Vivint, Inc. v. Inc.

Decision Date09 July 2020
Docket NumberCase No. 2:15-cv-392
PartiesVIVINT, INC., Plaintiff, v. ALARM.COM INC., Defendant.
CourtU.S. District Court — District of Utah

District Judge Clark Waddoups

Before the court is's objection to two discovery rulings issued by Magistrate Judge Romero—(1) a ruling granting Vivint's Motion to Compel to produce source code and (2) an order denying's Motion for Protective Order. This court only addresses the first ruling in this order. As explained below, because the Magistrate Judge's Order granting Vivint's Motion to Compel was contrary to law, the court sustains's objection.


David Hutz has "been's Chief Systems Architect since February 2006." (ECF No. 290-4 at 1, Hutz Decl. ¶ 3.) "As part of this role," he is "responsible for the software architecture of's backend services as well as managing the software engineering team.1" (ECF No. 290-4 at 1, Hutz Decl. ¶ 3.)

According to Mr. Hutz, "[i]n 2014, began developing a feature called the 'Aberration Engine' or the 'Insights Engine'." (ECF No. 290-4 at 1, Hutz Decl. ¶ 4.) "TheInsights Engine is a machine learning capability that identifies patterns and responds to unusual activity." (ECF No. 290-4 at 1, Hutz Decl. ¶ 4.)

According to Mr. Hutz, "[b]y March 2016, the Insights Engine was in an advanced stage of development and its functionality was being tested by [him] and others at" (ECF No. 290-4 at 1, Hutz Decl. ¶ 4.)

On April 16, 2016, one of Vivint's attorneys sent one of's attorneys an email in which Vivint requested "production of source code as well as a non-exclusive list of specific modules, functions, and applications." (ECF No. 292-1 at 3.) This email contained a list with sixteen distinct requests. (See ECF No. 292-1 at 3-4.) Six of the sixteen requests referenced's "backend system." (See ECF No. 292-1 at 3-4.) In the eleventh request, Vivint sought:

Code related to the user's ability to create, customize or modify the response by the Backend system in response to events that occur or are detected at a monitored premise, including without limitation, settings for sending or causing mobile notification, emails, or phone calls to devices or individuals in response to tampering, low battery, motion detection, video motion detection, any other conditions or events detectable by

(ECF No. 292-1 at 3 (bold added).)

According to one of's attorneys, "[o]n approximately April 25, 2016, made the source code for its backend services available for inspection by Vivint counsel. The source code made available included the source code for the Aberration Engine (now referred to as the Insights Engine)." (ECF No. 288-1 at 1, Khadpe Decl. ¶ 6.) produced the Aberration Engine—but it is not clear to the court in response to which of Vivint's sixteen requests.

On May 4, 2016, Davit Hutz was deposed. (See Hutz Depo. 4: 1-14; ECF No. 290-3 at 3.) Mr. Hutz testified that he had tested a feature called the "aberration engine" in his house,using his home system. (Hutz Depo. 200: 4-9; ECF No. 290-3 at 4.) The following line of questioning then occurred:

Q. What does it do?
A. Tries to sign the user up for notifications based on historical data rather than their own—rather than them using the UI2 in choosing specific things.
Q. So it basically makes the recommendations on notifications for them?
A. It's one step farther than recommendations. Like, it actually creates the notifications.

(Hutz Depo. 200: 12-21; ECF No. 290-3 at 4.) When asked "[w]hy do you call it the 'aberration engine'?" Mr. Hutz responded: "It's trying to detect unusual activity." (Hutz Depo. 201: 22-25; ECF No. 290-3 at 4.) Mr. Hutz was also asked "when was that feature associated with the aberration engine first offered by" (Hutz Depo. 202: 7-9; ECF No. 290-3 at 5.) Mr. Hutz responded "I'm not sure it's yet available to people." (Hutz Depo. 202: 10-11; ECF No. 290-3 at 5.)

According to Vivint, "Vivint's Final Infringement Contentions . . . were timely served on May 12, 2016 . . . ." (ECF No. 59 at 5.) According to, "Vivint did not mention the Insights Engine (or the 'aberration engine', as it was known internally during development) in its Final Infringement Contentions." (ECF No. 315 at 5.) Vivint does not dispute that it did not mention either the Insights Engine or the Aberration Engine by name in its Final Infringement Contentions.

According to Mr. Hutz, "[o]n September 22, 2016, made the Insights Engine generally available to its dealer partners." (ECF No. 290-4 at 2, Hutz Decl. ¶ 6.) Mr. Hutzcontinues that "[s]ince its release in September 2016, the overall structure of the Insights Engine and its notification functionality has remained the same, though some additional types of events have been made available for the Insights Engine to analyze." (ECF No. 290-4 at 2, Hutz Decl. ¶ 6.)

"On January 3, 2017, publicly announced the release of the Insights Engine." (ECF No. 315 at 5.) That announcement provided, in relevant part:

At CES® 2017 today, . . . launched the Insights Engine, a multisensor learning capability that recognizes and proactively responds to unexpected activity around a property.
The Insights Engine is a proprietary machine learning capability that safeguards homes and businesses by identifying patterns and insights in the growing set of data generated by devices and sensors in a connected property. By learning the unique activity patterns of any home or business, the Insights Engine can respond to unusual activity on behalf of the homeowner by taking action through's broad ecosystem of connected devices.

(ECF No. 288-2 at 2.)

According to, "on July 25, 2017, Vivint served its Amended Final Infringement Contentions . . . but still failed to mention the Insights Engine." (ECF No. 315 at 5 (citations omitted).) states that "[i]t was not until May 13, 2019 . . . that Vivint sought the source code at issue" here. (ECF No. 315 at 5-6.)

On June 23, 2019, Vivint moved "to compel the production of['s] 'Insights Engine' source code under FRCP 26(e) based on Document Request Numbers 2, 8, 34, and 36 and Vivint's source code requests." (ECF No. 292 at 2.) Vivint addressed's position that did not have to produce the source because Vivint had not complied with the District of Utah's Local Patent Rules:

Despite its obligations under Rule 26(e), contends it can withhold all discovery on the 'Insights Engine' because this term does not explicitly appear in Vivint's infringement contentions. But Vivint's infringement contentionssufficiently identify this functionality in substance because they cover triggering notifications to user devices 'depending on the event or condition, including an exception condition,' based on different rules, including time-based triggers.

(ECF No. 292 at 2.) Vivint also argued, in the alternative, that "even if the Insights Engine were not covered by Vivint's infringement contentions . . . must still produce discovery on it because Vivint's contentions 'give notice of a specific theory of infringement' and the Insights Engine 'operates in a manner reasonably similar to that theory.'" (ECF No. 292 at 2 (quoting EPOS Techs. v. Pegasus Techs., 842 F. Supp.2d 31, 33 (D.D.C. 2012)).

On June 28, 2019, filed its Opposition to Vivint's Motion to Compel. (ECF No. 288.) responded that it had produced the "pre-release source code for the Insights Engine in April 2016" and noted that Vivint had questioned Mr. Hutz "about the feature" (ECF No. 288 at 1-2.) argued that because Vivint did not "refer to the Insights Engine in its final infringement contentions," "nor in its revised final infringement contentions," it was required to "move to amend those contentions within 14 days of discovery of the basis." (ECF No. 288 at 2 (citing LPR 3.4).) Vivint did not move to amend within the required time. also argued that "Vivint cannot reopen fact discovery . . . to obtain additional discovery on a feature not covered by its contentions, nor belatedly accuse a feature it knew about for three years." (ECF No. 288 at 2.) argued that "LPR 2.3 explicitly requires that 'each Accused Instrumentality must be identified by name, if known,'" but argued that "neither 'Insights Engine' nor 'Aberration Engine' appears in Vivint's revised final infringement contentions." (ECF No. 288 at 2 (quoting Oracle Am., Inc. v. Google Inc., 2011 WL 4479305, at *2 (N.D. Cal. Sept. 26, 2011).) also argued that "[a] motion by Vivint to amend its contentions would fail to satisfy LPR 3.4's 14-day limitation and the 'good cause' standard, which requires a showing of diligence." (ECF No. 288 at 3 (citing O2 MicroInt'l, Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1367-68 (Fed. Cir. 2006).)

On December 16, 2019, Magistrate Judge Romero heard argument on Vivint's Motion to Compel. (ECF No. 306.) At the hearing, Magistrate Judge Romero had a question "on controlling precedent." (ECF No. 313 at 6; Tr. 6: 8-9.) Magistrate Judge Romero explained that she had "read the cases that" the parties had cited, but noted that she had not seen "anything that is out of the Tenth Circuit and therefore controlling, it would just all sort of be persuasive." (ECF No. 313 at 6; Tr. 6: 9-13.) Magistrate Judge Romero then asked Vivint's counsel "Is that your position as well with respect to the case law that has been cited?" (ECF No. 313 at 6; Tr. 6: 13-14.) Vivint's counsel answered: "I think that's correct, Your Honor." (ECF No. 313 at 6; Tr. 6: 15-16.) Later,'s counsel addressed Magistrate Judge Romero's...

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