Judge Cooper granted in part Plaintiff Datascape’s Motion to Compel and ordered Defendant Sony Ericsson to supplement its responses to several of Datascape’s document requests. The Court also ordered Sony Ericsson to pay Datascape’s expenses and attorneys’ fees incurred in connection with the Motion to Compel because the Court found that Sony Ericsson took “substantially unjustified” positions prior to and in defense of the Motion to Compel and “exhibited dilatory behavior” during discovery.
The discovery disputes at issue arose in April 2006 when Sony Ericsson responded to Datascape’s first set of document requests without producing any documents. Sony Ericsson explained that because it “is a large company with many employees, documents, and records” and its “investigation and discovery is necessarily time consuming,” it would produce responsive documents “on a rolling basis as relevant information is uncovered.” Datascape took issue with this response, believing that Sony Ericsson should have produced all responsive documents within 30 days after service of the requests. After attempts to resolve the issues proved unsuccessful, Datascape filed its Motion to Compel.
Stating that Documents will be Produced on a Rolling Basis is Insufficient: The Court agreed with Sony Ericsson that, given the volume of discovery at issue, 30 days was not enough time for Sony Ericsson to review and produce all responsive documents. Nevertheless, the Court held that simply stating that documents would be produced on a rolling basis was insufficient. In the Court’s view, Sony Ericsson should have alleviated Datascape’s concern that document production would go on indefinitely without court intervention. The Court advised that:
Whenever a party anticipates that producing documents on a rolling basis will be necessary, that party should at least propose to the requesting party a specific plan or schedule for producing the documents and an expected completion date for the production.
Given that Sony Ericsson took over two years to respond to Datascape’s requests, and that certain requests remained in dispute, the Court found that Sony Ericsson “took an unjustified position from the outset regarding the timing of its production.”
Local Patent Rules Relating to Infringement Contentions Do Not Excuse Production of “Technical Documents”: The Court also found that Sony Ericsson took an unjustified position with regard to the production of “technical documents.” Sony Ericsson argued that it did not need to produce responsive technical documents until it responded to Datascape’s infringement contentions, relying on Patent Local Rule 4.2 which requires that a response to infringement contentions include “a copy of source code, specifications, schematics, flow charts, artwork, formulas, or other documentation” sufficient to show operation of the accused system. The Court rejected this interpretation, noting that Patent Local Rule 3.1(a) provides that “[t]hese Rules do not excuse any party from responding to any proper discovery request made under the Federal Rules of Civil Procedure.”
“Control” Over a Parent Company’s Documents May be Evidenced by Producing a Document from the Parent Company and Sharing the Same Legal Counsel: Sony Ericsson is co-owned by two parent corporations, Telefonaktiebolaget LM Ericsson (“Ericsson”) and Sony Corporation (“Sony”). Under Federal Rule of Civil Procedure 34(a), Sony Ericsson must produce responsive documents belonging to its parent corporations if the documents are within Sony Ericsson’s “possession, custody, or control.” Control is defined broadly as the “ability to obtain upon demand documents in the possession of another.” Datascape argued that such control was established in this case and that Sony Ericsson should be compelled to produce documents from its parents, Ericsson and Sony. The Court agreed with respect to Ericsson, finding sufficient evidence of control based on (1) Sony Ericsson’s production of at least one document that pre-dated Sony Ericsson’s formation and was in Ericsson’s possession and (2) the fact that Sony Ericsson and Ericsson share the same legal counsel. According to the Court, this showed that Sony Ericsson at least had the “practical ability” to obtain documents from Ericsson. The Court found insufficient evidence of Sony Ericsson’s control over documents belonging to Sony and declined to compel their production.
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