Largan Precision Co, LTD v. Motorola Mobility, LLC.

Background

Largan moved to compel Motorola to produce additional documents responsive to 14 requests for production in this patent infringement action. Motorola argued that it had produced all non-privileged responsive documents in its possession, custody, or control. It also argued that additional responsive documents were held by overseas third-party suppliers and were outside Motorola’s legal control. The parties did not dispute the relevance or discoverability of the requested documents; the only dispute was whether Motorola controlled the third-party documents.

Legal standard

Federal Rule of Civil Procedure 34 requires a party to produce documents within its possession, custody, or control. The party seeking discovery bears the burden of showing control. The court applied the Ninth Circuit’s definition of control as the legal right to obtain documents upon demand, rather than merely the practical ability to obtain them from a related organization.

Court’s analysis

The parties submitted six contracts between Motorola or Lenovo and five third-party suppliers. Five contracts allowed Motorola, Lenovo, or a designated auditor to inspect the suppliers’ facilities, equipment, materials, books, and records that pertained to the agreements, and to audit for compliance during the agreements and for three years afterward. The sixth contract similarly allowed Motorola to inspect supplier records and provided that, upon expiration or termination, the supplier would transfer agreement-related records to Motorola upon request.

The court concluded that these provisions gave Motorola and Lenovo the legal right to obtain supplier records that pertained to their agreements. The court rejected Motorola’s argument that the provisions allowed access only during a compliance audit. It found that the contracts separately stated that Motorola or Lenovo “may inspect” relevant records and “may audit for compliance,” so access was not conditioned on conducting an audit. The court also noted that Motorola did not dispute that all six agreements remained in effect.

Ruling

The court held that Largan met its burden of showing that Motorola controlled documents pertaining to the agreements with the five suppliers. It granted Largan’s motion to compel and ordered Motorola to produce all responsive documents within 21 days of the order.