Case 2:15-cv-01774-RCJ-VCF Document 168 Filed 09/16/16 Page 1 of 7
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF NEVADA
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`2:15-cv-01774-RCJ-VCF
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`ORDER
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`Plaintiff,
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`vs.
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`AEVOE CORP.,
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`______________________________________
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`RACING OPTICS, INC.,
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`Defendant.
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`This case arises out of competing patents for lens-protection technology. Plaintiff has
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`asked the Court to overturn an order of the Magistrate Judge granting Defendant’s motion for a
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`protective order.
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`I.
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`FACTS AND PROCEDURAL HISTORY
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`Since 1999, Plaintiff Racing Optics, Inc., through its founders Stephen, Bart, and Seth
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`Wilson (collectively, “the Inventors”), has developed and delivered lens-protection systems,
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`including “tear-off” protectors for high-speed racing consisting of stacks of optically engineered
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`laminated lenses applied to race car windshields, motorcycle goggles, and racing helmet visors.
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`(Compl. ¶ 2, ECF No. 1). Once damaged, the top layer of the lens can be torn off to reveal a
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`new, undamaged layer, providing a clear view. (Id.). The technology is also used in the medical,
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`military, consumer, and industrial fields. (Id. ¶ 3). Most importantly here, Racing Optics
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`Case 2:15-cv-01774-RCJ-VCF Document 168 Filed 09/16/16 Page 2 of 7
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`developed a “bubble-free” screen protector that avoids difficult-to-remove air bubbles created
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`when applying conventional screen protectors by eliminating the full adhesive in the central area
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`of the screen and spacing the protector away from the screen with an “air bearing.” (Id. ¶ 5).
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`Racing Optics filed U.S. Patent Application No. 12/780,443 for the bubble-free screen
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`protector technology, titled “Touch Screen Shield,” on May 14, 2010. (Id. ¶ 6). In mid-2012,
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`after the ‘443 Application had been published but while it was still pending, Defendant Aevoe
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`Corp.’s President and Executive Director Jon Lin contacted Racing Optics and informed it that
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`Aevoe was the assignee of U.S. Patent No. 8,044,942 for a bubble-free screen protector invented
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`by Lin. (Id. ¶ 6–8). The ‘942 Patent claimed priority to a January 18, 2011 provisional
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`application. (Id. ¶ 8). By 2013, Aevoe had filed five patent infringement actions based on the
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`‘942 Patent, including three in this District presided over by Chief Judge Navarro. (Id. ¶ 8 &
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`n.1). On March 15, 2013, Racing Optics filed a divisional application of the still-pending ‘443
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`Application, U.S. Patent Application No. 13/838,311, also titled “Touch Screen Shield.” (See
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`U.S. Patent No. 8,974,620, at [21, 22, 62], ECF No. 1-3). On January 16, 2015, Racing Optics
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`filed a continuation application of the still-pending ‘311 Application (itself a divisional
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`application of the still-pending ‘443 Application), U.S. Patent Application No. 14/599,176, also
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`titled “Touch Screen Shield.” (See U.S. Patent No. 9,104,256, at [21, 22, 60], ECF No. 1-2). The
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`‘311 Application issued as the ‘620 Patent on March 10, 2015. The ‘176 Application issued as
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`the ‘256 Patent on August 11, 2015. The ‘443 Application issued as the ‘545 Patent on
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`September 8, 2015.
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`In summary, Racing Optics is the assignee of U.S. Patents No. 8,974,620; 9,104,256; and
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`9,128,545 (collectively, “the Patents”), which issued on March 10, 2015; August 11, 2015; and
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`September 8, 2015, respectively. (Id. ¶¶ 23–28). Racing Optics sued Aevoe in this Court for
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`Case 2:15-cv-01774-RCJ-VCF Document 168 Filed 09/16/16 Page 3 of 7
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`direct, contributory, and inducement infringement of claims 12, 14–16, and 18–20 of the ‘545
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`Patent; claims 1–4, 6–7, 9–17, and 19–23 of the ‘256 Patent; and claims 1–11 and 13–14 of the
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`‘620 Patent via the production, use, offer for sale, and/or importation into the United States of
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`screen protectors for electronic devices, including the iVisor AG, iVisor XT, and iVisor Glass
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`(collectively, “the Accused Products”). (Id. ¶¶ 30, 42, 53). Aevoe answered and filed
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`counterclaims for non-infringement, invalidity, and unenforceability due to fraud upon or
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`inequitable conduct before the Patent Office. Racing Optics amended to add a claim of
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`infringement of U.S. Patent No. 9,274,625, which issued on March 1, 2016. Aevoe moved for
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`judgment on the pleadings against the claim for infringement of the ‘620 Patent, arguing that the
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`invention(s) therein or the application relating thereto had been abandoned. The Court denied
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`the motion. Racing Optics has asked the Court to overturn the Magistrate Judge’s order granting
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`Aevoe a protective order against certain discovery.
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`II.
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`LEGAL STANDARDS
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`Rule 72(a) permits a district court judge to modify or set aside a magistrate judge’s non-
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`dispositive ruling that is clearly erroneous or contrary to law:
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`When a pretrial matter not dispositive of a party’s claim or defense is
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`referred to a magistrate judge to hear and decide, the magistrate judge must
`promptly conduct the required proceedings and, when appropriate, issue a written
`order stating the decision. A party may serve and file objections to the order
`within 14 days after being served with a copy. A party may not assign as error a
`defect in the order not timely objected to. The district judge in the case must
`consider timely objections and modify or set aside any part of the order that is
`clearly erroneous or is contrary to law.
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`Fed. R. Civ. P. 72(a); see also Local R. IB 3-1(a). Rule 72(a) institutes an abuse-of-discretion-
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`type standard. See Grimes v. City and Cnty. of S.F., 951 F.2d 236, 241 (9th Cir. 1991) (citing
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`United States v. BNS Inc., 858 F.2d 456, 464 (9th Cir. 1988) (“We still must determine, however,
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`whether the court abused its discretion in issuing its order based on the facts before it which are
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`Case 2:15-cv-01774-RCJ-VCF Document 168 Filed 09/16/16 Page 4 of 7
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`supported by the record. Under the abuse of discretion standard, we cannot simply substitute our
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`judgment for that of the district court, but must be left with the definite and firm conviction that
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`the court committed a clear error of judgment in reaching its conclusion after weighing the
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`relevant factors.”)).
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`III. ANALYSIS
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`On April 20, 2016, the Magistrate Judge granted in part and denied in part Racing Optics’
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`motion to compel the production of certain documents. Specifically, the Magistrate Judge
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`sustained Aevoe’s objections to Racing Optics’ Requests for Production Nos. 25–27 (“the
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`RPF”). The RFP concerned any documents produced by Aevoe in previous litigation concerning
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`the ‘942 Patent. The Magistrate Judge noted that the RFP were improper “piggyback” requests.
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`Racing Optics did not ask the undersigned to overturn that ruling but later included similar
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`requests in a subpoena to Buchanan, Ingersoll & Rooney (“BIR”). On July 28, 2016, the
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`Magistrate Judge granted Aevoe’s motion for a protective order against the discovery, citing his
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`previous order sustaining Aevoe’s objections to the RFP. The Magistrate Judge noted that the
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`fourteen document requests submitted to BIR were essentially the same impermissible
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`“piggyback” requests as the RFP, because taken together they sought every document produced
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`or generated in a particular previous case (Aevoe Corp. v. AE Tech Co., Ltd., No. 12-cv-53-
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`GMN-NJK, i.e., “the Prior Action”) concerning the ‘942 Patent. The Magistrate Judge also
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`found that the information from the previous action was simply not relevant to the present action.
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`Racing Optics has asked the Court to overturn the July 28, 2016 ruling as being in clear
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`error or contrary to law under Rule 72(a). Racing Optics argues that certain documents
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`concerning technical specifications of the accused products in the Prior Action and an expert
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`report concerning a reasonable royalty analysis are relevant to the present case. But those are not
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`Case 2:15-cv-01774-RCJ-VCF Document 168 Filed 09/16/16 Page 5 of 7
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`the only documents Racing Optics demanded of BIR. Racing Optics sought broad categories of
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`documents from BIR, and it does not matter what Racing Optics now claims it was prepared to
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`accept in lieu of the full range of documents demanded via the subpoena. The subpoena
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`demands the broad range of documents as explained by the Magistrate Judge:
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`1. DOCUMENTS produced by AEVOE during the AEVOE V. AE TECH
`LITIGATION
`that would assist
`in understanding
`the design, research,
`development, operation, manufacture, marketing, testing, sale, demonstration
`and/or installation of the ACCUSED PRODUCTS, or any products marketed
`under similar product names.
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`2. Deposition transcripts and exhibits accompanying depositions of AEVOE or
`third parties during the AEVOE V. AE TECH LITIGATION discussing or
`attempting to discuss the design, research, development, operation, manufacture,
`marketing, testing, sale, demonstration and/or installation of the ACCUSED
`PRODUCTS, or any products marketed under similar product names.
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`3. DOCUMENTS produced by AEVOE during the AEVOE V. AE TECH
`LITIGATION that would assist in understanding the corporate structure of
`AEVOE.
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`4. Deposition transcripts and exhibits accompanying depositions of AEVOE or
`third parties during the AEVOE V. AE TECH LITIGATION discussing or
`attempting to discuss the corporate structure of AEVOE.
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`5. DOCUMENTS produced by AEVOE during the AEVOE V. AE TECH
`LITIGATION that would assist in understanding AEVOE’s manufacturers, third
`party distributors, or other companies AEVOE contracts with related to the
`development, design, production, manufacturing and/or supply of the ACCUSED
`PRODUCTS, or any products marketed under similar product names.
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`6. Deposition transcripts and exhibits accompanying depositions of AEVOE or
`third parties during the AEVOE V. AE TECH LITIGATION discussing or
`attempting to discuss AEVOE’s manufacturers, third party distributors, or other
`companies AEVOE contracts with related to the development, design, production,
`manufacturing and/or supply of the ACCUSED PRODUCTS, or any products
`marketed under similar product names.
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`7. DOCUMENTS produced by YOU or AEVOE during the AEVOE V. AE
`TECH LITIGATION that would assist in understanding AEVOE’s knowledge of
`the ASSERTED PATENTS and/or the patent applications that were eventually
`granted as the ASSERTED PATENTS.
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`Case 2:15-cv-01774-RCJ-VCF Document 168 Filed 09/16/16 Page 6 of 7
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`8. Deposition transcripts and exhibits accompanying depositions of AEVOE
`during the AEVOE V. AE TECH LITIGATION discussing or attempting to
`discuss the ASSERTED PATENTS and/or the patent applications that were
`eventually granted as the ASSERTED PATENTS.
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`9. DOCUMENTS produced by YOU or AEVOE during the AEVOE V. AE
`TECH LITIGATION discussing Racing Optics, Inc. or its products.
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`10. Deposition transcripts and exhibits accompanying depositions of AEVOE
`during the AEVOE V. AE TECH LITIGATION discussing or attempting to
`discuss Racing Optics, Inc. or its products.
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`11. DOCUMENTS produced by AEVOE during the AEVOE V. AE TECH
`LITIGATION related to reasonable royalties appropriate for infringement of the
`‘942 PATENT, including but not limited to expert reports.
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`12. Deposition transcripts and exhibits accompanying depositions YOU took of
`AEVOE during the AEVOE V. AE TECH LITIGATION discussing or
`attempting to discuss reasonable royalties appropriate for infringement of the ‘942
`PATENT.
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`13. DOCUMENTS produced by AEVOE during the AEVOE V. AE TECH
`LITIGATION related to remedies appropriate for the infringement of the ‘942
`PATENT, including injunction, damages, fees, including, but not limited to expert
`reports.
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`14. Deposition transcripts and exhibits accompanying depositions of AEVOE
`during the AEVOE V. AE TECH LITIGATION discussing or attempting to
`discuss remedies appropriate for the infringement of the ‘942 PATENT, including
`injunction, damages, fees.
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`(Subpoena, ECF No. 89-1, at 10–12). The Court does not find the Magistrate Judge’s ruling to
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`have been in clear error or contrary to law.
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`///
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`///
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`///
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`///
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`///
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`///
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`Case 2:15-cv-01774-RCJ-VCF Document 168 Filed 09/16/16 Page 7 of 7
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`CONCLUSION
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`IT IS HEREBY ORDERED that the Motion for District Judge to Reconsider Order (ECF
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`No. 150) is DENIED.
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`IT IS SO ORDERED.
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`Dated this 9th day of September, 2016.
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`_____________________________________
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` ROBERT C. JONES
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` United States District Judge
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`DATED: This 16th day of September, 2016.