In Correct Transmission LLC v. Microsoft Corp., No. 2:23-mc-0075-KKE (W.D. Wash. Nov. 6, 2023), Washington District Judge Kymberly K. Evanson denied plaintiff’s motion to compel Defendant Microsoft to produce documents responsive to its Rule 45 subpoena requests, finding that the plaintiff failed to show that it could not obtain the documents from the defendant for the first five requests, and that the sixth request was an impermissible interrogatory.

Case Background

In this case, the plaintiff sued Juniper Networks in the Northern District of California alleging its networking equipment infringes, and induces others to infringe, the plaintiff’s patents. On July 28, 2023, the plaintiff issued a Subpoena to non-party Microsoft with six requests for documents. Microsoft timely responded, objecting to producing any documents.

After exchanging letters and participating in multiple phone calls, the plaintiff filed this motion, identifying two categories of documents: “Juniper Networks documents within Microsoft’s possession and Microsoft internal documents[.]” The plaintiff argued these documents were relevant to show Juniper Networks induced infringement, were “not otherwise available from the defendant, Juniper Networks”, and that Microsoft did not show the requests were unduly burdensome. The plaintiff also sought sanctions.

Microsoft responded that the plaintiff failed to show it could not obtain the requested information from Juniper Networks, refused to clarify its requests, and never requested internal Microsoft documents in the first instance. Microsoft also argued that the plaintiff’s sixth document request, for “documents sufficient to show any [Microsoft] employees that are responsible for installing, testing, or operating the Accused Instrumentalities”, was an impermissible interrogatory.

Judge’s Ruling

Addressing the plaintiff’s Rule 45 subpoena requests, Judge Evanson stated: “The Subpoena includes six requests…The first five requests seek all documents, all marketing materials, and documents sufficient to show trainings provided by Juniper Networks on various topics…(emphasis added). Correct Transmission sufficiently explains the relevance of these documents to its inducement of infringement claim…However, Correct Transmission fails to explain why only Microsoft would possess the communications between Juniper and Microsoft. If Juniper Networks provided the documents to Microsoft, both parties should possess such communications.”

Continuing, Judge Evanson stated: “The Court can imagine that differing document retention policies or other factors could lead to a circumstance in which only one party to a communication possessed a copy at a given time. This is particularly true here, where Correct Transmission seeks documents spanning a nine-year period. But Correct Transmission has not demonstrated those circumstances exist here. In fact, Correct Transmission states it requested the documents from Juniper Networks but ‘Juniper Networks ha[s] not produced those documents to date.’…A party’s mere failure to produce, without a meet and confer or other efforts to obtain the requested information, is not enough to burden Microsoft, a non-party, to engage in discovery. The Sedona Conference, repeatedly referenced in Correct Transmission’s correspondence with Microsoft…, recommends seeking production of documents from non-parties only after meeting and conferring with the party who either confirms it does not possess the requested documents or does not respond within a reasonable time. See The Sedona Conference, Commentary on Rule 45 Subpoenas to Non-Parties, Second Edition, 22 SEDONA CONF. J. 1, 20–21 (2021).” (link added)

Regarding the last request, Judge Evanson stated: “Correct Transmission’s sixth request seeks ‘[d]ocuments sufficient to show any of [Microsoft’s] employees that are responsible for installing, testing, or operating the Accused Instrumentalities.’…This request is an interrogatory disguised as a request for production and is not permitted under Rule 45…Notably, Correct Transmission repeatedly references its request for and the relevance of internal Microsoft documents…This sixth document request is the only request that could possibly indicate internal Microsoft documents because it is the only request not limited to documents provided by Juniper Networks…Because this request is an impermissible interrogatory, Correct Transmission’s argument to compel production of Microsoft’s internal documents also fails.”

As a result, Judge Evanson denied the plaintiff’s Rule 45 subpoena requests.

So, what do you think? How should the plaintiff have proceeded to obtain the information in that sixth request? Please share any comments you might have or if you’d like to know more about a particular topic.

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