Withrow Networks, Inc. v. Google, LLC

Background

Withrow Networks, Inc. and defendants Google LLC and YouTube LLC disputed the relevant time period for producing documents concerning the defendants’ “design considerations” in developing the accused instrumentalities. The dispute involved Withrow’s Requests for Production Nos. 5, 7, 9, 11, 13, and 14.

Withrow sought documents from 2007 to the present and argued that the documents were relevant to its damages calculation. The defendants objected that an 18-year period was unjustified and that damages-related discovery should focus on September 2020.

Court’s analysis

The court noted that the defendants began using adaptive bit rate streaming in 2009, more than a decade before the ’849 patent issued in September 2020. For information concerning alternative streaming technologies, the relevant period for considering the Georgia-Pacific factors and the hypothetical negotiation was around the date of first alleged infringement—September 2020.

The court explained that this did not create an absolute rule making all earlier damages-related discovery irrelevant. But under Federal Rule of Civil Procedure 26(b)(1), Withrow still had to show that the requested discovery was relevant to a claim or defense and proportional to the needs of the case. The court found that Withrow had not shown that the circumstances surrounding the defendants’ choice of adaptive bit rate streaming in 2009 were the same as, or similar to, those in September 2020. Withrow also had not shown another reason that design documents dating to 2007 would bear on the factors relevant to a hypothetical 2020 negotiation, including the defendants’ available design choices at that time.

Ruling

Judge Virginia K. DeMarchi concluded that Withrow had not shown that discovery of documents responsive to the specified requests from 2007 to the present was relevant or proportional to the case’s needs. The court therefore denied Withrow’s request for an order compelling that discovery.