01 Communique Lab., Inc. v. Citrix Sys., Inc., CASE NO. 1:06CV253

• Decision Date: 03 June 2014
• Docket Number: CASE NO. 1:06CV253
• Parties: 01 COMMUNIQUE LABORATORY, INC., PLAINTIFF, v. CITRIX SYSTEMS, INC. and CITRIX ONLINE, LLC, DEFENDANTS.
• Court: U.S. District Court — Northern District of Ohio

01 COMMUNIQUE LABORATORY, INC., PLAINTIFF, v. CITRIX SYSTEMS, INC. and CITRIX ONLINE, LLC, DEFENDANTS.

CASE NO. 1:06CV253

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION

Dated: June 3, 2014

JUDGE SARA LIOI

OPINION AND ORDER

This matter is before the Court on the appeal by plaintiff 01 Communique Laboratory, Inc. ("plaintiff") of the magistrate judge's March 19, 2014 order (Doc. No. 257) resolving the parties' discovery dispute relating to the production of certain documents and source code. (Doc. No. 260.) In the alternative, plaintiff has moved for leave to amend its complaint. (Id.; Doc. No. 261.) Defendants, Citrix Systems, Inc. ("Citrix") and Citrix Online, LLC ("Citrix Online") (collectively "defendants"), have filed a response (Doc. No. 267), and plaintiff has replied. (Doc. No. 268.)

I. BACKGROUND

A brief review of the factual and procedural posture of this patent case is necessary to properly frame the present appeal and the alternative request to amend. Plaintiff is a foreign corporation with headquarters located in Mississauga, Ontario. (Am.Compl., Doc. No. 15 at ¶ 1.) Plaintiff "manufactures and sells I'm In Touch, a secure, Internet-based remote access solution that provides the ability to log in and work on a personal computer running the I'm In Touch software from virtually any device with an Internet connection." (Id.) It is the owner by assignment of United States Patent No. 6,928,479 ("'479 patent"). (Id. at ¶ 9.)

Defendants, both Delaware corporations with principal places of business in Florida, also sell Internet-based software designed to permit remote access to computers and computer-related services. (Id. at ¶¶ 2-4.) Defendants' products include: GoToMyPC®, GoToAssist™, and—pertinent to the present discovery dispute—GoToMeeting™.¹ (Id. at ¶ 4.)

The case was initially assigned to the docket of the Hon. Ann Aldrich. In the original complaint, filed February 1, 2006, plaintiff identified GoToMeeting as one of defendants' products (Compl., Doc. No. 1 at ¶¶ 2, 3), but only directly accused the software program, GoToMyPC, as infringing upon the '479 patent. (Id. at ¶ 9.) Plaintiff amended its complaint on April 18, 2006. (Doc. No. 15.) While plaintiff once again identified GoToMeeting as one of defendants' products (id. at ¶¶ 4, 5), it again confined its specific accusations of infringement to GoToMyPC. (Id. at ¶ 11.)

Over the course of the next two years, the parties engaged in extensive discovery, out of which grew a number of contentious discovery disputes. On November 2, 2006, Judge Aldrich conducted a Markman hearing, and she issued a ruling on claimconstruction on March 13, 2007. (Doc. No. 73.) Claim construction was followed by a round of summary judgment motions (Doc. Nos. 146-47, 149-50, 152-53) and motions in limine. (Doc. Nos. 191-96, 198-202.)

On December 7, 2007, defendants filed a request for inter partes reexamination of the '479 patent with the PTO. Shortly thereafter, on January 14, 2008, defendants moved to stay this matter pending the PTO's determination of the validity of plaintiff's patent. The PTO granted defendants' request for reexamination on March 4, 2008. Judge Aldrich, in turn, granted defendants' motion to stay on March 12, 2008. (Doc. No. 215.) At that time, Judge Aldrich found that a stay was warranted because reexamination had the potential to simplify or streamline the litigation. (Id. at 5693.) Following the imposition of the stay, Judge Aldrich administratively terminated the pending dispositive and evidentiary motions without issuing rulings thereupon.

On September 10, 2010, following the death of Judge Aldrich, the action was reassigned to the undersigned.² By that time, the case had been stayed for approximately two and one-half years. Plaintiff subsequently filed two related motions: a motion to lift the stay (Doc. No. 230) and a motion to reopen the case. (Doc. No. 236.) The Court held a hearing on the pending motions on January 29, 2014. The motion hearing represented the first time the parties appeared before the undersigned, and, as such, the Court permitted the parties to provide some background on the relevant technology and the status of the case prior to the stay. In addition, counsel for the partiescommented on what additional discovery would need to be completed to prepare this case for trial. Both sides agreed that, given the passage of time, certain discovery relating to the source code used to operate GoToMyPC would have to be updated. (Hearing Transcript, Doc. No. 243 at 6393-95, 6415-16.)

During the hearing, counsel for plaintiff also raised issues relating to GoToMeeting. According to counsel, GoToMeeting was "a new product" that "is, in some ways different than GoToMyPC that Judge Aldrich heard about." (Id. at 6397.) He explained that, "[i]t is our belief that [GoToMeeting] uses the same engine as GoToMyPC, and therefore, for the same reasons that GoToMyPC infringes GoToMeeting also infringes. It wasn't at issue before Judge Aldrich because it had just begun to come out as that matter was moving towards trial." (Id. at 6398.) While discovery on GoToMyPC only needed to be updated, plaintiff's counsel conceded that no discovery had been taken, to date, on GoToMeeting. (Id. at 6426-27.)

At the conclusion of the hearing, the Court took the pending motions under advisement, though the Court informed counsel and the parties that it was inclined to lift the stay. (Id. at 6428-29.) In due course, the Court granted the motions and lifted the stay, effective February 25, 2014. Three days later (February 28, 2014), the Court issued an Amended Case Management Plan and Trial Order ("Am. CMPTO"), setting forth the dates and deadlines that were to govern the case going forward. (Doc. No. 250.)³The only date relating to discovery provided that, by March 21, 2014, the parties were to "update document production and source code production[.]" (Id. at 6458.)

Unfortunately, it did not take long for the parties to become embroiled in another discovery dispute. Scarcely a week later (on March 6, 2014), plaintiff sent a letter to the Court advising of a disagreement over whether defendants were required to provide discovery on their GoToMeeting product and the manner in which defendant was to produce updates of its source code. (Doc. No. 254.) While plaintiff insisted that defendants' obligation to supplement discovery included the duty to provide initial discovery on GoToMeeting (id. at 6484-85), defendants maintained that the Court's instruction to "update" discovery did not constitute an invitation to expand the scope of the case to include infringement accusations against GoToMeeting. (Doc. No. 255 at 6501.)

The Court referred the discovery dispute to the magistrate judge. (Doc. No. 256.) On March 19, 2014, following a telephone conference with counsel, Magistrate Judge Kathleen Burke issued a minute order denying plaintiff's request to compel defendants to produce the source code for GoToMeeting. (Doc. No. 257 at 6737.) In support of her decision, the magistrate judge underscored the fact that the Court had instructed the parties to "update" the source code instead of providing discovery anew. (Id.) The magistrate judge also instructed the parties to meet and confer in order to arrive at an acceptable method for producing the updated source code for GoToMyPC. (Id.) Plaintiff's appeal focuses upon the magistrate judge's ruling relative to GoToMeeting.

II. PLAINTIFF'S APPEAL OF THE MAGISTRATE JUDGE'S DISCOVERY RULING

A. Standard of Review

28 U.S.C. § 636(b)(1)(A) permits a district court judge to designate a magistrate judge to determine non-dispositive pretrial matters. When a party timely objects to a magistrate judge's order on a non-dispositive matter, the district judge must set aside any part of the order that is "clearly erroneous or is contrary to law." Fed. R. Civ. P. 72(a); see 28 U.S.C. § 636(b)(1)(A). The "clearly erroneous" standard applies to the magistrate judge's findings of fact, and the magistrate judge's legal conclusions are reviewed under the "contrary to law" standard. Gandee v. Glasser, 785 F. Supp. 684, 686 (S.D. Ohio 1992). A factual finding is "'clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. U.S. Gypsum Co., 333 U.S. 364, 395, 68 S. Ct. 525, 92 L. Ed. 746 (1948) (explaining the clearly erroneous standard under Rule 52(a)); Hagaman v. Comm'r of Internal Revenue, 958 F.2d 684, 690 (6th Cir. 1992) (quoting U.S. Gypsum Co., 333 U.S. at 395). This standard does not empower a reviewing court to reverse the magistrate judge's finding simply because it would have decided the matter differently. Anderson v. City of Bessemer City, N.C., 470 U.S. 564, 573, 105 S. Ct. 1504, 84 L. Ed. 2d 518 (1985).

B. Analysis

It is plaintiff's position on appeal that "Magistrate Judge Burke's determination that discovery on the GoToMeeting service was not contemplated by the Case Management Plan is clearly erroneous and should be set aside." (Doc. No. 260 at6751.) According to plaintiff, GoToMeeting has always been a part of the case. In support, plaintiff observes that the complaint and the amended complaint broadly accused defendants of infringing the '479 patent through its "'Internet-based access, support, and collaboration software and services' which include but are not limited to 'GoToMyPC, a solution for remote, secure, and managed desktop personal computer access over the Internet, GoToAssist, a remote support solution, and GoToMeeting, a solution for conducting online meetings.'" (Id. at 6751-52 [citing Doc. No. 1 at ¶¶ 2, 3, 9, and Doc. No. 15 at ¶¶ 4, 5, 11].) There are several problems with this stance.

First, plaintiff's argument that GoToMeeting has always been part of the case is directly contradicted by its counsel's position at the motion hearing that...