Free Opening Brief in Support - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) AMERICAN PATENT DEVELOPMENT) CORPORATION, LLC, ) ) Plaintiff, ) ) v. ) ) MOVIELINK, LLC, ) ) Defendant. ) )

Civil Action No. 07-605-JJF

PLAINTIFF'S OPENING BRIEF IN SUPPORT OF MOTION TO COMPEL DISCOVERY Plaintiff American Patent Development Corporation, LLC ("APDC"), by its counsel, files this opening brief in support of its Motion to Compel Discovery from defendant Movielink, LLC ("Movielink"). I. INTRODUCTION. Movielink has failed to produce any technical manuals or other similar documents describing the nature of the Systems that are at issue in this patent infringement case. In December, 2007, APDC served Movielink with a request for production of documents, including requests for technical manuals and other similar documents relating to its Systems. Although Movielink produced some documents responsive to other document requests, it failed to produce any technical manuals or other similar documents. And, when APDC recently requested Movielink to produce the requested discovery, or at least provide an agreeable date by which it would do so, Movielink provided an equivocal response.

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The Court should order Movielink to produce the requested discovery without further delay. II. BACKGROUND. A. This Case.

This is a patent infringement case. APDC alleges that Movielink has infringed U.S. Patent No. 5,400,402 (the "'402 patent"). The `402 patent relates generally to a type of video-on-demand system in which access to a down-loaded stored video is blocked after it has been viewed a predetermined number of times, or after a predetermined interval, or any combination thereof. Movielink provides a video-on-demand service through its Multi-CDN System ("System") through which users download movies and other video content. The parties agreed to a Stipulated Protective Order, which sets forth procedures through which the parties produce confidential information. The Court entered this order on January 30, 2008. A copy is attached as Exhibit A. The Court's Rule 16 Scheduling Order requires all document production to be completed by May 31, 2008. Depositions of fact witnesses must be completed by July 31, 2008. B. Movielink's Prior Litigation In This Court Involving The Same Systems.

Movielink knows how to locate and produce the technical manuals and other similar documents that relate to its Systems. Indeed, Movielink produced comprehensive discovery on these very same Systems in a prior patent infringement case in this Court, USA Video Technology

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Corporation v. Movielink, LLC, Civil Action No. 1:03-CV-00368-KAJ. The USA Video case went through complete discovery, and was closed in December, 2005. And, like the patent at issue in this case, the patent in the USA Video case (U.S. Patent No. 5,130,792 entitled "Store and Forward Video System") related to video-ondemand technology. Therefore, Movielink should be able to produce basic technical information regarding its Systems rather easily -- it did so just two years ago in the USA Video case. III. APDC'S DISCOVERY. On December 21, 2007, APDC served its First Request for Production of Documents, Electronically Stored Information and Things on Movielink. A copy of Movielink's responses, which includes the requests, is attached as Exhibit B. On January 25, 2008, Movielink produced a single CD containing 1,401 pages of documents. These documents consisted of the file histories for Movielink's patents, this Court's opinion from the USA Video case, an 8-K, and a few other documents. On January 25, 2008, APDC wrote to Movielink regarding certain of Movielink's discovery responses. Subsequently, the parties exchanged numerous letters in attempt to resolve various disputes. As a result of these exchanges, APDC clarified and narrowed certain of its document requests. A copy of APDC's February 15, 2008 letter is attached as Exhibit C. Even though APDC narrowed some of its document requests as Movielink demanded, Movielink never produced any additional documents through the end of February, 2008. Most notably, Movielink failed to produce a single technical manual or

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similar document relating to the nature of its Systems. These Systems are the very heart of this case. Therefore, on February 29, 2008 APDC informed Movielink that it would file a motion to compel if, by March 7, Movielink had not either: (i) produced the requested documents; or (ii) provided an agreeable date by which it would do so. A copy of this letter is attached as Exhibit D. On March 10, Movielink provided an equivocal response, stating that it would produce documents "including" revenue information, source code and certain licenses, by March 14. A copy of this letter is attached as Exhibit E. On that same day (March 10), APDC requested Movielink to clarify its position and advise whether it was going to produce the technical manuals and other similar documents relating to the nature of its Systems. A copy of this letter is attached as Exhibit F. On March 11, Movielink confirmed in a telephone conference that its March 14 production was not going to include technical manuals and similar documents reflecting the nature of its Systems. Movielink claimed that it could not produce these technical documents relating to its Systems because that information was only available in electronic format, and the parties had not agreed on appropriate search terms until February 29. APDC confirmed this conversation in a letter to Movielink. See letter dated March 11, 2008 attached as Exhibit G. Movielink, however, cannot use the February 29 electronic search terms as a smokescreen to justify its failure to produce technical information relating to its Systems. The agreed-upon electronic search terms are to enable Movielink to identify and locate

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electronic documents that cannot be otherwise identified or located. Movielink does not need to use such formal searches or search terms to locate electronic documents such as technical manuals. Indeed, Movielink has said that these documents exist in electronic format -- it just wants to avoid producing them in a timely manner. Moreover, Movielink produced these very same technical documents in the USA Video case. Therefore, it has already located these documents, and can easily produce them a second time in this case. On March 11, Movielink sent another letter to APDC relating to other discovery issues, but that letter did not address the missing technical documents. A copy of this letter is attached as Exhibit H. A. The Court Should Order Movielink To Produce Documents Relating To The Nature Of The Systems At Issue In This Case.

As discussed more fully below, Movielink has not produced any technical manuals or other similar documents -- not even single piece of paper -- relating to the nature of the Systems1 at issue in this case. The Court should order it to do so.

1

In its discovery requests, APDC defined "System" and "Systems" as follows: The terms "System" and "Systems" shall refer to any system or method for providing a video product from a head-end facility or central station to a user site, wherein access to the video product is requested by the user electronically, the video product is delivered to the user electronically, and the user is blocked from accessing the video product (or the user's access to the video product is otherwise denied) when the limit for authorized viewing of said video product is reached, including, but not limited to, Movielink's video download service systems known as the Big-Foot system and the Multi-CDN system.

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1.

Request No. 7: Movielink should produce documents relating to the structure, architecture, operation and functionality of its Systems.

Movielink should produce technical manuals and other similar documents reflecting the nature of the Systems that are at issue in this case. APDC requested such information in Request No. 7: DOCUMENT REQUEST NO. 7: All documents reflecting, referring or relating to the structure, architecture, operation and/or functionality of Movielink's Systems including, but not limited to, parts lists, hardware schematics, computer files, source code, electronic media, notebooks, workbooks, notes, records, files, technical journals, product manuals, or invention disclosures. The requested information is clearly discoverable. In fact, Movielink responded, over various objections, that it "will produce" the requested documents. Movielink, however, has failed to provide this basic information, and the Court should order it to do so. 2.

Request No. 12:

Movielink should produce the protocols executed by its software.

In Request No. 12, APDC specifically requested information related to how Movielink's Systems work: DOCUMENT REQUEST NO. 12: All documents reflecting, referring or relating to protocols executed by the software used in Movielink's Systems that relates to (a) accepting customer requests to rent or purchase video content; (b) processes for fulfilling such customer requests, including delivering video content to customers; or (c) authorizing or blocking a customer's viewing of video content.

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Although Movielink responded, over objections, that it would produce the requested information, it has produced nothing at all. 3.

Request No. 13:

Movielink should produce documents reflecting how data is transmitted from its central facility to users.

One of the issues in this case is how Movielink transmits data from its central facility to users in its Systems. APDC requested such information in Request No. 13: DOCUMENT REQUEST NO. 13: All documents reflecting, referring, or relating to how data is transmitted from the head-end/central facility to the user in Movielink's Systems. Again, although Movielink responded, over objections, that it would produce the requested information, it has not done so. B. The Court Should Order Movielink To Produce Pleadings From The USA Video Case.

As discussed above, the same Movielink Systems that are at issue in this case were also at issue in the USA Video case, which was litigated in this Court. APDC requested Movielink to produce the pleadings from the USA Video case. APDC requested those pleadings in Request No. 43: DOCUMENT REQUEST NO. 43: All pleadings, motions, briefs, declarations and other papers filed in U.S.A. Video Corporation v. Movielink, LLC, C.A. No. 03-368-KAJ, previously pending in the U.S. District Court for the District of Delaware. Movielink objected to this request on the ground that the information was "equally available" to APDC, and on the ground that "the request is unduly burdensome

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and not reasonably calculated to lead to the discovery of admissible evidence." See Exhibit B. When APDC inquired about these objections, Movielink responded by requesting APDC to narrow its request to the specific pleadings APDC believed it needed. Movielink also stated that it would not produce any pleadings that were filed under seal (as most were) unless APDC obtained "written permission from an authorized representative of USA Video . . . ." See letter dated February 12, 2008, attached as Exhibit I. On February 15, APDC narrowed its request from "all" pleadings to 37 specific pleadings and certain specific expert reports. See letter dated February 15, 2008, attached as Exhibit C. APDC also wrote two letters to USA Video requesting it to consent to the production of these specific pleadings. See letters dated March 4 and March 10, 2008, attached as Exhibits J and K. USA Video, however, did not respond to either letter. The Court should order Movielink to produce the requested pleadings and expert reports from the USA Video case for numerous reasons. First, the information is highly relevant because the same Systems at issue in this case were at issue in the USA Video case. Second, at Movielink's request, APDC narrowed its discovery request from "all" pleadings to 37 specific pleadings. See letter dated February 15, 2005, attached as Exhibit C. Third, even though many of these pleadings were filed under seal, the technology at issue was Movielink's -- not USA Video's. Therefore, USA Video -- which, to date,

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has asserted no objection to such disclosures -- can hardly "object" to the disclosure of Movielink's technology. Fourth, even if USA Video has confidentiality concerns about releasing the requested information, those concerns can be protected by producing the information pursuant to the Stipulated Protective Order governing disclosures in this case. Fifth, USA Video waived any concerns it may have had by failing to respond to APDC's two letters. IV. CONCLUSION. The Court should order Movielink to produce all information APDC requested in Request Nos. 7, 12 and 13, including all technical manuals and other similar technical information relating to its Systems. The Court should also order Movielink to produce, pursuant to Request No. 43 and in accordance with the Stipulated Protective Order, the 37 specific pleadings and expert reports from the USA Video case. The Court should also order Movielink to pay APDC's costs, including reasonable attorney's fees, of bringing this matter before the Court. Dated: March 14, 2008 REED SMITH LLP

By: /s/ Thad J. Bracegirdle Thad J. Bracegirdle (Del. No. 3691) 1201 Market Street Suite 1500 Wilmington, Delaware 19801 (302) 778-7500 (Telephone) (302) 778-7575 (Fax) E-mail: [email protected]

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Mark W. Wasserman (admitted pro hac vice) Matthew R. Sheldon (admitted pro hac vice) Reed Smith LLP 3110 Fairview Park Drive Suite 1400 Falls Church, Virginia 22042 (703) 641-4200 (Telephone) (703) 641-4340 (Fax) E-mail: [email protected] [email protected] Counsel for Plaintiff, American Patent Development Corporation, LLC

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) ) )

AMERICAN PATENT DEVELOPMENT CORPORATION, LLC, Plaintiff, v. MOVIELINK, LLC, Defendant.

Civil Action No. 07-605-JJF

CERTIFICATE OF SERVICE I hereby certify that on March 14, 2008, copies of the foregoing Plaintiff's Opening Brief in Support of Motion to Compel Discovery were served upon the following counsel of record in the manner indicated: BY HAND DELIVERY AND CM/ECF: Jeffrey L. Moyer, Esq. Richards, Layton & Finger, P.A. One Rodney Square Wilmington, Delaware 19899 BY FIRST CLASS MAIL AND CM/ECF: Scott W. Breedlove, Esq. Vinson & Elkins LLP Trammel Crow Center 2001 Ross Avenue, Suite 3700 Dallas, Texas 75201 REED SMITH LLP By: /s/ Thad J. Bracegirdle Thad J. Bracegirdle (Del. No. 3691) 1201 Market Street, Suite 1500 Wilmington, Delaware 19801 (302) 778-7500 E-mail: [email protected]

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