United States District Court, D. Nevada
ORDER [DEFENDANTS' MOTIONS TO COMPEL, ECF NO.
FERENBACH UNITED STATES MAGISTRATE JUDGE.
matter involves Plaintiffs CG Technology Development,
Interactive Games Limited, and Interactive Games LLC patent
infringement action against Defendants 888 Holdings;
Bwin.Party Digital Entertainment, Bwin.Party (USA), and
Bwin.Party Entertainment (NJ). Before the court are
Defendants' motion to compel (ECF No. 79),
Plaintiffs' response (ECF No. 69), and Defendants'
reply (ECF No. 85). For the reasons stated below,
Defendants' motion to compel is granted. Both
parties' requests for sanctions are denied.
2014, Andrew Ramer, Managing Director of Cantor Fitzgerald,
L.P.'s Intellectual Property Division, sent letters to
several corporations, including 888 Holdings, asserting that
the corporations were infringing on patents held by
“Cantor Fitzgerald, L.P. and its affiliates.”
(ECF No. 79, Ex. 5). Plaintiffs are wholly owned subsidiaries
of CG Technology, L.P., Cantor Index Limited, and CFPH, LLC.
(Id., Ex. 9 at 2). “CG Technology Development,
LLC; Interactive Games Limited; CFPH, LLC; and Interactive
Games LLC have their patents centrally managed, prosecuted,
and commercialized [i.e., monetized] by primarily the same
team of intellectual property professionals at Cantor
Fitzgerald, L.P.'” (Id., Ex. 5 at 2).
Fitzgerald, L.P.'s letters subsequently developed into
the cases now before the Court. During discovery, Defendants
served Plaintiffs with joint document requests. (ECF No. 79,
Ex. 1). The parties engaged in several discussions and
meetings regarding alleged deficiencies in Plaintiffs'
disclosures. (Id., Ex. 3-4). Of particular
importance were documents Plaintiffs failed to produce
because Plaintiffs asserted the documents were held by third
parties, specifically CG Technology, LP. (Id.).
25, 2017, Defendants filed a motion to compel discovery. (ECF
No. 79). Defendants seek an order compelling Plaintiffs to
provide specific documents in response to multiple requests
for production of documents: (1) documents reflecting
Plaintiffs' corporate structure, ownership, formation,
structure and documents reflecting relationships between the
various entities; (2) documents from the previous litigation
concerning Plaintiffs' ownership of the 818 patent; (3)
documents reflecting efforts to practice Plaintiffs'
asserted patents; and (4) documents reflecting patent
valuation. (Id. at 2).
argue documents held by the Cantor Affiliates, and
specifically CG Technology, LP., are within the control of
Plaintiffs as demonstrated by Plaintiffs' conduct during
this case. (ECF No. 79 at 4-5). Plaintiffs have previously
disclosed documents from the Cantor Affiliates.
(Id., Ex. 5-7). In response to a prior motion to
sever, Plaintiffs asserted they “are all affiliates of
Cantor, ” (2:16-cv-000801-RCJ-VCF, ECF No. 55 at 2),
“share the same Managing Director of Intellectual
Property, ” and “are all part of a commonly
administered and managed patent portfolio”
(Id. at 4).” Plaintiffs further asserted
“since all of the patents are jointly administered and
managed, requests for access to inventors, prosecution
history, document production, and other requests for
discovery related to each asserted patent will route to and
from the same channels.” (Id. at 8). In
response to Defendants' motion to compel, Plaintiffs
argue they cannot produce documents held by other Cantor
entities because the entities are separate and Plaintiffs do
not have control over the documents. (ECF No. 69 at 11-13).
discovery, Defendants also served a request for admission
regarding patent priority dates that Plaintiffs denied,
citing a need for expert discovery, third-party testimony,
and other evidence not yet obtained in the case. (ECF No. 79,
Ex. 2). In their motion to compel, Defendants ask the Court
to order that Plaintiffs admit the priority date of the
patents. (ECF No. 79 at 11). Defendants assert that
Plaintiffs' objection to admitting the priority date did
not fulfill the rules of procedure regarding making a
reasonable inquiry into the subject before denying the
admission. (Id.). Plaintiffs assert that, in light
of Defendants' invalidity contentions served in March
2017, “Plaintiffs had to consider whether and to what
extent third-party discovery from inventors may be required
to antedate the priority dates in view of the asserted prior
art.” (ECF No. 69 at 13-14).
Motion to Compel Regarding Requests for Production
otherwise limited by court order, the scope of discovery is
as follows: Parties may obtain discovery regarding any
nonprivileged matter that is relevant to any party's
claim or defense and proportional to the needs of the case,
considering the importance of the issues at stake in the
action, the amount in controversy, the parties' relative
access to relevant information, the parties' resources,
the importance of discovery in resolving the issues, and
whether the burden or expense of the proposed discovery
outweighs its likely benefit.” Fed.R.Civ.P. 26(b)(1).
party seeking discovery may move for an order compelling an
answer, designation, production, or inspection.”
Fed.R.Civ.P. 37(a)(3)(B). “The motion may be made if:
… (iii) a party fails to answer an interrogatory
submitted under Rule 33; or (iv) a party fails to produce
documents … as requested under Rule 34.”
Fed.R.Civ.P. 37(a)(3)(B)(ii), (iv). Defendants' request
for production presents one issue: whether Plaintiffs must
produce documents held by other Cantor affiliates.
may serve a request for production in a responding
party's “control.” Fed.R.Civ.P. 34(a)(1).
“‘Control' need not be actual control; courts
construe it broadly as ‘the legal right to obtain
documents upon demand.'” F.T.C. v.
Johnson, No. 2:10-CV-02203-MMD, 2013 WL 5408272, at *3
(D. Nev. Sept. 25, 2013) (quoting United States v.
Int'l Union of Petroleum & Indus. Workers,
AFL-CIO, 870 F.2d 1450, 1452 (9th Cir. 1989).
“Control must be firmly placed in reality.”
Int'l Union of Petroleum & Indus. Workers,
AFL-CIO, 870 F.2d at 1453. If a party in a case can get
access to the documents held by a third-party by
“request[ing] it” and the third-party not had an
issue with producing documents in the past, the documents are
in control of the party in the case. JS Prod., Inc. v.
Kabo Tool Co., No. 2:11-CV-01856-RCJ, 2013 WL 3364450,
at *2 (D. Nev. July 3, 2013).
case, to the extent the documents sought in Defendants'
request for production are held by the Cantor affiliates, the
documents are within Plaintiffs' control. Plaintiffs have
demonstrated several times that they are entitled to obtain
documents from the Cantor affiliates without objection
because they “are all affiliates of Cantor.”
(2:16-cv-000801-RCJ-VCF, ECF No. 55 at 2). Plaintiffs have
previously disclosed documents from the Cantor Affiliates in
this case, and have expressly acknowledged that
“requests for discovery related to each asserted patent
will route to and from the same channels.”
(Id. at 8). Because Plaintiffs have demonstrated
control over documents held by the Cantor affiliates in this
case, Defendants' motion to compel with regard to its
requests for production is granted. Plaintiffs will be
required to produce all documents held by the Cantor
affiliates (1) reflecting Plaintiffs' corporate
structure, ownership, formation, structure and documents
reflecting relationships between the various entities; (2)
from the previous litigation concerning Plaintiffs'
ownership of the 818 patent; (3) reflecting efforts to
practice Plaintiffs' asserted patents; and (4) reflecting
patent valuation as enumerated in Defendants' requests
Motion to Compel Regarding ...