UAB "Planner5D" v. Meta Platforms, Inc.
UAB "Planner5D" v. Meta Platforms, Inc.
2024 WL 4190052 (N.D. Cal. 2024)
May 21, 2024
Kim, Sallie, United States Magistrate Judge
Summary
Plaintiff filed a motion to compel Defendants to produce documents related to the value of other datasets, but the court denied the request as overly broad and burdensome. Defendant was ordered to produce documentation for one specific acquisition, but other requests for information were also denied. The court also denied Defendant's motion seeking information about user feedback on Plaintiff's product.
Additional Decisions
UAB “PLANNER5D” Plaintiff,
v.
META PLATFORMS, INC., et al., Defendants
v.
META PLATFORMS, INC., et al., Defendants
Case No. 19-cv-03132-WHO (SK)
United States District Court, N.D. California
Signed
May 15, 2024
Filed May 21, 2024
Counsel
Marc N. Bernstein, Christian Gabriel Andreu-von Euw, Richard A. De Liberty, Will Barnett Fitton, The Business Litigation Group, P.C., San Francisco, CA, for Plaintiff.Dale Cendali, Abbey Gauger, Pro Hac Vice, Emily Crawford Sheffield, Pro Hac Vice, Johanna Schmitt, Pro Hac Vice, Jonathan Drew Brit, Pro Hac Vice, Mary C. Mazzello, Pro Hac Vice, Miriam Kontoh, Pro Hac Vice, Kirkland Ellis LLP, New York, NY, Kristen Paulene Lantz Reichenbach, Yan-Xin Li, Kirkland & Ellis LLP, San Francisco, CA, for Defendant Meta Platforms, Inc.
David R. Singer, Jenner & Block, Los Angeles, CA, Andrew Harrison Bart, Pro Hac Vice, Andrew C. Elliott, Pro Hac Vice, Cayman Mitchell, Pro Hac Vice, Jacob Lincoln Tracer, Pro Hac Vice, Sarah L. Atkinson, Pro Hac Vice, Jenner & Block LLP, New York, NY, Dale Cendali, Kirkland Ellis LLP, New York, NY, for Defendant Trustees of Princeton University.
Dale Cendali, Abbey Gauger, Pro Hac Vice, Emily Crawford Sheffield, Pro Hac Vice, Jonathan Drew Brit, Pro Hac Vice, Mary C. Mazzello, Pro Hac Vice, Miriam Kontoh, Pro Hac Vice, Kirkland Ellis LLP, New York, NY, Kristen Paulene Lantz Reichenbach, Yan-Xin Li, Kirkland & Ellis LLP, San Francisco, CA, for Defendant Meta Platforms Technologies, LLC.
Kim, Sallie, United States Magistrate Judge
ORDER REGARDING DISCOVERY JOINT LETTER BRIEFS
*1 Plaintiff UAB “Planner5D” alleges that Defendants Princeton University, Meta Platforms, Inc., and Facebook Technologies LLC misappropriated Plaintiff's trade secrets and infringed Plaintiff's copyrights. (Dkt. Nos. 53, 90, 112.) Specifically, Plaintiff alleges that Defendant Princeton “scraped” Plaintiff's “3D works” and then converted them into a “computer vision tool, the SUNCG dataset” and that Defendant Meta Platforms, Inc. used that tool to develop products and services “incorporating scene recognition, a key component of the ‘metaverse” on which Meta has staked its future.” (Dkt. No. 369, 1.)
A. Plaintiff's Motion to Compel
Plaintiff alleges that it needs evidence of the value of other datasets to calculate its damages, and it seeks evidence that relates to those damages. Plaintiff moves to compel Defendants Meta Platforms, Inc. and Facebook Technologies, LLC (collectively, “Defendant”) to produce documents responsive to several requests: 67, 68, 79, 80, 81, and 82.
Requests No. 67 and 68 – In these requests, Plaintiff seeks all of Meta's communications with actual and potential licensors about interior 3D datasets. Request 67 seeks “all” communications with “any” licensor of object/scene datasets “concerning the potential, contemplated or actual licensing or acquisition of any INTERIOR OBJECT/SCENE DATASET or other INTERIOR OBJECT/SCENE DATA.” Request 68 seeks “all” communications with “any” potential licensor of such data or datasets. Plaintiff claims that it needs this information to show the value of other datasets compared to Plaintiff's dataset and to show how Defendant valued certain aspects of a dataset. Meta responds that it has already produced documents showing the valuation of other datasets in response to the Court's Order (Dkt. No. 159). Defendant states that, to do so, it searched 50 custodians related to 68 machine learning projects and that it produced license agreements—showing price—for interior scene/object datasets. (Dkt. No. 369.)
Plaintiff argues that it needs more than licenses and specifically seeks information about the negotiations. Courts have taken a variety of approaches when parties have sought information about negotiations and not simply the licenses. At least one court rejected that approach after applying the test of burden balanced against relevance. See, e.g., Finjan, Inc. v. ESET, LLC, No. 17CV183 CAB (BGS), 2018 WL 5263243, at *4 (S.D. Cal. Oct. 23, 2018) (denying motion to compel “any document relating to negotiations concerning licenses covering technology comparable to” that in the asserted patents other than final licenses and documents explaining the calculation). Other courts granted a motion to compel evidence of negotiations where there were no other relevant licenses. See, e.g., Clear with Computers, LLC v. Bergdorf Goodman, Inc., 753 F. Supp. 2d 662, 664 (E.D. Tex. 2010); QS Wholesale, Inc. v. World Mktg., Inc., No. SA 12-CV-0451 (RNBx), 2013 WL 1953719, at *5 (C.D. Cal. May 9, 2013) (allowing evidence of the “detailed record of negotiations” to calculate reasonable royalty because “there [was] no prior licensing agreement between the parties” and “no history” of past licensing).
*2 Plaintiff cites cases in which courts ordered production of negotiations, but where there was no discussion about burden or overbreadth. See Memory Integrity LLC v. Intel Corp., 308 F.R.D. 656, 659-60 (D. Or. 2015) (rejecting application of settlement privilege and ordering production of documents regarding settlement negotiations that were “as yet unconsummated”); Phoenix Solutions Inc. v. Wells Fargo Bank, N.A., 254 F.R.D. 568, 582-83 (ordering production of documents for negotiations to show what the patent-holder believed infringed the patents-in-suit, what a reasonable royalty was, and existence of prior art.)
Here, the burden outweighs the potential relevance because Defendant has produced license agreements. The requests by Plaintiff are overly broad in seeking information about all communications with other companies regarding licenses, especially since Defendant already searched for and produced documents regarding valuation of other datasets and the specific licenses with prices. Thus, the Court DENIES Plaintiff's request to compel production of documents responsive to Requests Nos. 67 and 68.
Request No. 79 – Plaintiff seeks “[t]he Google document referenced at META_0052265 and all other RECORDS referencing or reflecting the project discussed in META_0052265, including but not limited to, the meeting mentioned in that document.” (Dkt. No. 365-4, 10.) This document refers to an effort to license [Redacted], another company. Again, Defendant argues that it produced documents showing valuation and the license agreement with [Redacted]. Here, because Defendant has produced the relevant documents that Plaintiff needs to calculate damages, a request for “all” documents that refer to or reflect the project is overly broad and burdensome compared with the relevance.
Request No. 80 – Plaintiff seeks documents referring to Defendant's acquisition of AI.Reverie, Inc. Plaintiff seeks “All RECORDS constituting or referencing the ‘M&A’ disclosed in META_0051568.” (Dkt. No. 365-4.) Again, Defendant argues that the request is overly broad and burdensome in seeking all documents related to an acquisition and that AI.Reverie, Inc. is not relevant at all because it did not involve a dataset. Plaintiff has suggested a compromise for the acquisition document itself. The Court ORDERS that Defendant produce the actual documentation (the contract) for the acquisition, but Defendant is not required to produce other documents responsive to this request.
Request No. 81 – Plaintiff seeks any other documents other than ones relevant to the AI.Reverie, Inc. acquisition but for acquisitions of other companies in the same area. (Dkt. No. 365-4.) Plaintiff seeks “All RECORDS constituting or referencing the potential or actual merger or acquisition of a ‘synthetic data company’ for the purpose of obtaining INTERIOR OBJECT/SCENE DATA.” Defendant confirmed at the hearing that there are none other than AI.Reverie, Inc. Given this representation, Defendant also agreed to update its written responses to reflect the lack of documents. The Court ORDERS Defendant to update this response to reflect the representation made at the hearing.
Request No. 82 – Plaintiff seeks documents relevant to a project called Shiba, in which Defendant sought to collect data in the form of actual videos of real properties. Plaintiff seeks “All communications and other RECORDS constituting, referencing, or reflecting the data license or data referenced on META_0052392 (part of META_0052389).” (Dkt. No. 365-4.) Defendant argues that this is not a license at all but merely a fee that Defendant paid to companies that “stage” houses for sale so that Defendant's employees could video record the interiors of houses. This information is not relevant to the creation of datasets of the type Plaintiff created. Thus, the Court DENIES Plaintiff's motion to compel documents responsive to Request No. 82.
B. Defendant's Motion
*3 Defendant seeks information regarding “use feedback” about Plaintiff's product. Specifically, Defendant seeks “DOCUMENTS CONCERNING user feedback on the PLANNER 5D HOME DESIGN TOOL, including the desktop and mobile apps.” (Dkt. No. 381.) Defendant argues that it needs this evidence to show that Plaintiff was harmed by its own defects and not by Defendant's actions. Plaintiff argues that the information is not relevant because Plaintiff only seeks damages in the form of a hypothetical license and that reviewing 220,000 documents of “user tickets” is overly burdensome. The Court finds that the relevance is low, given the nature of Plaintiff's damages, and the burden, in comparison, is high. The Court DENIES the motion to compel production of responsive documents.
C. Sealing Order
Because this Order contains information that Defendant designated as confidential, this Order is filed under seal. Defendant must file a letter brief by May 20, 2024, indicating which portions of this Order must remain confidential, so that the Court may issue a redacted version of this Order for the public.
IT IS SO ORDERED.
Dated: May 15, 2024