I. INTRODUCTION

*1 On September 20, 2019, Plaintiff Pinn, Inc. (“Plaintiff” or “Pinn”) filed a Complaint against Apple, Inc. (“Defendant” or “Apple”) for patent infringement. Dkt. 1. Following consolidation of this action with two other actions (see Dkt. 71), on April 17, 2020, Pinn filed its operative Second Amended Complaint alleging infringement of U.S. Patent Nos. 9,807,491; 10,455,066; and 10,609,198. Dkt. 93.

On May 19, 2020, Pinn filed a Motion to Compel Apple to Provide Further Responses to certain Requests for Production of Documents (“RFPs”) and Interrogatories (Dkt. 115, “Prior Motion”). Following briefing and a hearing, on June 11, 2020, the Court issued an order granting in part and denying in part the Prior Motion, ordering, in part:

Dkt. 140 (“Order”) at 31.

On July 22, 2020, Pinn filed a Motion to Compel Apple to Comply with the Discovery Order and to Compel Document Production (Dkt. 173, “Motion”), with a Local Rule 37 Joint Stipulation, partially redacted on the public docket (Dkt. 173-2, “Joint Stipulation” or “Jt. Stip.”) and supporting and opposing declarations and exhibits, portions of which were filed under seal (Dkt. 173-3 to 173-17, 177-1 to 17-5 (sealed)). On July 30, 2020, each party separately filed a Supplemental Memorandum in support of or in opposition to the Motion, with portions of Apple's submission filed under seal. Dkt. 179-182. On July 31, 2020, the Court and the parties participated in an informal telephone conference regarding the Motion, with no orders issued. Dkt. 184. On August 3, 2020,

The Motion is now fully briefed. The Court finds the Motion may appropriately be decided without a hearing and the hearing set for August 13, 2020 is vacated. For the reasons set forth below and at the hearing, the Court rules as follows.

II. RELEVANT LAW

“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. (“Rule”) 26(b)(1). “Information within this scope of discovery need not be admissible in evidence to be discoverable.” Id. “Generally, the purpose of discovery is to remove surprise from trial preparation so the parties can obtain evidence necessary to evaluate and resolve their dispute.” Duran v. Cisco Sys., Inc., 258 F.R.D. 375, 378 (C.D. Cal. 2009) (citations omitted).

*2 Under Rule 34(a)(1), a party may serve on any other party requests, within the scope of Rule 26(b), to produce or permit inspection of, among other things, “(A) any designated documents or electronically stored information.” Such requests “must describe with reasonable particularity each item or category of items to be inspected ... [and] must specify a reasonable time, place, and manner for the inspection ....” Rule 34(b)(1)(A), (B). The party responding to a request for production must, “[f]or each item or category, ... either state that inspection ... will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons.” Rule 34(b)(2)(B). “An objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.” Rule 34(b)(2)(C).

Pursuant to Rule 33, “[a]n interrogatory may relate to any matter that may be inquired into under Rule 26(b).” Rule 33(a)(2). “Each interrogatory must, to the extent it is not objected to, be answered separately and fully in writing under oath.” Rule 33(b)(3). “The grounds for objecting to an interrogatory must be stated with specificity.” Rule 33(b)(4). If the answer to an interrogatory may be determined by examining a party's business records, and “if the burden of deriving or ascertaining the answer will be substantially the same for either party,” the responding party may answer by specifying (and making available) the records in sufficient detail to allow the interrogating party to locate and them as readily as the propounding party. Rule 33(d). A propounding party may move for an order compelling an answer to an interrogatory if “a party fails to answer an interrogatory submitted under Rule 33.” Rule 37(a)(3)(B)(iii).

If a party “fails to obey an order to provide or permit discovery,” the court may “issue further just orders.” Rule 37(b)(2) (listing possible sanctions for failure to obey a discovery order).

“Upon a motion to compel discovery, the movant has the initial burden of demonstrating relevance. In turn, the party opposing discovery has the burden of showing that discovery should not be allowed, and also has the burden of clarifying, explaining and supporting its objections with competent evidence.” United States v. McGraw–Hill Cos., 2014 WL 1647385, at *8 (C.D. Cal. Apr. 15, 2014) (citations and internal quotation marks omitted); see also DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002) (“The party who resists discovery has the burden to show that discovery should not be allowed, and has the burden of clarifying, explaining, and supporting its objections.”); Oakes v. Halvorsen Marine Ltd., 179 F.R.D. 281, 283 (C.D. Cal. 1998).

III. DISCUSSION

A. Issue A in the Motion: Compliance with the Court's Prior Order

The Order directed Apple to produce all nonprivileged documents responsive to RFP No. 12 and respond to Interrogatory Nos. 10 and 11 within 10 days or by June 30 for ESI. Order at 30-31. RFP No. 12 sought licenses, agreements, and assignments relating to the Accused Products; Interrogatory Nos. 10 and 11 asked Apple to identify any such or similar agreements. Jt. Stip. at 5. In what is organized as Issue A in the Joint Stipulation, Plaintiff argues that Apple withheld documents responsive to RFP No. 12 and Interrogatory Nos. 10 and 11 in violation of the Order. Id. at 5, 2-23; Dkt. 182 at 4.

Apple did not appear initially to contest that it had not produced all responsive documents, asserting instead that certain agreements were not “relevant.” See Jt. Stip. at 25-27; Dkt. 181 at 1, 4. However, Apple has now represented that it has or will as of the date of this order, provide the agreements “that are the subject of [the Motion]” and it “is thus withholding no documents requested by Pinn relating to these issues.” Dkt. 187.

*3 Based on Apple's representation that it is not withholding any responsive documents sought by the Motion, with knowledge of the Court's prior caution to Apple (see Dkt. 184), the Court denies the Motion as moot as to Issue A in the Joint Stipulation.

B. Issue B: Production of Apple's RPX Agreement and Renewals

In Interrogatory No. 18, Pinn asked Apple to describe its relationship with RPX Corp. Jt. Stip. at 28. Apple objected to the interrogatory on various grounds, but nonetheless responded by identifying business records under Rule 33(d). Id. at 28-29. Pinn argues Apple has not complied with Pinn's narrowed request for information sought by Interrogatory No. 18, that is, “readily identifiable agreements that Apple agrees exist and provide the costs of its membership” (id. at 29), arguing that it needs “Apple's subscription agreement and renewal agreements [to identify] the true costs of the license” (Dkt. 182 at 5). Although initially arguing Pinn's request for the “master subscription agreement and corresponding renewals with RPX” were a “fishing expedition” (Jt. Stip. at 32), Apple has since stated that it “produced its subscription agreement and renewals with RPX” (Dkt. 197 at 1).

Based on Apple's representation that it has produced the documents sought by the Motion, and as the Court has no reason to doubt Apple's representation, the Court denies the Motion as moot as to Issue B in the Joint Stipulation.

C. Issue B: Discovery Related to Apple Music Sales

The parties characterize Issue B in the Joint Stipulation as “Apple Music Sales,” relating to Pinn's Rule 30(b)(6) Deposition Damages Topic No. 5, Interrogatory No. 7, and RFP No. 89 (collectively, “Apple Music Requests”), each of which either directly or indirectly seeks information regarding product sales connected with Apple Music subscriptions. Jt. Stip. at 33-37. Apple asserted numerous objections to the Apple Music Requests, including objections based on lack of relevance, undue burden, and lack of proportionality. Id. Pinn argues that Apple uses product sales to drive Apple Music subscriptions, a factor in license valuation in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970). Jt. Stip. at 39. Pinn notes Apple represented it has no data or manner of tracking customer use of free Apple Music subscriptions tied to the purchase of Accused Products, but asserts Pinn finds that assertion “difficult to believe. Id.

Apple stands on is objections that information regarding sales through Apple Music is not relevant and reiterates that Apple Music sales are not “tied to the Accused Products.” Jt. Stip. at 39. Apple represents that it is not aware of any Apple promotion through which Apple Music was offered for free or at a discount in connection with the purchase of the Accused Products” and “Apple does not maintain any sales data in the ordinary course of business through which subscriptions to Apple Music are tracked in connection with the purchase of the Accused Products.” Id. at 40.

The Court finds, based on the showing and representations made by Apple, that the Apple Music Requests seek information that is not “proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Rule 26(b)(1). As a result, the Motion is denied as to the Apple Music Requests to the extent Pinn seeks a further response, and to the extent Apple seeks a protective order that it need not produce a witness prepared to testify as to Pinn's Rule 30(b)(6) Damages Topic No. 5, that request is granted.

IV. CONCLUSION AND ORDER

*4 For the reasons set forth above, the Motion (Dkt. 173) is DENIED in its entirety except that Apple's request for a protective order precluding the taking of testimony in response to Pinn's Rule 30(b)(6) Damages Topic No. 5 is GRANTED. Pinn's request for sanctions is denied as the Court finds Apple's conduct was substantially justified as to Issue C and further finds that such an award would be unjust here.

IT IS SO ORDERED.