Carvana, LLC v. International Business Machines Corporation

Background

Carvana sought a declaration that it did not infringe several patents. IBM counterclaimed for patent infringement. The dispute addressed IBM’s request for additional discovery from Carvana: production of technical metrics data and testimony from one or more organizational witnesses under Rule 30(b)(6). A Rule 30(b)(6) witness is a person designated to testify for an organization about specified topics.

Metrics data

IBM argued that Carvana had access to comprehensive metrics concerning the performance of its website and mobile applications, but had produced too little data and data that did not cover the entire alleged infringement period. During a court conference, IBM narrowed its request to data underlying three exhibits involving Lighthouse or Datadog metrics.

Carvana argued that the underlying data did not exist in a readable format and that obtaining historical data would be unduly burdensome and disproportionate to the needs of the case. Carvana submitted affidavits describing its search and the burden of obtaining more data. The court found that IBM established possible relevance, but that Carvana established it had produced all responsive, reasonably accessible documents in its possession, custody, or control. The court therefore would not order Carvana to produce more metrics data. It directed the parties to meet and confer about whether IBM could obtain unreadable Lighthouse data at its own time and expense and determine how to use it.

Rule 30(b)(6) deposition topics

IBM identified several categories of alleged problems with Carvana’s responses.

For topics on which Carvana had not designated a witness, the court found additional testimony unnecessary for some topics. Testimony about opinions of counsel was premature unless Carvana chose to rely on those opinions. The court was inclined to agree that information about practices for identifying patented technology could involve privileged legal-department information, although nonprivileged information could be sought through a targeted written request. Topics concerning document sources and retention appeared unnecessary at that late stage of discovery, and Carvana said that no marketing or customer-feedback information existed; the court directed Carvana to confirm that point in an affidavit.

For other topics, including testing, value of accused features, information collected about users, communications with third parties, and testing of accused features, Carvana said that other witnesses had already covered the subjects. The court declined to order additional testimony at that time because it could not determine whether the prior testimony sufficiently covered those topics. If Carvana relied on that testimony, it had to designate it clearly and identify which portions addressed which topics. IBM could renew its request if gaps remained, but would have to identify more precisely what information was missing and why it could not be obtained by other means.

The court gave similar instructions concerning topics involving technical metrics where IBM claimed Carvana had imposed limitations. If Carvana believed other witnesses had adequately covered those topics, it had to designate the relevant testimony clearly. IBM could renew its request if specific gaps remained.

The dispute over Topics 45 and 46 was resolved by a separate court order concerning Ms. Wilson’s deposition.

Additional testimony ordered

IBM argued that Carvana’s witness, Mr. Johnson, had not adequately answered questions on several topics and should testify about source code produced after his deposition. The court found that Mr. Johnson had sometimes been unnecessarily evasive, but that IBM’s counsel had generally obtained answers and had not identified specific missing information in most instances.

The court did identify questions that Mr. Johnson had not answered, including whether and why Carvana tried to reduce webpage loading times. IBM also identified a subject on which Mr. Johnson was unprepared: whether certain Carvana source code was used on a server or on a client or browser. The court ordered a three-hour deposition of Mr. Johnson or another designated witness covering Topics 22 and 37, the questions from pages 163 through 169 of Mr. Johnson’s transcript, and the server-versus-client/browser source-code issue.

The court would not order another deposition of Mr. Johnson in his personal capacity unless it was combined with his organizational-witness designation and limited to the same three-hour deposition. It also would not order depositions based on source-code pages produced at that stage, but allowed IBM to renew that request during expert discovery if necessary.

Disposition

The court granted in part and denied in part IBM’s motion to compel.