*1 mSIGNIA moves for review of two of the Magistrate Judge's Orders in this case. (Dkt. Nos. 96, 102.) After considering mSIGNIA's various arguments, the Court DENIES each of mSIGNIA's motions for review.

1. Motion for Review of Magistrate Judge's Order Regarding Motion to Compel

The relevant procedural background related to this dispute is summarized in the Magistrate Judge's Order, and mSIGNIA has not objected to that summary. (Dkt. No. 86; see also Dkt. No. 87 (Sealed Order).) Briefly, in conducting discovery, the parties ultimately agreed to “email production requests” (“EPRs”) as set out by this Court's Standing e-Discovery Order, including specific search parameters for mSIGNIA's first set of EPRs. InAuth objected to each of mSIGNIA's EPRs to the extent each sought “documents pertaining only to potential future products rather than the Accused Products.” (Dkt. No. 87 at 2.) InAuth then withheld some such documents, although it did produce documents concerning “future products contemplated ... as of the date of any hypothetical negotiation in this case.” (Id. (quoting Dkt. No. 61 at 6).) mSIGNIA initiated the joint stipulation process required by L.R. 37 and brought its motion to compel document production to the Magistrate Judge. (Id. at 3.)

In a tentative order issued after the parties filed their L.R. 37-2 joint stipulation, but before the deadline under the local rules for the parties to file their supplemental briefs, the Magistrate Judge stated her opinion that she was inclined to deny the motion and provided the reasoning underlying that opinion. (See Dkt. No. 67 (Notice of Tentative Ruling).) The Magistrate Judge's tentative order found, based on mSIGNIA's arguments concerning the parties' obligations under the Standing e-Discovery Order, that an award of attorney fees to InAuth would not be justified. The parties then filed their supplemental briefs and the Magistrate Judge held a hearing on mSIGNIA's motion. In its supplemental brief and at the hearing, mSIGNIA sought solely to address one issue, arguing that evidence of contemplated future products is relevant to its patent damages determination. After the hearing, the Magistrate Judge issued a final order denying mSIGNIA's motion. The final order included additional analysis addressing the arguments made by mSIGNIA in its supplemental brief and at the hearing. The Magistrate Judge also found cost-shifting appropriate only as to the fees InAuth incurred after she published the tentative order. (Dkt. No. 87 at 8 (fees awarded, expected to be in the ballpark of $10,000).)

mSIGNIA's current motion now seeks review on six grounds:

*2 (Dkt. No. 101-1 (Notice of Motion).)

mSIGNIA's first ground is summarily addressed. The Court's Standing E-Discovery Order states, “[t]his Order supplements all other discovery rules and orders ... [e]xcept as expressly stated, nothing in this order affects the parties' discovery obligations under Federal or Local Rules.” The Magistrate Judge's holding that “[t]he Standing Order does not affect the parties' discovery obligations under the rules except as ‘expressly stated,’ and nothing in the Standing Order expressly requires a party to produce irrelevant documents,” is not contrary to law.

Grounds (2) and (3) blend together and are addressed together. In her final order, the Magistrate Judge considered mSIGNIA's argument that documents related to future products are relevant to its damages calculation in this case. (Dkt. No. 87 at 5–8 (section of order titled “Relevancy Based on Damages”).) Indeed, the Magistrate Judge directly addressed the arguments mSIGNIA now raises. Her final order stated:

(Id. at 7-8.) mSIGNIA urges that the point it's making is slightly different: that InAuth's discussions of a future product show that InAuth's current “non-infringing alternative” product is inferior, and that this information is relevant to the reasonable royalty damages calculation. But the problem with mSIGNIA's characterization of the issues leads to the same conclusion reached by the Magistrate Judge. Because the future product has not yet been developed, even considering email discussions about ideas for future products by InAuth employees, mSIGNIA lacks a real basis to say that with it, InAuth will return to a product that infringes the asserted patents. General email comments about “returning” to V3 are not the same as actually creating and executing a product that infringes the asserted patent. mSIGNIA emphasizes in its briefs that its concerns regarding damages exist separate and apart from the question of patent infringement. (Dkt. No. 116-1 at 12.) But for this particular dispute regarding non-infringing alternatives, the issues are intertwined. This much is clear from mSIGNIA's own papers, where mSIGNIA asserts without support that any future InAuth product is bound to be an infringing product. (Dkt. No. 116-1 at 14 (“InAuth is actively planning to infringe in lieu of continuing with the allegedly ‘acceptable’ alternative, V2.”), 15 (“InAuth is still intent on implementing an infringing product to replace the inferior alternative.”).) As the Magistrate Judge correctly noted, whether or not some future product will actually infringe (i.e., support mSIGNIA's position that its current non-infringing alternatives is inferior) is too speculative and thus simply “not probative of the value hypothetical negotiators would have placed on the accused functionality in January 2017.” (Dkt. No. 87 at 8.) Importantly for purposes of this motion, mSIGNIA does not sufficiently acknowledge the speculative nature of its position regarding future products and the fact that there is no guarantee that one will someday be created that infringes the asserted patents.

*3 Regarding grounds (4) and (5), mSIGNIA conflates the relevant issues. Indeed, mSIGNIA would characterize the record as one where the Magistrate Judge, having considered all the issues in her tentative order, found all of mSIGNIA's positions “not insubstantially justified,” but after receiving further briefing, then found mSIGNIA's same positions “not substantially justified” on the same issues. But mSIGNIA was not sanctioned “simply for completing its record and arguing against the tentative.” (Dkt. No. 116-1 at 22.) As the Magistrate Judge observed, mSIGNIA's supplemental brief did not just argue against the tentative on the same record, but instead “rais[ed] for the first time ... the ‘book of wisdom’ doctrine.” (Dkt. No. 87 at 5.) Indeed, mSIGNIA itself acknowledges that its dispute over the relevance of the sought documents to damages was the only dispute it raised in its supplemental papers and at the hearing on the motion. On the other hand, the Magistrate Judge's original decision not to shift costs was “given the unique requirements of the Standing Order, including the requirement to negotiate over the search terms in EPRs.” (Id. at 8.) The Magistrate Judge's Order does not state that the tentative cost-shifting determination was made on the issue of relevancy to damages or a book of wisdom argument, as mSIGNIA suggests. On this record, the Magistrate Judge's determination to shift costs solely for costs incurred after she issued her tentative order (particularly where mSIGNIA brought new arguments for the first time after the tentative order was issued) is not clearly erroneous, contrary to law, or in violation of due process.

Ground (6) is moot given the Court's other determinations.

The Court DENIES Plaintiff's Motion for Review of the Magistrate Judge's Order Regarding Plaintiff's Motion to Compel. (Dkt. No. 95.)

2. Motion for Review of Magistrate Judge's Order Regarding Protective Order

Again, the relevant procedural background related to this dispute is provided in the Magistrate Judge's Order. (Dkt. 89; see also Dkt. 90 (sealed Order).) Some aspects are disputed by mSIGNIA, but the main facts are not. Briefly, this motion involves the scope of discovery mSIGNIA sought from InAuth's corporate parent, American Express Company (“AmEx”) and one of AmEx's other subsidiary companies, Accertify, Inc (collectively, “Movants”). (See Dkt. 90 at 1 (referring to Accertify as a “sister corporation” to InAuth).) Movants are not defendants in this lawsuit, and mSIGNIA has not separately attempted to establish that InAuth and its parent company are alter egos of one another. mSIGNIA served deposition subpoenas listing 12 topics on Movants in July 2018. After the parties met and conferred, mSIGNIA served new subpoenas listing 13 topics for deposition testimony in September 2018. (Id.) After further fruitless meet and confer attempts, Movants moved for a protective order precluding mSIGNIA from asking about some of the topics in the deposition subpoenas. (Id. at 1, 3.)

The Magistrate Judge's Order specifically considered: (1) whether Movants' objections to mSIGNIA's deposition subpoenas were waived as untimely; and (2) Movants' objections to Topics 6-8, 10, and 12 of those subpoenas. The Magistrate Judge found that Movants had missed their technical deadline under the Federal Rules of Civil Procedure to file their objections, but after considering the relevant factors, found that Movants had not waived their objections to the subpoenas. (Dkt. No. 90 at 3–4.) Although the Magistrate Judge commented that the record suggested that the parties had specifically met and conferred about the deadline for Movants to file their motion for protective order, the Magistrate Judge found it unnecessary to “resolve this factual issue in light of its finding as to waiver.” (Id. at 4 n.2.) After considering each of Movants' objections, the Magistrate Judge agreed that mSIGNIA's noticed topics were either overly broad, not relevant, or unduly burdensome. (Id. at 5–7.) The Magistrate Judge found that under Rule 37(a)(5)(A), an award of reasonable expenses to the Movants was appropriate. (Id. at 7.)

Like its other motion for review, mSIGNIA again seeks review on six separate grounds. (Dkt. 102 at 1.) This time, they don't need to be slavishly repeated. As InAuth observes, many of the arguments mSIGNIA makes in its motion are arguments that it did not sufficiently raise in its original briefing before the Magistrate Judge. The Court declines to consider arguments that either party failed to raise for the first time before the Magistrate Judge. Hightower v. JP Morgan Chase, No. CV 11-1802 PSG (PLAx), 2012 WL 12878312, at *2 (C.D. Cal. Sept. 28, 2012) (quoting Jones v. Sweeney, No. 04-CV-6214, 2008 WL 3892111, at *2 (E.D. Cal. Aug. 21, 2008)) (“ ‘Motions for reconsideration and objections to a Magistrate Judge's order are not the place for a party to make a new argument and raise facts not addressed in his original brief.’ This Court will not permit Defendant to take advantage of the review process in this way.”); United States v. Boyce, No. CV 13-00601 MMM (JEMx), 2014 WL 7507240, at *7 (C.D. Cal. May 2, 2014) (collecting cases for proposition that “district courts may decline to consider arguments raised in Rule 72(a) motions that were not made before the magistrate judge.”). For this reason, the Court declines to consider mSIGNIA's new arguments regarding Topic No. 12. It is also unnecessary to address the parties' dispute regarding future products (Topic No. 10) because it's been covered in the context of mSIGNIA's other motion for review.

*4 There are only two real issues for the Court to address: (1) mSIGNIA's arguments related to Topic Nos. 6-8, which requested testimony on the issue of AmEx's access to indemnity from an escrow fund for patent infringement and (2) mSIGNIA's argument that cost-shifting was inappropriate.

Topics 6-8 of the deposition subpoenas sought “information relating to the ‘purpose of,’ ‘the contents or balance,’ and ‘any claims made on’ an escrow fund formed in connection with ... AmEx's acquisition of Defendant.” (Dkt. 90 at 5.) The Magistrate Judge found the topics to be overly broad, observing that the topics as written would permit mSIGNIA to ask witnesses about amounts paid out to satisfy indemnification obligations “wholly unrelated to the accused functionality.” (Id.) The Magistrate Judge also discussed Plaintiff's one-sentence argument that the purpose of, balance of, and existence of claims against the escrow fund are relevant to the hypothetical negotiation. (Id.) The Magistrate Judge's Order states, “Plaintiff states this argument without further explaining it .... If the Court has correctly understood Plaintiff's under-developed relevancy argument, then it appears Plaintiff already has the facts needed to present that argument.” (Id. at 5–6.) The Magistrate Judge further noted that even though mSIGNIA disavowed interest in certain information, it “insisted on deposing [Movants'] witnesses on the topics as written, absent [Movants] making the present motion.” (Id. at 6.)

mSIGNIA argues that the Magistrate Judge's determination regarding Topics 6-8 is contrary to law because the Magistrate Judge did not consider Rule 26(a)(1)(A)(iv) or FRE 411 as part of her analysis. But mSIGNIA does not appear to dispute that it had already obtained a copy of the escrow fund agreement itself. (See Dkt. 90 at 5.) That is all that is required by Rule 26(a)(1)(A)(iv). See Rule 26(a)(1)(A)(iv) (“a party must ... provide to the other parties: for inspection and copying as under Rule 34, any insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy the judgment.”). For similar reasons, mSIGNIA has also failed to explain how FRE 411 leads to the conclusion that it must be permitted to take third party discovery from the Movants. FRE 411 (“Evidence that a person was or was not insured against liability” may be admitted for purposes other than to prove negligent or wrongful conduct). The fact that the Magistrate Judge did not explicitly address mSIGNIA's questionable argument does not make her determination clearly erroneous or contrary to law.

Moreover, mSIGNIA ties its argument about these Federal Rules back to its argument that the status of the escrow fund is relevant to InAuth's bargaining power in the hypothetical negotiation. (Dkt. 125 at 5–6.) But mSIGNIA acknowledges the Magistrate Judge's finding that mSIGNIA appears to have access to all the “arguably relevant information” that it seeks directly from InAuth. (Dkt. 102 at 10 (citing Dkt. 90 at 6).) Indeed, in its reply brief, mSIGNIA supports its argument that Topics 6-8 are narrowly tailored by referring to discovery information that it has already obtained. (Dkt. 125 at 7.) AmEx is a non-party to this case. As the Magistrate Judge observed, a subpoenaed party may move for a protective order to avoid discovery that is “unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive.” Rule 26(b)(2)(C). Considering the circumstances, the Magistrate Judge's determination was neither clearly erroneous nor contrary to law.

*5 Regarding cost-shifting, mSIGNIA argues that its opposition to Movants' motion for a protective order was substantially justified. (Dkt. 102 at 15–18.) mSIGNIA also argues that shifting fees would be otherwise unjust. (Id. at 19–20.) After considering all arguments presented by the parties (including mSIGNIA's new ones on this issue) and the record before the Magistrate Judge, the Court finds that the Magistrate Judge's decision to shift fees was not clearly erroneous or contrary to law.

3. Conclusion

the Court DENIES mSIGNIA's motions for review of the Magistrate Judge's Orders. (Dkt. Nos. 96, 102.) The Court, in its discretion, declines to shift costs to InAuth for mSIGNIA's motions for review at this time.