Case 2:22-cv-00215-TS-DAO Document 279 Filed 02/01/24 PageID.4001 Page 1 of 7
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` UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
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`
`
`
`EAGLE VIEW TECHNOLOGIES INC.; and
`PICTOMETRY INTERNATIONAL CORP.,
`
`
`
`v.
`
`GAF MATERIALS LLC,
`
`
`
`
`Plaintiffs,
`
`Defendant.
`
`
`MEMORANDUM DECISION AND
`ORDER GRANTING DEFENDANT’S
`SHORT-FORM MOTION TO COMPEL
`PLAINTIFFS TO PRODUCE A 30(b)(6)
`WITNESS TO ADDRESS SEARCHES
`AND REPOSITORIES RELATING TO
`EFS (DOC. NO. 230)
`
`Case No. 2:22-cv-00215
`
`District Judge Ted Stewart
`
`Magistrate Judge Daphne A. Oberg
`
`
`
`
`In this patent infringement case, Defendant GAF Materials, LLC filed a motion to
`
`compel Plaintiffs Eagle View Technologies, Inc. and Pictometry International Corp.
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`(collectively, “EagleView”) to produce a witness to address Topics 13, 14, and 15 of GAF’s Rule
`
`30(b)(6) notice, which seek testimony regarding the repositories of information relating to
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`EagleView’s “EFS” software and the nature of the searches of those repositories.1 EagleView
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`opposes the motion, arguing an inquiry into the nature of the searches is impermissible
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`“discovery on discovery” and EagleView’s offer to provide testimony regarding how it has
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`stored its documents over time is sufficient.2 As explained below, because GAF has
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`demonstrated an adequate factual basis to question the sufficiency of EagleView’s response to
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`the underlying discovery request, GAF’s motion is granted.
`
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`1 (Def.’s Short-Form Mot. to Compel Pls. to Produc. a 30(b)(6) Witness to Address Searches and
`Repositories Relating to EFS (“Mot.”), Doc. No. 230.)
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`2 (Opp’n to Def.’s Short-Form Mot. to Compel Pls. to Produc. a 30(b)(6) Witness to Address
`Searches and Repositories Relating to EFS (“Opp’n”), Doc. No. 239.)
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`1
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`
`
`
` UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
`
`
`
`
`EAGLE VIEW TECHNOLOGIES INC.; and
`PICTOMETRY INTERNATIONAL CORP.,
`
`
`
`v.
`
`GAF MATERIALS LLC,
`
`
`
`
`Plaintiffs,
`
`Defendant.
`
`
`MEMORANDUM DECISION AND
`ORDER GRANTING DEFENDANT’S
`SHORT-FORM MOTION TO COMPEL
`PLAINTIFFS TO PRODUCE A 30(b)(6)
`WITNESS TO ADDRESS SEARCHES
`AND REPOSITORIES RELATING TO
`EFS (DOC. NO. 230)
`
`Case No. 2:22-cv-00215
`
`District Judge Ted Stewart
`
`Magistrate Judge Daphne A. Oberg
`
`
`
`
`In this patent infringement case, Defendant GAF Materials, LLC filed a motion to
`
`compel Plaintiffs Eagle View Technologies, Inc. and Pictometry International Corp.
`
`(collectively, “EagleView”) to produce a witness to address Topics 13, 14, and 15 of GAF’s Rule
`
`30(b)(6) notice, which seek testimony regarding the repositories of information relating to
`
`EagleView’s “EFS” software and the nature of the searches of those repositories.1 EagleView
`
`opposes the motion, arguing an inquiry into the nature of the searches is impermissible
`
`“discovery on discovery” and EagleView’s offer to provide testimony regarding how it has
`
`stored its documents over time is sufficient.2 As explained below, because GAF has
`
`demonstrated an adequate factual basis to question the sufficiency of EagleView’s response to
`
`the underlying discovery request, GAF’s motion is granted.
`
`
`1 (Def.’s Short-Form Mot. to Compel Pls. to Produc. a 30(b)(6) Witness to Address Searches and
`Repositories Relating to EFS (“Mot.”), Doc. No. 230.)
`
`2 (Opp’n to Def.’s Short-Form Mot. to Compel Pls. to Produc. a 30(b)(6) Witness to Address
`Searches and Repositories Relating to EFS (“Opp’n”), Doc. No. 239.)
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`1
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`Case 2:22-cv-00215-TS-DAO Document 279 Filed 02/01/24 PageID.4002 Page 2 of 7
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`BACKGROUND
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`GAF’s request for production (“RFP”) 5 seeks “[a]ll documents relating to sales [of],
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`offers for sale [of], licenses [of], or offers to license” certain software sold by Pictometry,
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`including Pictometry’s “EFS” software.3 GAF previously moved to compel EagleView to
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`produce responsive documents and to describe their efforts to locate such documents.4
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`According to GAF, at the time that motion was filed, EagleView claimed to have conducted a
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`reasonably diligent search but had not produced a single responsive document, despite references
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`to license agreements in publicly available documents.5 The court granted the motion in part and
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`denied it in part at a July 3, 2023 hearing.6 The court found RFP 5 relevant and proportional,
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`and noted EagleView’s representation that it had simply produced repositories where it believed
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`responsive documents would likely be found was insufficient to permit a determination of
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`whether an adequate search was conducted.7 Therefore, the court ordered EagleView to conduct
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`a new, targeted search after meeting and conferring with GAF regarding search parameters.8 But
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`the court denied GAF’s request to compel EagleView to provide further information regarding
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`3 (See Def.’s Short Form Mot. to Compel Pls.’ Produc. of Docs. Relating to Sales/Licenses of
`Pictometry Software and Identifying Nature of Prior Search for Such Docs. (“Mot. to Compel re
`RFP 5”) 1–2, Doc. No. 140 (alterations in original).)
`
`4 (See id.)
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`5 (See id. at 2.)
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`6 (See Min. Entry, Doc. No. 162; Order Granting in Part and Den. in Part Def.’s Short Form Mot.
`to Compel Pls.’ Produc. of Docs. Relating to Sales/Licenses of Pictometry Software and
`Identifying Nature of Prior Search for Such Docs. (“Order on Mot. to Compel re RFP 5”), Doc.
`No. 265 (written order memorializing the court’s July 3, 2023 oral ruling).)
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`7 (See Order on Mot. to Compel re RFP 5 at 3, Doc. No. 265.)
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`8 (See id.)
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`2
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`Case 2:22-cv-00215-TS-DAO Document 279 Filed 02/01/24 PageID.4003 Page 3 of 7
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`its search efforts, stating: “If, after a renewed search, EagleView still maintained no responsive
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`documents existed, GAF must accept this unless it could show a factual basis to believe
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`additional documents still existed.”9
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`According to GAF, following this order, EagleView produced 227 EFS-related
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`documents, including evidence of 71 EFS licenses executed before the 2009 patent priority
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`date.10 GAF contends that while this production confirmed the existence of documents
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`evidencing “extensive” pre-2009 EFS licensing, it was still deficient in three respects:
`
`(i) many of the pre-2009 EFS licenses were incomplete (for instance, they included
`only a signature page, rather than any of the terms or attachments); (ii) others were
`only referred to in post-2009 documents (such as license renewals, without
`production of the underlying, pre-2009 license being renewed); and (iii) the
`produced documents refer to multiple repositories likely to contain additional,
`relevant information (relating, inter alia, to licenses, trade shows at which EFS was
`demonstrated, and distribution of EFS-related materials and training sessions) that
`Plaintiffs do not appear to have searched.11
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`For example, GAF contends the produced documents contain references to two repositories
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`where pre-2009 EFS licenses are likely to be found (Pictometry’s “Soffront CRM database” and
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`its intranet), but it is unclear whether EagleView searched these repositories.12 Further, GAF
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`asserts EagleView has not produced any custodial documents from several individuals who were
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`“indisputably involved” in EFS-related activities and are referenced in EFS-related documents.13
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`9 (Id. at 3–4.)
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`10 (See Mot. 2, Doc. No. 230.)
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`11 (Id.)
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`12 (See id. at 3.)
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`13 (Id.)
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`3
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`Case 2:22-cv-00215-TS-DAO Document 279 Filed 02/01/24 PageID.4004 Page 4 of 7
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`GAF included the following topics in its Rule 30(b)(6) notice to address what it
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`considered to be EagleView’s gaps in production:
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`• Topic 13: “All sources or repositories of Documents that are responsive to Request
`
`for Production No. 5, from April 17, 2002, to the present.”14
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`• Topic 14: “For each source or repository in Topic 13, the nature of the searches, if
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`any, that Plaintiffs performed for that source or repository.”15
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`• Topic 15: “To the extent that any source or repository in Topic 13 no longer exists or
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`no longer contains Documents responsive to Request for Production No. 5, the
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`circumstances and timing relating thereto.”16
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`EagleView objected to these topics as overly broad, unduly burdensome, and an improper
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`attempt to seek “discovery on discovery,” and it initially declined to produce a witness on these
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`topics.17 EagleView later agreed to provide testimony about “EagleView and Pictometry’s
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`document repositories as they have existed over time.”18 EagleView contends this fully responds
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`to Topics 13 and 15 and is sufficient to address GAF’s concerns regarding gaps in production.19
`
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`14 (Ex. A to Decl. of Edward L. Tulin, Pls.’ Objs. and Resps. to GAF’s Notice of Dep. Pursuant
`to Fed. R. Civ. P. 30(b)(6) to EagleView, Doc. No. 230-1 at 24.)
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`15 (Id. at 25.)
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`16 (Id.)
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`17 (Id. at 24–26.)
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`18 (Opp’n 3, Doc. No. 239.)
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`19 (See id. at 1, 5.)
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`Case 2:22-cv-00215-TS-DAO Document 279 Filed 02/01/24 PageID.4005 Page 5 of 7
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`However, EagleView maintains its refusal to produce a witness for Topic 14, arguing it is an
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`unjustified request for discovery on discovery.20
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`ANALYSIS
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` “[D]iscovery on the process that a party used to respond to [a] discovery request is
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`appropriate where there is reasonable doubt about the sufficiency of a party’s response.”21
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`However, such “discovery on discovery” requires an adequate factual basis to draw into question
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`a party’s compliance, not mere speculation.22
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`GAF has demonstrated an adequate factual basis to question the sufficiency of
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`EagleView’s response to RFP 5. Although EagleView argued it conducted a reasonably diligent
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`search in the first instance, its renewed search following the July 3, 2023 order yielded hundreds
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`of additional responsive documents. Further, GAF has provided detailed reasons why it believes
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`additional documents exist which have not been produced—supported by specific references to
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`additional repositories and custodians in the produced documents themselves.23 EagleView does
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`not indicate whether it searched these repositories or custodial sources for documents responsive
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`to RFP 5. Under these circumstances, discovery regarding the process that EagleView used to
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`search for responsive documents is appropriate.
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`20 (See id. at 1.)
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`21 Dalton v. Town of Silver City, No. 17-1143, 2021 U.S. Dist. LEXIS 181328, at *14 (D.N.M.
`Sept. 22, 2021) (unpublished).
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`22 See Gross v. Chapman, No. 19 C 2743, 2020 U.S. Dist. LEXIS 133008 at *5–7 (N.D. Ill. July
`28, 2020) (unpublished).
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`23 (See Mot. 2–3, Doc. No. 230; Ex. B to Decl. of Edward L. Tulin, Doc. No. 232-1 at 5–26
`(sealed).)
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`5
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`Case 2:22-cv-00215-TS-DAO Document 279 Filed 02/01/24 PageID.4006 Page 6 of 7
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`EagleView’s offer to produce a witness to testify about what depositories have existed is
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`insufficient because it fails to address whether these repositories were searched for responsive
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`documents, and the nature of the search conducted. Topics 13 and 14, as written, are better
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`suited to address whether EagleView conducted an adequate search. Topic 13 requires
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`EagleView to identify all repositories or sources of responsive documents, and Topic 14 requires
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`EagleView to identify the nature of the search performed.24 Such discovery is justified in light
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`of the factual basis presented by GAF for questioning the sufficiency of EagleView’s response to
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`RFP 5. Finally, Topic 15 is appropriate where EagleView has indicated some responsive
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`documents are no longer available due to changes in its information storage systems over time.25
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`CONCLUSION
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`Because GAF has demonstrated an adequate factual basis to question the sufficiency of
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`EagleView’s response to RFP 5, discovery regarding the process EagleView used to respond is
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`24 EagleView suggests Topic 14 is “intimately tied to issues of attorney-client privilege and
`attorney work product,” but fails to meaningfully support this argument. (See Opp’n 5, Doc. No.
`239.) Presumably, testimony on Topic 14 would simply address whether a search was performed
`pursuant to the parameters agreed upon by the parties following the July 3, 2023 order.
`EagleView does not explain why such information would be privileged or work-product
`protected.
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`25 (See, e.g., Pls.’ Opp’n to Def.’s Short Form Mot. to Compel Pls.’ Produc. of Docs. Relating to
`Sales/Licenses of Pictometry Software and Identifying Nature of Prior Search for Such Docs. 1,
`Doc. No. 147.)
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`6
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`Case 2:22-cv-00215-TS-DAO Document 279 Filed 02/01/24 PageID.4007 Page 7 of 7
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`justified. GAF’s motion26 is granted, and EagleView is ordered to produce a Rule 30(b)(6)
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`witness for Topics 13, 14, and 15.
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`DATED this 1st day of February, 2024.
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`BY THE COURT:
`
`
`____________________________
`Daphne A. Oberg
`United States Magistrate Judge
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`26 (Doc. No. 230.)
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`7
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