Vivint v. Alarm.com Inc.
Vivint v. Alarm.com Inc.
2020 WL 13304191 (D. Utah 2020)
January 22, 2020

Waddoups, Clark,  United States District Judge

Possession Custody Control
Source Code
Third Party Subpoena
Proportionality
Failure to Produce
Protective Order
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Summary
The court granted Plaintiff Vivint's Motion to Compel Alarm.com to produce source code related to the theory of infringement identified in the infringement contentions. The court found that the source code was relevant and discoverable, and ordered Alarm.com to produce the information no later than February 4, 2020.
Additional Decisions
Vivint, Plaintiff,
v.
Alarm.com Inc., Defendant
Case No. 2:15-cv-00392-CW-CMR
United States District Court, D. Utah, Central Division
Filed January 22, 2020

Counsel

Adrian C. Percer, Pro Hac Vice, Weil Gotshal & Manges LLP, Redwood Shores, CA, David R. Wright, Alexis Keiko Juergens, Michael A. Manookin, Foley & Lardner, Ryan A. Cook, Sterling Arthur Brennan, Maschoff Brennan, Salt Lake City, UT, Justin L. Constant, Douglas W. McClellan, Weil Gotshal & Manges LLP, Melissa L. Hotze, Pro Hac Vice, US Department of Justice, Houston, TX, Robert S. Berezin, Weil Gotshal & Manges LLP, New York, NY, Charles J. Veverka, Kirk R. Harris, Maschoff Brennan, Park City, UT, Lannie Rex Sears, Maschoff Brennan Laycock Gilmore Israelsen & Wright PLLC, Salt Lake City, UT, Stephanie Nicole Adamakos, Pro Hac Vice, William Sutton Ansley, Pro Hac Vice, Weil Gotshal & Manges LLP, Washington, DC, for Plaintiff.
Allison N. Kempf, Pro Hac Vice, Andrei Harasymiak, Pro Hac Vice, Benjamin R. Osborn, David R. Marriott, Emma K. Kolesar, Jackie L. Carleton, Jill E. Greenfield, Jonathan D. Mooney, Keith R. Hummel, Pro Hac Vice, Marc J. Khadpe, Pro Hac Vice, Matthew J. Boggess, Pro Hac Vice, Michael J. Zaken, Pro Hac Vice, Rachel J. Lamorte, Pro Hac Vice, Retley G. Locke, Pro Hac Vice, Sharonmoyee Goswami, Richard J. Stark, Pro Hac Vice, Cravath, Swaine & Moore LLP, New York, NY, Mark M. Bettilyon, Thorpe North & Western LLP, Salt Lake City, UT, for Defendant.
Waddoups, Clark, United States District Judge

ORDER RE: MOTION TO COMPEL AND MOTION FOR PROTECTIVE ORDER

*1 Before the court is Plaintiff Vivint's (“Plaintiff”) Motion to Compel Alarm.com to Produce Source Code (“Motion to Compel”) (ECF 285), and Defendant Alarm.com's (“Defendant”) Motion for Protective Order (ECF 295). After the matter was fully briefed, the court held a hearing on the parties’ motions on December 16, 2019. After careful review of the pleadings, responses, and arguments presented, the court GRANTS the Motion to Compel, and DENIES the Motion for Protective Order for the reasons set forth herein.
 
I. BACKGROUND
A. Motion to Compel
Plaintiff moves to compel the production of Defendant's “Insights Engine” source code under Federal Rule of Civil Procedure 26(e) (ECF 285). Insights Engine “ ‘alerts subscribers if a door is accessed, locked, unlocked or held open at an unexpected time’ ” (ECF 292 at 2). Plaintiff alleges the source code is relevant and discoverable because its infringement contentions sufficiently identify the Insights Engine functionality in substance and give notice of a specific theory of infringement. Namely, “triggering notifications to user devices ‘depending on the event of condition, including an exception condition’ based on different rules, including time-based triggers” (ECF 292). In its Response in Opposition (ECF 288), Defendant asserts that despite producing pre-release source code for Insights Engine to Plaintiff in April of 2016, and the fact that Plaintiff's counsel questioned witnesses about the product, Plaintiff did not refer to the Insights Engine in its final infringement contentions or in its revised final infringement contentions (ECF 288) and should not be allowed discovery at this late stage.
 
At the hearing, Plaintiff argued that because Defendant was on fair notice of its theory of infringement when Defendant produced the pre-release source code called “Aberration Engine,” Defendant should finish the production of source code for Insights Engine. Plaintiff also argued that given the quantity of documents produced, Plaintiff did not initially understand that all the source code was not produced. After some effort and time, right before filing the present motion, Plaintiff confirmed only an early version of the product, “Aberration Engine,” was produced. Defendant argued that the “time-based triggers” referenced in Plaintiff's infringement contentions encompass the user-defined schedules only, and not the machine learning technology that Plaintiff now requests. Defendant also contends allowing further discovery on an unaccused feature would unfairly prejudice them given the late stage of this case.
 
B. Motion for Protective Order
Defendant filed a Motion for Protective Order to prohibit Plaintiff from seeking expert reports and briefings from third party SecureNet Technologies LLC (“SecureNet”) produced in relation to a lawsuit Defendant filed against SecureNet in the District of Delaware (ECF 295). Defendant argues the requested expert reports are not relevant to any claim or defense in this case, that the request is untimely, and that the documents are not in the possession or custody of SecureNet. Plaintiff responded by arguing Defendant lacks standing to object to the third-party subpoena, the documents are relevant and responsive to the subpoena, and that SecureNet was cooperative and willing to produce the documents (ECF 296).
 
II. DISCUSSION
A. Motion to Compel
*2 Utah Local Patent Rule 2.3 requires identification of each “Accused Instrumentality” which the party claiming infringement is aware of “by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process.” District of Utah LPR 2.3(b). Neither party has identified any binding authority interpreting the relevant provision of this local rule and whether it requires the Accused Instrumentality be described with particularity. Other districts interpreting their own local patent rules have held that similar language requires the accuser to specifically identify all accused devices. Oracle America, Inc. v. Google Inc., 2011 WL 4479305 at *2 (N.D. Cal., Oct. 16, 2011). In Oracle, the court was interpreting the Northern District of California Patent Local Rule 3-1(b) that requires the “identification [to] be as specific as possible” which includes the product's name and model number, if known. Id. at *1. The Utah Local Patent Rules do not include this exact language but do require detail.
 
Case law from various circuits clearly states that there is no bright-line rule limiting discovery to only those products specifically accused in a party's infringement contentions. EPOS Technologies v. Pegasus Technologies, 842 F. Supp. 2d 31, 33 (D.D.C. 2012); see also, O2 Micro Int'l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1363 (Fed. Cir. 2006) (“[district judges] have taken various positions depending on the facts of the particular case as to whether non-compliance with the rules for disclosure of contentions should bar reliance on theories omitted from the preliminary or final contentions”); Honeywell Int'l Inc. v. Acer Am. Corp., 655 F. Supp. 2d. 650, 655–56 (E.D. Tex. 2009) (“there is no brightline rule that discovery is permanently limited to the products specifically accused in a party's [preliminary infringement contentions]”). In EPOS, the District of Colombia court followed the Eastern District of Texas and held that discovery concerning products not explicitly listed in the infringement contentions is appropriate when: “1) the infringement contentions give notice of a specific theory of infringement; and 2) the products for which a plaintiff seeks discovery operate in a manner reasonably similar to that theory.” EPOS Technologies, 842 F. Supp. 2d 31 at 33 (citing Nidec Corp. v. LF Innotek Co., Ltd., 2009 WL 3673253, at *2 (E.D. Tex. Sept. 2, 2009)). In the present matter, the above factors weigh in favor of production.
 
The infringement contentions appear to identify the functionality in substance because the contentions are based on time-based triggers. Further, the court is not persuaded that Defendant has no continuing obligation to produce because “Insights Engine” and “Aberration Engine” were not specifically listed in the final infringement contentions. It is clear Defendant was on notice of Plaintiff's theory of infringement related to Insights Engine as portions of the pre-release Insight Engines source code was produced.
 
Based on the court's understanding of the functionality of the product, Insights Engine's most updated technology operates in a manner reasonably similar to Plaintiff's theory of infringement based on “time-based triggers” notwithstanding Plaintiff's failure to specifically mention machine-based learning features in its final infringement contentions. Without binding authority interpreting Utah LPR 2.3 as requiring precise, specific, or explicit identification of each accused instrumentality, the court is not persuaded that Plaintiff was required to distinguish between user set alerts and machine-based triggers in their final infringement contentions in order for the updated Insights Engine code to be discoverable.
 
The court is also not persuaded that Defendant would be unfairly prejudiced given the late stage of the case. While Judge Waddoups has already held a claim construction hearing (ECF 272), and the court ordered fact discovery deadline has passed (ECF 150), the parties have been operating as though discovery is still open and, in letters dated December 5th and 7th of 2018 (ECF 296 Ex. 3 and 4), agreed to informally extend discovery. As the court noted at the hearing, both parties have casually allowed discovery to continue past the court ordered deadline, which has further complicated this matter. Furthermore, while the court recognizes that significant time has passed since the Insights Engine product was released and that this case has been pending for over three and a half years, Judge Waddoups has yet to issue a Markman ruling, and no trial date has been set. The Local Patent Rules may have been designed to avoid prolonged, uncertain, or vexatious infringement contentions, but given the relatively early stages of this litigation, the court does not find that Defendant would be prejudiced by producing the source code. Therefore, the Motion to Compel is granted.
 
B. Motion for Protective Order
*3 Defendant lacks standing to bring the present motion. “A party or any person from whom discovery is sought may move for a protective order” to “protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P. 26(c)(1) (emphasis added). Here, Defendant is seeking relief in the form of a protective order but has not asserted that a protective order is needed to protect them from any of the dangers listed in 26(c)(1). Rather, Defendants argue that 1) the requested expert reports and briefs are not relevant to any claim or defense in the case; 2) the request is untimely; and 3) the documents are not in the possession or custody of SecureNet (ECF 295).
 
Notwithstanding the court's misgivings that a protective order is the appropriate motion before us, the substantive merits of Defendant's general objection to the third-party subpoena fail to justify entry of a protective order. The court agrees with Plaintiff that at this point it is premature to find that the evidence sought is irrelevant to the claims and potential damages. Furthermore, the court appreciates that Plaintiff has worked with SecureNet to narrow the scope of discovery sought. See Fed. R. Civ. P. 26(b)(1).
 
The court also finds the third-party subpoena timely. The subpoena was sent on November 9, 2018, well before the official close of fact discovery. Furthermore, the subpoena is listed in the December 5, 2018, letter from Plaintiff's counsel to Defendant's counsel identifying unresolved discovery issues. In response to the December 5, 2018, letter Defendant's counsel confirmed “the parties’ agreement that 1) their December 5 letters constitute the entirety of the open issues of fact discovery and 2) timeliness is not a basis to object to continued discussion of the issues enumerated in the December 5 letters” (ECF 296 Ex. 4). The court finds the subpoena was timely under the court-ordered close of fact discovery and under the parties’ informal agreement.
 
Lastly, the court is not persuaded by Defendant's argument that the documents are not in SecureNet's control and are therefore not available for production. Plaintiff submitted a declaration from SecureNet's President Shawn Cox confirming SecureNet's ability to comply with the subpoena (ECF 296 Ex. 1).
 
Because Defendant failed to demonstrate the requisite annoyance, embarrassment, oppression, or undue burden or expense as to itself as required under Federal Rule of Civil Procedure 26(c)(1), or that the discovery is outside the scope of Rule 26(b), the court DENIES Defendant's Motion for Protective Order.
 

ORDER
For the reasons stated above, the court hereby GRANTS Plaintiff's Motion to Compel (ECF 285) and DENIES Defendant's Motion for Protective Order (ECF 295). Defendant is ordered to produce information on Insights Engine that is responsive to Plaintiff's First Set of Requests for Production and Tangible Things Request For Production Nos. 2, 8, 34 and 36 no later than February 4, 2020. Additionally, by February 4, 2020, the parties are ordered to file an updated scheduling order which discusses and captures all remaining discovery and the deadlines to complete discovery.
 
DATED this 22 January 2020.