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Corel Software, LLC v. Microsoft Corp.

United States District Court, D. Utah, Central Division

January 18, 2019

COREL SOFTWARE, LLC, Plaintiff,
v.
MICROSOFT CORPORATION, Defendant.

          MEMORANDUM DECISION AND ORDER

          PAUL M. WARNER CHIEF UNITED STATES MAGISTRATE JUDGE

         District Judge Jill N. Parrish referred this case to Chief Magistrate Judge Paul M. Warner pursuant to 28 U.S.C. § 636(b)(1)(A).[1] Before the court are (1) Defendant Microsoft Corporation's (“Microsoft”) short form discovery motion re: reexamination discovery[2] and (2) Plaintiff Corel Software, LLC's (“Corel”) motion for reconsideration[3] of a memorandum decision and order issued by the court on October 5, 2018 (“October 5 Order”).[4] The court has carefully reviewed the written memoranda submitted by the parties. Pursuant to Civil Rule 7-1(f) of the Rules of Practice for the United States District Court for the District of Utah, the court has concluded that oral argument is not necessary and will decide the motions on the basis of the written memoranda. See DUCivR 7-1(f).

         LEGAL STANDARDS

         Before addressing the above-referenced motions, the court sets forth the following general legal standards governing discovery. Rule 26(b)(1) provides:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.

Fed. R. Civ. P. 26(b)(1). “The district court has broad discretion over the control of discovery, and [the Tenth Circuit] will not set aside discovery rulings absent an abuse of that discretion.” Sec. & Exch. Comm'n v. Merrill Scott & Assocs., Ltd., 600 F.3d 1262, 1271 (10th Cir. 2010) (quotations and citations omitted).

         ANALYSIS

         I. Microsoft's Short Form Discovery Motion re: Reexamination Discovery

          Microsoft seeks a court order compelling Corel to produce certain information associated with the reexamination of U.S. Patent No. 6, 731, 309 (“309 Patent”). Microsoft alleges that during reexamination of the 309 Patent, two Corel attorneys and one Corel expert (“Bederson”) made two material misrepresentations about the operation of a key prior art reference called QuarkXPress. Microsoft further asserts that Corel's misrepresentations led the United States Patent and Trademark Office (“USPTO”) to affirm the validity of asserted claims 2 and 3 of the 309 Patent.

         Following the USPTO decision, Microsoft requested that Corel produce certain documents related to the reexamination and to make the above-referenced Corel attorneys and Bederson available for depositions. Corel refused, arguing that the discovery was not relevant and that it was protected by the attorney-client privilege and the work-product doctrine.

         In its motion, Microsoft argues that the reexamination discovery it seeks is directly relevant to invalidity. Microsoft also argues that the discovery is not protected by the attorney-client privilege and that Rule 26(b)(3)(A) of the Federal Rules of Civil Procedure allows Microsoft to obtain the discovery despite Corel's claim of work-product protection.

         In response, Corel correctly notes that the USPTO specifically stated in its decision that “[t]he Bederson declaration and Patent Owner's remarks” were the basis for its decision on claims 2 and 3 of the 309 Patent.[5] Corel asserts that Microsoft has in its possession the entire reexamination record used by the USPTO in affirming the patentability of claims 2 and 3 of the 309 Patent, including the Bederson declaration and the Patent Owner's remarks. Accordingly, Corel argues that Microsoft already has all relevant information the USPTO relied upon. Corel further argues that the reexamination discovery sought by Microsoft is protected by the attorney-client privilege and the work-product doctrine, and that Corel cannot meet its burden under Rule 26(b)(3)(A) to pierce Corel's claim of work-product protection.

         The court agrees with Corel's argument that Microsoft already possesses all relevant information associated with the USPTO reexamination. As stated above, the USPTO specifically stated the basis for its decision to affirm the patentability of claims 2 and 3 of the 309 Patent. Microsoft does not dispute that it already has all of that information. Microsoft's speculative claim that the USPTO may have relied upon additional information is directly contradicted by the above-referenced statement in the USPTO decision.

         Accordingly, Microsoft's motion to compel is denied. Because the court has concluded that Corel has already produced all relevant reexamination discovery, the court need not reach the issues of whether the reexamination discovery sought by Microsoft is protected ...


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