Northbrook Digital, LLC v. Vendio Services, Inc.
| Decision Date | 09 June 2008 |
| Docket Number | No. 07-CV-2250 (PJS/JJG).,07-CV-2250 (PJS/JJG). |
| Citation | 625 F.Supp.2d 728 |
| Parties | NORTHBROOK DIGITAL, LLC, Plaintiff, v. VENDIO SERVICES, INC., Defendant. |
| Court | U.S. District Court — District of Minnesota |
James K. Nichols and Peter M. Lancaster, Dorsey & Whitney LLP; Mark A. Wolfe, Northbrook Digital LLC, for plaintiff.
Felicia J. Boyd, Lee M. Pulju, and Elizabeth Cowan Wright, Faegre & Benson LLP; Daniel Johnson, Jr. and Rita E. Tautkus, Morgan, Lewis & Bockius LLP; Theodore F. Shiells, Carr LLP, for defendant.
Plaintiff Northbrook Digital, LLC ("Northbrook") brings suit for patent infringement against defendant Vendio Services, Inc. ("Vendio"). Northbrook is a one-man operation run by Mark A. Wolfe. Wolfe wears many hats: He is the named inventor of the patents in suit; he is an attorney licensed to practice before the United States Patent and Trademark Office ("PTO") and prosecutes his own patents (including the patents in suit and related continuation patents); he is the owner of Northbrook and a handful of other small entities; he plans to testify both as an expert witness and as a fact witness at trial; and he has entered an appearance as litigation counsel on behalf of Northbrook.
Vendio is a small company that makes software related to internet sales and advertising. Vendio's software product, Dealio, is a "toolbar" that integrates with web browsers such as Microsoft's Internet Explorer and Mozilla's Firefox. Dealio offers end users quick access to sales ("deals") offered by online merchants. Dealio is free for end users; Vendio makes its money from online merchants, who pay Vendio commissions related to ads distributed and sales made through the Dealio software.
Three motions are now pending before the Court: (1) Vendio's motion to dismiss for lack of personal jurisdiction and improper venue or, in the alternative, to transfer [Docket No. 24]; (2) Northbrook's motion to amend or correct its complaint [Docket No. 35]; and (3) Vendio's motion for a protective order [Docket No. 34].1 The Court referred Vendio's dispositive motion (the motion to dismiss or transfer) to Magistrate Judge Jeanne J. Graham for a report and recommendation ("R & R") under Rule 72(b)(1) of the Federal Rules of Civil Procedure. Because the other two motions are nondispositive, they were assigned to Judge Graham to be heard in the first instance pursuant to Rule 72(a). Judge Graham issued a lengthy and careful R & R addressing all three motions on April 4, 2008 [Docket No. 59].
Judge Graham recommends denying Vendio's motion to dismiss or transfer. Vendio has not objected to this recommendation, and the Court therefore adopts it and denies Vendio's motion. Judge Graham also recommends granting Northbrook's motion to amend or correct its complaint. Again, Vendio has not objected to this recommendation, and the Court therefore adopts it and grants Northbrook's motion.
The remaining disputes relate to Vendio's motion for a protective order. Vendio argues that, although Wolfe has entered an appearance as an attorney representing Northbrook, Wolfe should nevertheless be denied access to certain of Vendio's confidential information designated "Confidential—Attorneys' Eyes Only." Vendio also argues that Wolfe's participation as a member of Northbrook's litigation team must be limited in light of the Minnesota Rules of Professional Conduct.
Judge Graham recommends granting Vendio's motion for a protective order and denying Wolfe access to Vendio's confidential documents unless Northbrook can demonstrate that Wolfe needs access to certain documents because he has "specialized knowledge about the patented technology" and his access is "essential to Northbrook's preparation of its case." R & R at 33. Judge Graham also recommends that Northbrook be ordered to show cause why Wolfe should not be disqualified from representing Northbrook under Rule 3.7(a) of the Minnesota Rules of Professional Conduct, which generally forbids a lawyer from "act[ing] as advocate at a trial in which the lawyer is likely to be a necessary witness...." Minn. R. Prof. Conduct 3.7(a); R & R at 35-39.
Northbrook objects in part to the R & R. Pl. Obj. R & R [Docket No. 61]. Northbrook registers its disagreement with Judge Graham's analysis of Rule 3.7(a) but "does not formally object" to that portion of the R & R. Id. at 12 n. 2. Instead, Northbrook has addressed the concerns raised by Judge Graham over the conflict between Wolfe's role as litigation counsel and his role as a trial witness by agreeing to limit Wolfe's activities as litigation counsel. Specifically, Northbrook promises that Wolfe will not serve as Northbrook's trial counsel and "will not act as Northbrook's attorney in any pretrial proceedings, either." Id. at 12. Because the Court will hold Northbrook to its promise, Wolfe will not "act as advocate at a trial," and thus Wolfe's further participation in this litigation will not violate Rule 3.7(a). The Court therefore finds that further briefing on this issue is unnecessary, and the Court declines to adopt the R & R to the extent that it recommends that the Court order Northbrook to show cause why Wolfe should not be disqualified as litigation counsel.
Northbrook does strenuously object to Judge Graham's recommendation that a protective order be entered in this case under which Wolfe would be denied access to Vendio's confidential information designated "Confidential—Attorneys' Eyes Only." The Court agrees with Judge Graham that Wolfe should not have unfettered access to all of Vendio's confidential information. But the Court's reasoning differs somewhat from Judge Graham's, as do the limitations that the Court finds to be appropriate under the circumstances. The Court therefore adopts the R & R only in part, as will be described below.
Before turning to the merits, though, the Court must comment on a troubling aspect of Vendio's response to Northbrook's objection to the R & R. Vendio's first response grossly exceeded the 3,500-word limit set forth in Local Rule 72.2. Because the mistake was inadvertent and because Vendio promptly admitted its error, the Court permitted Vendio to file a substitute response. Order May 6, 2008 [Docket No. 75]. Vendio promptly submitted such a response, and it certified that the response was 3,485 words long, just under the 3,500-word limit of Local Rule 72.2. Cert. Compliance May 7, 2008 [Docket No. 76 Attachment 1].
In fact, though, Vendio violated the spirit, if not the letter, of Local Rule 72.2. Vendio's certificate of compliance affirms that "[p]er the word count feature" of its word-processing program, its memorandum is 3,485 words long. But to reduce the number of words counted by its word-processing program, Vendio hyphenated things that are never hyphenated: Instead of "Docket 59," for instance, Vendio writes "Docket-59"; instead of "Nichols Decl." and "Tautkus Decl.," Vendio writes "Nichols-Decl." and "Tautkus-Decl."; instead of "Northbrook Obj.," Vendio writes "NB-Objection." The first two types of hyphens appear at least nineteen times in Vendio's substitute response. Thus, if Vendio had not manipulated the word-counting feature of its word-processing program through improper hyphenation, Vendio's word-processing program would have counted many more words, and Vendio would have once again violated the word limit imposed by Local Rule 72.2.2
This Court makes plenty of inadvertent errors itself, and thus this Court generally overlooks inadvertent errors, as it did with respect to Vendio's first violation of the rule. Had Vendio confined itself to using improper hyphenation in its substitute response, the Court might again have overlooked Vendio's conduct, even though this time the conduct was almost surely not inadvertent. But Vendio has cheated the word limit not only by using hyphens improperly, but by referring to Judge Graham, at least twenty times, simply as "Graham." The Court commends the practice of referring to parties and witnesses by last name only. See Bryan A. Garner, The Winning Brief 266 (2004) ("Generally, dispense with Mr., Mrs., and Ms.; use last names alone after the first mention of a party's or witness's name.") (emphasis added). But this Court cannot recall reading a motion, brief, or other paper—even from the most hapless of pro se litigants— that referred to a federal magistrate judge by her last name only. No one does this because it is disrespectful to the magistrate judge. Surely one of the six lawyers at the three prestigious firms representing Vendio could have figured out a way to squeeze twenty words from a 3,500-word memorandum without being disrespectful to Judge Graham.
The Court understands that Judge Graham's R & R raises complicated issues, but Northbrook's counsel were able to address those issues in 3,500 words without playing games with hyphens or being disrespectful to Judge Graham. If Northbrook can properly object to an R & R in 3,500 words, then surely Vendio can properly respond to that objection in 3,500 words. Vendio's counsel—who now have two strikes against them—should take great care to comply with both the spirit and letter of this Court's rules in the future.
The only matter before the Court is Judge Graham's recommendation with respect to Vendio's motion for a protective order. Because a motion for a protective order is nondispositive, this Court will modify or set aside those aspects of Judge Graham's R & R relating to the protective order only to the extent that they are "clearly erroneous or ... contrary to law."3 Fed.R.Civ.P. 72(a).
Rule 26(c)(1) of the Federal Rules of Civil Procedure governs protective orders in civil cases and provides: "The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression,...
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