Uniloc USA, Inc. v. Apple Inc.

Background

Apple and third party Pendrell Technologies LLC asked the court to resolve a dispute over Apple’s subpoena for Pendrell’s deposition transcripts and testimony. The subpoena concerned a patent portfolio that Pendrell or its subsidiary had previously assigned and that included patents asserted by Uniloc USA, Inc. against Apple in this action and three other actions.

Pendrell did not object to producing the requested documents or transcripts. It objected to providing up to seven additional hours of testimony after prior depositions had already produced approximately 12 hours of relevant testimony. Pendrell argued that the additional deposition would be burdensome and disproportionate to the needs of the case. It also characterized Apple’s request as “cloned discovery,” meaning discovery based on other parties’ earlier efforts.

Court’s analysis

The court rejected Pendrell’s objection. It explained that Apple was seeking discovery directly from the source of the information—Pendrell—not from another party that had previously obtained the information. The court also noted that Pendrell did not argue that Apple’s requests were too broad, insufficiently tailored, or aimed at irrelevant material. The court concluded that the burden identified by Pendrell principally resulted from the number of lawsuits Uniloc had filed against different targets, rather than from disproportionate requests by Apple in this case.

Pendrell also referred to protective orders that might govern disclosure of transcripts from proceedings involving Huawei, Samsung, and Google. But Pendrell did not argue that any protective order barred production, and the court concluded that Pendrell had not met its burden of showing that disclosure was prohibited.

Ruling

The court concluded that Apple may obtain transcripts of Pendrell’s prior depositions involving the same patent portfolio and ownership history. It also allowed Apple to take one deposition of Pendrell for use in all four Uniloc actions against Apple. The total deposition time may not exceed seven hours, even if more than one witness testifies for Pendrell. The court expected Apple to avoid duplicative or repetitive questioning.

The court further expected Pendrell to seek consent from anyone whose permission may be required under a protective order and to promptly discuss with Apple any steps needed to obtain that permission. The order was issued by Virginia K. Demarchi, United States Magistrate Judge, without oral argument.