola has refused to produce documents on behalf of Google, and instead informed Plaintiffs they must serve third-party discovery on Google. Plaintiffs rely on an e-mail from Andrew Sommers (“Sommers”) counsel for Motorola in support of this contention. (Plf. Mot. Ex. H). However, while Sommers does note in his e-mail that Google is not a party to this litigation, it is clear he is refusing to produce information on behalf of Google based on his belief that such informaion is privileged and thus immune from discovery.
Plaintiffs also fails to acknowledge that the e-mail they cite is part of an e-mail “chain” on the subject. Earlier in that chain Sommers states all e-mails, and attachments, exchanged with Ms. Cothern were produced on July 28, 2014, including drafts of the patent assignment agreement and drafts of a declaration by Ms. Cothern. (Motorola Resp. Ex. B).
In responding to the motion to compel Motorola asserts two bases for its refusal to produce the additional discovery sought by Plaintiffs. First, Motorola contends the information sought is protected by both the work-product doctrine and attorney-client privilege. As Sommers makes clear in his e-mail communications, he was the sole point of contact with Ms. Cothern and the decision regarding Google's agreement with her was the product of communications between himself, on behalf of his client, and counsel for Google.
Plaintiffs suggest attorney communications are not always protected, specifically when attorneys are not acting in a legal capacity but rather fostering a business transaction. Although legally correct, Plaintiffs' point is factually inapplicable to this situation and belied by their own contentions. Plaintiffs clearly believe the acquisition of Ms. Cothern's interest in the '872 Patent was a strategic legal decision arising solely from the context of this litigation. Moreover, Sommers is acting as litigation counsel for his client Motorola, not as a business consultant.
Motorola's second basis for resisting Plaintiffs' discovery is that the discovery sought is not relevant to any issue in this lawsuit. Plaintiffs contend Motorola's pending motion to dismiss is based on Ms. Cothern's interest in the '872 Patent. They maintain the discovery is thus relevant. However, as Motorola points out, the basis for the pending motion to dismiss is the existence of Ms. Cothern's interest at the time this litigation began, in 2012. Plaintiffs have not explained how the acquisition and ownership of that interest in July 2014 is relevant to that issue.
Accordingly, Plaintiffs' motion to compel discovery related to the acquisition of an interest in the '872 Patent is denied.
III.
Accordingly, Plaintiffs' Motion to Compel Discovery Responses Regarding Motorola's Knowledge of the '872 Patent, Attempted Purchase of An Interest in the '872 Patent, and Documents From Prior Motorola Litigation Involving the Technology at Issue (Clerk's Dkt. #118) is hereby DENIED.
All other relief sought by way of the motion before the court which is not expressly granted herein is denied.
SIGNED on August 21, 2014.