Richards Layton & Finger
 

Magistrate Judge Burke Grants Motion to Compel Production of Sales Records but Grants Protective Order

June 14, 2018

In Princeton Digital Image Corp. v. Ubisoft Entertainment SA, No. 13-335-LPS-CJB (D. Del. Apr. 20, 2018), Magistrate Judge Burke granted the plaintiff’s request to compel defendant Ubisoft Inc. to produce summary sales, licensing, costs, and profit information relating to the accused video games and make available a Rule 30(b)(6) witness to testify regarding the requested information. The plaintiff, Princeton Digital Image Corp., sought sales information regarding each title for six years before the lawsuit was filed. According to Ubisoft, because the only claim was for direct infringement based on Ubisoft’s internal activity, sales to end users would not be relevant. Judge Burke found this challenge to be premature and compelled Ubisoft to produce responsive documents and designate a Rule 30(b)(6) witness.

But Judge Burke granted a protective order to Ubisoft against Princeton Digital’s request to compel the production of documents and a Rule 30(b)(6) witness related to Ubisoft’s acquisition of software released as the game Rocksmith, and quashed related subpoenas. Princeton Digital argued that the discovery would allow it to determine whether to bring claims for indirect and willful infringement, but Judge Burke found that it would not be proper for a party to use discovery, at least primarily, to determine whether it has a plausible claim. Although acknowledging the potential that the information sought could bear on direct infringement, as Princeton Digital also argued, the Court concluded that the discovery requests were not narrowly tailored to such allegations.

Key Point: The Court found that the defendant had standing to move to quash the subpoenas at issue because the information sought concerned the defendant’s own patent prosecution and business matters, including from a former employee of the defendant.