United States District Court, E.D. Texas, Marshall Division
MEMORANDUM AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE
moves the Court to compel CCE to obtain and produce documents
from third parties to this lawsuit-namely, Nokia Siemens
Networks GmbH & Co. KG, Nokia Siemens Networks Oy, Nokia
Networks Oy (collectively, “NSN”). Apple's
Mot. [Dkt. # 396]. Apple further asks the Court to compel CCE
to provide a privilege log for any documents withheld by NSN
so Apple can assess privilege claims. Finally, Apple requests
that the Court compel CCE to produce the inventors of U.S.
Patents 8, 457, 676, 8, 570, 957, and 8, 867, 472 (the
Asserted Patents) for additional depositions. [Dkt. # 396-1]
reviewing the parties' briefing, the Court DENIES the
2012, NSN and CCE's parent company, Acacia Research
Group, entered into a Patent Purchase Agreement (P PA)
whereby NSN sold the Asserted Patents to Acacia. As part of
the P PA, NSN and Acacia agreed to “fully cooperate
with each other in any litigation [related to] enforcing or
defending the [Asserted] Patents.” Apple's Mot.
[Dkt. # 396] at 2-3.
point, the Asserted Patents were transferred to CCE, which
then sued Apple for patent infringement. During discovery,
Apple requested certain documents in NSN's possession.
Apple also asked to depose the inventors of the Asserted
Patents, all of whom were current or former employees of NSN.
conveyed Apple's requests to NSN and instructed it to
treat the requests as if they had come from CCE. Rastegar
Decl. CCE's Resp. [Dkt. # 410-4] ¶ 6. In response,
NSN produced documents to Apple and made the inventors
available for examination. Apple's Mot. [Dkt. # 396-2] at
4. During February and March 2017, Apple deposed the
inventors still employed by NSN. Id. at 4-5.
seeks further relief. For one, NSN withheld certain documents
based on privilege and work product. CCE's Resp. [Dkt. #
410-3] at 4. And despite both Apple's and CCE's
requests, NSN refused to provide a privilege log for the
withheld documents. Id. at 4-5 (“Apple and CCE
asked yesterday whether NSN would be willing to provide a
privi-lege log for its withheld documents. NSN declines to do
so. . . . NSN would object to producing a privilege log as
now has two concerns. First, because NSN
“voluntarily” produced docu-ments-as opposed to
producing in response to a court order-Apple doesn't know
which documents have been collected and produced by NSN.
Apple's Mot. [Dkt. # 396] at 1. Second, because NSN
refused to create a privilege log, Apple cannot assess the
validity of NSN's privilege assertions. Id. at
Civ. P. 34 permits a party to request production of any items
in another party's “possession, custody, or
control.” Fed.R.Civ.P. 34(a). A district court may
order the production of documents in the possession of a
related nonparty entity under Rule 34(a) if those documents
are under the custody or control of a party to the
litigation. See, e.g., Societe Internationale
Pour Particpations Industrielles et Commerciales, S.A. v.
Rogers, 357 U.S. 197, 204, 78 S.Ct. 1087, 2 L.Ed.2d 1255
(1958). “‘Control' has been construed broadly
by the courts as the legal right, authority, or practical
ability to obtain the materials sought on demand.”
SEC v. Credit Bancorp, Ltd., 194 F.R.D. 469, 471
(S.D.N.Y. 2000) (citations omitted) (applying the
interpretation of control under Rule 34 to a Rule 45
argues CCE has “control” over NSN's documents
by virtue of the P PA 's cooperation provision. According
to Apple, that provision gives CCE the “right,
authority, or practical ability” to ...