Sound View Innovations, LLC v. Hulu, LLC

MEMORANDUM in Support of MOTION to Compel Deposition of ERIN MEHTA 238

C.D. Cal.March 13, 2019

REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 RUSS AUGUST & KABAT Marc A. Fenster (SBN 181067) mfenster@ raklaw.com Benjamin T. Wang (SBN 228712) bwang@raklaw.com Kent N. Shum (SBN 259189) kshum@raklaw.com 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Tel: (31-0) 826-7474 Fax: (310) 826-6991 DESMARAIS LLP Alan S. Kellman (admitted pro hac vice) Richard M. Cowell (admitted pro hac vice) C. Austin Ginnings (admitted pro hac vice) 230 Park Avenue New York, New York 10169 Tel: (212) 351-3400 Fax: (212) 351-3401 Attorneys for Plaintiff SOUND VIEW INNOVATIONS, LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION SOUND VIEW INNOVATIONS, LLC, Plaintiff, v. HULU, LLC, Defendant. Case No. 2:17-CV-04146 JAK (PLAx) PLAINTIFF SOUND VIEW INNOVATIONS, LLC’S SUPPLEMENTAL MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO COMPEL HULU TO MAKE ERIN MEHTA AVAILABLE FOR DEPOSITION Date: March 27, 2019 Time: 10:00 AM Judge: Hon. Paul L. Abrams Courtroom: 780 Discovery Cut-Off: February 11, 2019 Pre-Trial Conference: June 3, 2019 Trial: To Be Determined Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 1 of 9 Page ID #:16637 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION - ii - CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS Page I. Ms. Mehta’s Testimony is Critical to Any Fair Investigation of Hulu’s Subjective Belief Regarding Infringement. ..................... 1 II. Ms. Huoth’s Testimony Cannot Substitute for Ms. Mehta ............. 2 III. Hulu’s Assertion of Attorney-Client Privilege Further Supports the Need to Depose Ms. Mehta. ......................................... 4 IV. The Ten-Deposition Limit Does Not Apply to Ms. Mehta. ............. 4 Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 2 of 9 Page ID #:16638 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION 1 CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. Ms. Mehta’s Testimony is Critical to Any Fair Investigation of Hulu’s Subjective Belief Regarding Infringement. Hulu does not dispute that its subjective belief regarding infringement is an element of both Sound View’s willful and induced infringement allegations in this case. (Stip. at 1:23-25.) Nor does Hulu dispute that it seeks to defend against both willful and induced infringement by asserting an advice-of-counsel defense. (Id. at 1:23-27, 12:18-13:2.) Accordingly, anyone at Hulu who is involved in either Hulu’s internal infringement analyses or in procurement of Hulu’s opinions-of-counsel is likely to have relevant information. (Id. at 1:28-2:4.) Ms. Mehta not only fits that description, but she appears to be at the very center of both Hulu’s internal infringement analyses and . Indeed, Hulu does not dispute that Ms. Mehta is the “point of contact for all patent matters.” (Stip. at 1:12-13.) She was the point of contact for Sound View’s abbreviated license negotiations with Hulu. (Balcof Decl. (D.I. 238-2) Ex A, April 6, 2017 Mehta Letter to deBlasi at 1.) The fact that Hulu chose to place so much responsibility in one person is not Sound View’s fault. But it does place Ms. Mehta at the center of Hulu’s patent operations. It would be hard to invent a witness who is likely to be more knowledgeable about Hulu’s subjective infringement beliefs, the conversations and documents relevant to those beliefs, and , including Hulu’s reliance on Mr. Yang’s opinions. Hulu does not actually dispute any of this. Instead, Hulu dismisses the notion that Ms. Mehta may have unique and discoverable knowledge as “pure speculation” and “pure conjecture,” without ever denying it. (Stip. at 18:7, 18:19-20.) Nor could Hulu deny her knowledge, as the undisputed evidence is unequivocal that all patent matters at Hulu-at least the ones relevant to this case-go through her. Simply invoking the phrases “pure speculation” and “pure conjecture” does not make it so. Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 3 of 9 Page ID #:16639 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION 2 CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Moreover Hulu’s attempt to cast doubt on Ms. Mehta’s knowledge only serves to highlight why her testimony is so important. For example, Hulu argues that anything concerning Those are core issues that go to Hulu’s subjective belief of infringement that simply cannot be addressed by Mr. Yang. But Sound View needs to depose Ms. Mehta to test that unsupported assertion. II. Ms. Huoth’s Testimony Cannot Substitute for Ms. Mehta Hulu’s suggestion that Ms. Mehta’s testimony would be duplicative of Hulu’s designated Rule 30(b)(6) deponent, Ms. Huoth, is both factually and legally incorrect. (Stip. at 18:21-19:12.) As an initial matter, Ms. Huoth has not been deposed yet because . (Stip. at 4 n. 1.) Accordingly, it is speculation, at best, to predict what Ms. Huoth will actually say at her deposition and whether it will Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 4 of 9 Page ID #:16640 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION 3 CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 overlap any of Ms. Mehta’s testimony. That problem is exacerbated by the fact that Hulu produced no evidence in this case-and cited none in its briefing-suggesting that Ms. Huoth has any of Ms. Mehta’s knowledge. From an evidentiary perspective, Ms. Huoth’s knowledge is a black hole. Moreover, it is simply impossible for Ms. Huoth to digest all of the knowledge that Ms. Mehta has acquired in her various roles. Hulu does not dispute that the scope of the privilege waiver in this matter extends to all of Ms. Mehta’s internal communications at Hulu concerning infringement of Sound View’s patents. As Sound View explained in its portion of the Stipulation, “[w]hen a party discloses advice of counsel, that party waives attorney client privilege as to all communications regarding the same subject matter, including those between in-house counsel and the defendant-even if the party did not ultimately rely on that attorney’s advice.” (Stip. at 10:2-8, citing In re EchoStar Communications Corp., 448 F.3d 1294, 1303 (Fed. Cir. 2006); Krausz Industries Ltd. v. Smith-Blair, Inc., Case No. 5:12-cv-00570-FL, 2016 WL 10538004, at *11 (E.D. N.C. Dec. 13, 2016).) Hulu never addresses EchoStar or Krausz, much less disputes their holdings. Thus, when Hulu repeatedly promises that Ms. Huoth will be prepared with “any properly discoverable information Ms. Mehta may possess” (Stip. at 5:3-6), the message is clear: Hulu will unilaterally dictate what is “properly discoverable.” And by carefully preparing Ms. Huoth with only the information that Hulu deems relevant and not privileged, it effectively shields Sound View, and ultimately the Court, from testing those determinations. That is not the law. Hulu may not “dictate or choose the manner in which [it] parcel[s] out information in response to appropriate discovery requests.” Frank Brunckhorst, LLC v. Ihm, No. 11-cv-1883-CAB (KSC), 2012 WL 12868292, at *8 (S.D. Cal. Sept. 26, 2012). Indeed, Rule 30(b)(6) itself explains that it “does not preclude a deposition by any other procedure,” including an individual deposition under Rule 30(b)(1). Accordingly, Ms. Huoth’s future deposition has no impact on Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 5 of 9 Page ID #:16641 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION 4 CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Sound View’s ability to depose Ms. Mehta. III. Hulu’s Assertion of Attorney-Client Privilege Further Supports the Need to Depose Ms. Mehta. Hulu’s suggestion that Sound View seeks to discover information from Ms. Mehta that is properly covered by the attorney-client privilege is a red herring. Questions that may implicate privileged communications arise in virtually every deposition. And counsel have a mechanism for dealing with it: they object and instruct the witness not to answer. E.g., City of Colton v. Am. Promotional Events, Inc., No. 05-cv-01479 JFW (EX), 2011 WL 13224074, at *2 (C.D. Cal. Sept. 6, 2011). That process serves an important purpose: it defines the metes and bounds of the privilege claim, so that a party cannot later use the assertion of privilege as both a sword and a shield. It also serves to crystalize any disputes over the privilege claim. Hulu put Ms. Mehta in the unique situation of controlling a large amount of information relevant to Hulu’s subjective intent concerning infringement. Yet, Hulu . Thus, the only way to test Hulu’s application of privilege is to ask Ms. Mehta directly. Funneling those questions through Ms. Huoth is not only inefficient, but permits her to deny knowledge of Ms. Mehta’s communications, rather than claiming privilege where appropriate. For this additional reason, the Court should compel Hulu to produce Ms. Mehta for deposition. IV. The Ten-Deposition Limit Does Not Apply to Ms. Mehta. The Court should compel Ms. Mehta’s deposition for the reasons discussed above. But the Court also can and should compel her deposition because Hulu concedes that Sound View has taken the deposition of only seven fact witnesses-all narrowly tailored to the information necessary to prosecute this case. (Stip. at 7:8- 18; 16:14-17.1) Ms. Mehta would be fact witness number eight. If expert depositions 1 In its Introductory Statement, Hulu presents a misleading and confusing recitation of the depositions taken to date, by double-counting witnesses and depositions, and Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 6 of 9 Page ID #:16642 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION 5 CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 do not count toward the ten-deposition limit in Rule 30(a)(2), Hulu’s concession alone resolves this motion, and Hulu should produce Ms. Mehta for deposition. That is true because all of Hulu’s arguments assume that Ms. Mehta’s deposition is outside the ten-deposition limit and that Sound View must seek permission for her deposition under Rule 26(b)(2). Hulu cites no other basis for refusing her deposition. Even if expert depositions do count toward the ten-deposition limit, Hulu’s concession that Sound View deposed only seven fact witnesses should still resolve this motion. That is true because Hulu does not dispute that courts routinely permit parties to take expert depositions beyond the ten-deposition limit. (Stip. at 13:15- 14:1.) Hulu does not argue that this case is any different. The only reason that the deposition counting issue is before the Court in the context of Ms. Mehta’s deposition and not expert depositions, is Hulu’s refusal to make any witness available concerning opinions of counsel until ordered to do so by the Court (Balcof Decl. (D.I. 238-2) Ex. L, D.I. 224 at 3), and then only after another five-week delay. That delay pushed the Mehta dispute past expert depositions on the calendar. But the resulting temporal leapfrog should not change the outcome. If not for Hulu’s procedural gamesmanship, this motion would relate solely to Sound View’s ability to take depositions of Hulu’s experts. Hulu does not dispute that “if expert depositions were the issue here, it would be far-fetched for Hulu to argue that Sound View could not now depose Hulu’s experts.” (Stip. at 13:28-14:1.) To frame the question any other way is to impose an unfair prejudice on Sound View because of Hulu’s delay in providing discovery that Sound View has sought since October. Because Sound View has only taken seven fact depositions, coupled with the dubious applicability of expert depositions to the Rule 30(a)(2) limit and the fact that courts routinely permit expert depositions beyond that limit, there should be no impediment to moving forward with Ms. Mehta’s deposition. including at least one deposition that Hulu itself noticed. (Stip. at 4.) Both parties agree, however, that Sound View deposed only seven fact witnesses. (Id. at 7, 16.) Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 7 of 9 Page ID #:16643 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION 6 CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Dated: March 13, 2019 RUSS AUGUST & KABAT By: /s/ Kent N. Shum Marc A. Fenster Benjamin T. Wang Kent N. Shum 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Tel: (310) 826-7474 Fax: (310) 826-6991 mfenster@raklaw.com bwang@raklaw.com kshum@raklaw.com Of Counsel: DESMARAIS LLP Alan S. Kellman (admitted pro hac vice) Richard M. Cowell (admitted pro hac vice) C. Austin Ginnings (admitted pro hac vice) 230 Park Avenue New York, NY 10169 Tel: (212) 351-3400 Fax: (212) 351-3401 akellman@desmaraisllp.com rcowell@desmaraisllp.com aginnings@desmaraisllp.com Attorneys for Plaintiff SOUND VIEW INNOVATIONS, LLC Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 8 of 9 Page ID #:16644 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SVI SUPPLEMENTAL MEMO ISO MOTION TO COMPEL MEHTA DEPOSITION 7 CASE NO. 2:17-CV-04146 JAK (PLAX) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CERTIFICATE OF SERVICE I hereby certify that a copy of the foregoing document was filed electronically in compliance with Local Rule 5-3.2. Therefore, this document was served on all counsel who are deemed to have consented to electronic service. Pursuant to Federal Rule of Civil Procedure 5(d) and Local Rule 5-3.2, all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by email on March 13, 2019. /s/ Kent N. Shum Kent N. Shum Case 2:17-cv-04146-JAK-PLA Document 291 Filed 03/13/19 Page 9 of 9 Page ID #:16645