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N.D. Cal.Procedural orderFiled Dec. 3, 2021

MasterObjects, Inc. v. Amazon.com, Inc.

Judge
William Alsup
Docket
3:20-cv-08103
Court
U.S. District Court · Northern District of California
Pages
6
DiscoveryCivil ProcedureIntellectual Property
In one sentence

In MasterObjects v. Amazon, Judge Alsup oversaw discovery rulings that largely required disclosures, granted one sealing request, and denied or withdrew others.

Who this affects

MasterObjects had to provide licensing documents, documents from related litigation, and a complete privilege log, while Amazon had to provide a more specific answer about earlier software versions. Both parties were affected by the sealing and discovery rulings and the continued discovery deadlines.

What happened

In MasterObjects, Inc. v. Amazon.com, Inc., the court addressed several discovery disputes in a patent case. The disputes concerned Amazon’s and MasterObjects’ interrogatory answers, licensing communications, documents from related lawsuits, and a privilege log.

The order granted in part MasterObjects’ request for a further answer about earlier software versions. It granted Amazon’s requests for licensing communications, documents from related cases, and a complete privilege log. It denied MasterObjects’ request for further answers about Amazon’s software, denied MasterObjects’ sanctions request without prejudice, granted a motion to seal specified material, and recorded the withdrawal of another motion to seal.

Judge Alsup’s order required the parties to produce specified materials by December 15 or December 24, 2021, depending on the request. The order dealt with discovery and confidentiality procedures rather than deciding whether either party ultimately prevailed on the patent dispute.

The detailed version

For law students, journalists, and other readers who want the full reasoning

Case
MasterObjects, Inc. v. Amazon.com, Inc. · No. 3:20-cv-08103
Judge
William Alsup
Date
Dec. 3, 2021

Background

Under the case-management order, fact-discovery motions had to be filed by November 9, 2021. The parties filed five discovery motions and two related sealing motions. The court appointed a special master to hear and decide the discovery disputes, and a hearing occurred on December 1, 2021. Judge Alsup had refused to stay or change the discovery deadlines, and no definitive claim construction was expected before trial.

Rulings on Discovery Motions

Docket No. 165 — Interrogatory No. 16

MasterObjects asked Amazon to identify non-infringing alternatives and explain why each alternative was acceptable and non-infringing. The motion to compel a further response was granted in part. Amazon was ordered, by the close of business on December 15, 2021, to identify each earlier software version that it claimed was a non-infringing alternative and explain in detail how its differences from the accused software supported that position. The order did not require further discovery on Amazon’s statement that its accused instrumentalities were themselves a non-infringing alternative.

Docket No. 166 — Licensing communications

Amazon sought documents concerning licenses that MasterObjects had granted, proposed, or considered, as well as documents concerning commercialization of a MasterObjects system, method, or technology practicing an asserted patent claim. The motion to compel was granted. MasterObjects was ordered to produce all responsive documents within its possession, custody, or control by the close of business on December 15, 2021.

Docket No. 167 — Documents from related cases

Amazon sought specified materials from related litigation, including prior interrogatory and request-for-admission responses, claim charts, infringement and invalidity contentions, expert reports, privilege logs, technical materials, hearing transcripts, and filings under seal. The motion to compel was granted. MasterObjects was ordered to produce the listed materials within its possession, custody, or control by the close of business on December 15, 2021. The order stated that related litigation was relevant to validity, infringement, and damages, and that confidentiality concerns could be handled under this case’s protective order.

Docket No. 168 — Privilege log

Amazon sought a complete log identifying documents withheld as privileged, including communications concerning patent prosecution and litigation. Although the order characterized Amazon’s concerns about a possible violation of the prosecution bar as speculative and unfounded, it held that Amazon was entitled to the requested privilege log. The motion to compel was granted, and MasterObjects was ordered to produce a complete log by the close of business on December 24, 2021. MasterObjects’ counter-motion for sanctions was denied without prejudice for failure to comply with a local rule.

Docket No. 171 — Further interrogatory answers

MasterObjects sought additional written explanations of how Amazon’s Instant Search system worked. Amazon had responded by identifying software programs, code, and related documents under Federal Rule of Civil Procedure 33(d). The motion to compel further answers was denied.

Sealing Motions

Docket No. 169

MasterObjects withdrew its motion to seal the letter brief and exhibit concerning Docket No. 168. The materials were therefore to be filed in the public record.

Docket No. 170

The administrative motion to seal was granted. The order directed that specified lines in Exhibit A to the letter brief concerning Docket No. 171 be sealed because the material was confidential and there was no public interest in disclosing it.

Effect of the Order

The order resolved discovery and sealing disputes. It did not decide the ultimate patent-infringement, validity, or damages issues. Judge William Alsup was the assigned judge, while the discovery disputes were decided by the appointed special master under the case-management order.

The authoritative version

Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.

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