United States District Court, D. Delaware
CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE
Princeton Digital Image Corporation ("Plaintiff) has
moved for relief against Defendant Konami Digital
Entertainment Inc. ("Konami US") regarding certain
discovery disputes. (D.I. 227; D.I. 249) The
Court has considered the parties' briefs,
(D.I. 229; D.I. 232; D.I. 253; D.I. 255), and heard argument
on March 14, 2018, (D.I. 278 ("Tr.")).
has two remaining ripe disputes that are directed to Konami
US. (D.I. 243 at 1; D.I. 253 at 1 & n.l) The Court will
address each in turn.
Plaintiffs Request Regarding Communications Between Konami
U.S. and Other Defendants
Plaintiff requests that Konami U.S. produce communications
between it and other Defendants concerning "the
infringement by the Defendants' unrelated accused
products, damages, or other issues where the Defendants'
legal interests are not identical[.]" (D.I. 229 at 3
(citing RFP Nos. 19, 20 & 22)) Konami U.S. has resisted
production by invoking the common interest privilege, (D.I.
232 at 3), which protects: (1) communications made by
separate parties in the course of a matter of common legal
interest; (2) that are designed to further that common legal
interest; where (3) the privilege has not been waived,
INVISTA N. Am. S.a.r.l. v. M&G Corp., Civil
Action No. 11-1007-SLR-CJB, 2013 WL 12171721, at *5 (D. Del.
June 25, 2013). It is Konami US's burden to show that the
privilege has been established. See id.
seem that if there are communications between Defendants
about whether their respective products do or do not infringe
the patent-in-suit and why (and what damages might result),
those communications will very likely be protected by the
common interest privilege. But the briefing on this issue was
not fulsome, and the Court realizes that it really has little
information about: (1) how many such records/communications
are being withheld on this ground of privilege; (2) what
those records/communications look like; and (3) why it is
exactly that those particular records/communications are, in
fact, covered by the privilege. It would not be responsible
for the Court to finally resolve the dispute (and to find
Konami U.S. has met its burden here) without at least
reviewing some such records/communications and satisfying
itself that the privilege in fact applies.
by no later than April 30, 2018, Konami U.S.
shall provide the Court with some indication (e.g., via
privilege log or otherwise) of the scope of the
records/communications that have been withheld on this
ground. The Court will then follow up to request ex
parte review of a representative sample of such
records/communications, in order to determine if Konami U.S.
has met its burden here. Cf. Circle Grp., L.L.C. v. Se.
Carpenters Reg'I Council, l:09-cv-3039- WSD, 2011 WL
13214349, at *5 (N.D.Ga. Apr. 22, 2011).
Documents Relating to the Citation of the Patent-in-suit That
Are In the Physical Possession of Non-party Konami Digital
Entertainment Co., Ltd.
second live Konami US-related dispute regards Plaintiffs
request for documents and communications relating to the
citation of Plaintiff s patent-in-suit (United States Patent
No. 5, 513, 129) by Konami US, its affiliates and their
patent attorneys. (D.I. 229 at 3-4 (citing, inter
alia, RFP No. 11); D.I. 253 at 1-3)
The Parties' Positions
has alleged that during the prosecution of certain United
States patents held by non-party Konami Digital Entertainment
Co., Ltd. ("Konami Japan") (dating from as early as
2001 and through at least April 2004), certain Konami Japan
patent attorneys and Konami Japan employees cited to,
reviewed or were aware of the patent-in-suit. (D.I. 94 at
¶¶ 69-71) Plaintiff expects that the sought-after
documents and communications will provide support for its
claim of Konami US's pre-suit knowledge of the
patent-in-suit (which, in turn, is relevant to Plaintiffs
pending allegations of indirect and willful
US, however, has repeatedly stated that any documents
relating to the prior citation of the patent-in-suit are not
in its physical possession. Instead, it asserts that any such
documents are in the possession of Konami Japan,
which is an affiliate of Konami U.S. (Konami Japan and Konami
U.S. are both subsidiaries of the same parent). (D.I. 232,
ex. 2 at ¶¶ 5, 11)
this discovery dispute turns on whether Konami U.S. should be
required to obtain and turn over such documents (even if they
are in the physical possession of Konami Japan). To obtain an
order requiring such production, Plaintiff would need to show
that these documents are nevertheless under the
"control" of Konami US, pursuant to the meaning of
Federal Rule of Civil Procedure 34(a)(1). Plaintiff asserts
that it has made such a showing, in that it has demonstrated
that "the litigating corporation [Konami US] acted with
its sister [Konami Japan] in effecting the transaction giving
rise to suit and is litigating [this suit] on [Konami
Japan's] behalf[.]" Gerling Int'llns. Co. v.
Comm'r of Internal Revenue, 839 F.2d 131, 141 (3d
Cir. 1988); see also (D.I. 253 at 2).
Court's Prior Order and Additional Facts Now of
Court previously addressed this issue in an August 31, 2016
Memorandum Order (the "August 31 Order"). There it
determined that Plaintiff had not yet met its burden to
demonstrate Konami US's control over documents in the
possession of Konami Japan. (D.I. 176) Since then,
Plaintiffs have added to the record on this control issue.
record now clearly contains the following additional relevant
facts relating to the above-described test for
"control" under Rule 34:
(1) With regard to the Dance Dance Revolution and
Karaoke Revolution games that are relevant to Konami
US's alleged infringement of the patent-in-suit (e.g.,
via Konami US's testing, use, publishing, distribution,
offer for sale and sale of such games), Konami Japan owns the
intellectual property as to those games and it licenses
Konami U.S. to publish and distribute the games in the United
States. Konami U.S. and Konami Japan are subsidiaries of
Konami Corporation, a Japanese company, and are part of that
company's global digital entertainment business system.
(2) Hideki Hayakawa is the Chairman of the Board and one of
two Directors of Konami US. He is also the President, Chief
Operating Officer and a Director of Konami Japan. According
to Konami US, Mr. Hayakawa is not ...