Digital Envoy Inc., v. Google Inc., Doc.

32
Case 5:04-cv-01497-RS Document 32 Filed 08/23/2004 Page 1 of 4

1 DAVID H. KRAMER, State Bar No. 168452

WILSON SONSINI GOODRICH & ROSATI
2 Professional Corporation
650 Page Mill Road
3 Palo Alto, CA 94304-1050
Telephone: (650) 493-9300
4 Facsimile: (650) 565-5100

5 Attorneys for Defendant/Counterclaimant

Google Inc.
6

7 UNITED STATES DISTRICT COURT

8 NORTHERN DISTRICT OF CALIFORNIA

9 SAN JOSE DIVISION

10

11 DIGITAL ENVOY, INC., ) CASE NO.: C 04 01497 RS

)
12 Plaintiff/Counterdefendant, ) GOOGLE INC.’S REPLY IN
) SUPPORT OF MOTION FOR
13 v. ) ENTRY OF A PROTECTIVE
) ORDER STAGING DISCOVERY
14 GOOGLE INC., )
) Judge: Hon. Richard Seeborg
15 Defendant/Counterclaimant. ) Courtroom: 4, 5th Floor
) Date: September 22, 2004
16 ) Time: 9:00 a.m.
)
17

18

19

20

21

22

23

24

25

26

27

28
GOOGLE’S REPLY RE. MOTION FOR ENTRY OF C:\NrPortbl\PALIB1\PBM\2518784_1.DOC
PROTECTIVE ORDER STAGING DISCOVERY
C 04 01497 RS

Dockets.Justia.com
 Case 5:04-cv-01497-RS Document 32 Filed 08/23/2004 Page 2 of 4

1 As the Northern District of Georgia has already made clear, Google’s license defense, if

2 successful, should dispose of Digital Envoy’s claims in this action. Google has thus requested

3 that discovery be staged, and limited, in the first instance, to issues concerning the negotiation

4 and interpretation of the parties’ license agreement. Should Google then prevail on its license

5 defense, the parties will have avoided the substantial cost and disruption of discovery on other

6 issues.

7 Digital Envoy has not offered a legitimate basis for resisting staged discovery

8 proceedings. If anything, it has helped make the case that staging is appropriate, as it admits that

9 absent a staging order, it will immediately seek far-ranging, and potentially unnecessary,

10 discovery concerning most aspects of Google’s business.

11 Digital Envoy has also failed to show any prejudice that it will suffer from having its

12 discovery campaign delayed until it demonstrates that its claims can survive Google’s early

13 summary judgment motion. The closest Digital Envoy comes is to complain about the

14 possibility of having to re-depose certain witnesses. But that is hardly a significant burden.

15 Digital Envoy has asked to depose only two Google witnesses. Digital Envoy’s

16 interrogatory responses mention only these two individuals as having been involved in the

17 formation, drafting and negotiation of the contract between Google and Digital Envoy. If

18 Google prevails on its motion for summary judgment, the question of future depositions of these

19 witnesses on other issues would be moot. And if Google’s motion does not succeed, the burden

20 on Digital Envoy to re-depose the two witnesses would be negligible. In any event, the burden

21 of having to re-depose witnesses is not, by itself, a compelling reason to avoid the potential cost

22 savings of staged discovery. See e.g. Reliance Ins. Co. v. Wilson, No. C 90-20006 JPV, 1990

23 WL 751025, at *2 (N.D. Cal. Oct. 3, 1990) (cited in Google’s opening brief).

24 Separately, Digital Envoy contends that a staging order will lead to disputes over what is

25 a proper subject of discovery in the first stage. But it has identified no flaw with the bright line

26 Google proposed in its motion and reiterated at oral argument. Discovery relating to the

27 negotiation and interpretation of the parties’ license agreement should proceed -- discovery

28
GOOGLE’S REPLY I.S.O. MOTION FOR ENTRY 1 C:\NrPortbl\PALIB1\PBM\2518784_1.DOC
OF PROTECTIVE ORDER STAGING DISCOVERY
C 04 01497 RS
 Case 5:04-cv-01497-RS Document 32 Filed 08/23/2004 Page 3 of 4

1 regarding Google’s use of Digital Envoy’s technology, Digital Envoy’s trade secret and other

2 tort theories, and Digital Envoy’s damages claims should not.

3 CONCLUSION

4 For the reasons set out above, in its opening brief and during oral argument, Google

5 respectfully requests that the Court order staged discovery proceedings in the case, staying all

6 discovery other than that directed to the negotiation and interpretation of the parties’ contract until

7 after the resolution of Google’s motion for summary judgment on its license defense.

9 Respectfully Submitted:

10 Dated: August 23, 2004 WILSON SONSINI GOODRICH & ROSATI

Professional Corporation
11

12
By: /s/ David H. Kramer
13 David H. Kramer

14 Attorneys for Defendant/Counterclaimant

Google Inc.
15

16

17

18

19

20

21

22

23

24

25

26

27

28
GOOGLE’S REPLY I.S.O. MOTION FOR ENTRY 2 C:\NrPortbl\PALIB1\PBM\2518784_1.DOC
OF PROTECTIVE ORDER STAGING DISCOVERY
C 04 01497 RS
 Case 5:04-cv-01497-RS Document 32 Filed 08/23/2004 Page 4 of 4

1 CERTIFICATION
2 I, Stephen C. Holmes, am the ECF User whose identification and password are being

3 used to file Google Inc.’s Reply In Support Of Motion For Entry of A Protective Order Staging

4 Discovery. In compliance with General Order 45 X.B., I hereby attest that David H. Kramer has

5 concurred in this filing.

7 Dated: August 23, 2004 WILSON SONSINI GOODRICH & ROSATI

Professional Corporation
8

9
By: /s/ Stephen C. Holmes
10 Stephen C. Holmes

11 Attorneys for Defendant/Counterclaimant

Google Inc.
12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28
GOOGLE’S REPLY I.S.O. MOTION FOR ENTRY 3 C:\NrPortbl\PALIB1\PBM\2518784_1.DOC
OF PROTECTIVE ORDER STAGING DISCOVERY
C 04 01497 RS