IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

PERSONALIZED MEDIA
COMMUNICATIONS LLC,
Plaintiff,
C.A. No. 13-1608-RGA
v.

AMAZON.COM INC., eta/.,

Defendants.
SPECIAL MASTER OPINION RE:
PLAINTIFF'S APPLICATION FOR SANCTIONS

I conducted a Special Master hearing in this case on February 9, 2015, at which time I
entertained the then-latest iteration of the plaintiffs request that Amazon be ordered to produce
much more of its source code than it had reluctantly provided beforehand.

The relative

positions of the parties at the time of my hearing had not effectively changed since their hearing
last October with Judge Andrews, whose apparent frustration with their relative mutual
intransigence led to my assignment as Special Master. Following the hearing, I issued an Order
on February 18, 2015 by which I directed the litigants to try the Rule 30(b)(6) deposition route.
It was my proposed solution to, as I put it then, "break open the logjam," to see if information

learned at those depositions would narrow the scope of the plaintiffs search for source code and
consequently induce the defendants to produce information because their resistance based on
relevance and burden might be reasonably overcome.
Consistent with my February 18, 2015 Order, the parties undertook to schedule
depositions of five Amazon source code engineers. However, only two depositions actually
occurred; others were postponed for various reasons. One deposition was canceled when the

defendants produced one of the source code packages, relating to "recommendations service",
that the plaintiff claims it had long been seeking. Then, the plaintiff moved to stay this litigation
pending resolution of inter partes review.
The PTO's acceptance of inter partes review of the subject patents interrupted
scheduling. The motion to stay, which was resisted in pati by Amazon, was to have been heard
by Judge Andrews this month. However, on August 10, 2015, the Couti granted the defendants'
pending motion for judgment on the pleadings, effectively ending the case. Nevertheless, I retain
the authority to rule on plaintiffs motion for sanctions. See, e.g., FRCP 54(d)[ contemplating
motions for fees post-judgment] and FRCP 54(d)(2)(D) [post-judgment, court may refer
attorneys' fees value issue to Special Master].
The plaintiff raised two distinct applications for relief: (i) it wanted sanctions against
Amazon for discovery misconduct, and (ii) it wanted me to once more consider ordering
Amazon to finally deliver source code packages which had still not been produced despite
plaintiffs relentless efforts. In addition to receiving the parties' initial submissions with respect
to these applications, I conducted a telephonic hearing on July 8, 2015. Subsequently, the
parties provided additional written argument and I am now ready to advise them of my rulings.
I will respond first to the request for an order requiring Amazon to produce additional
source code. Before Judge Andrews' recent order granting judgment on the pleadings, I would
have been hard-pressed to reconcile plaintiffs repeated request for additional source code with
the plaintiffs own then-pending motion to stay this litigation. It would have been fairly
presumptuous of me to order production of source code that might never be used in this
litigation. However, any possible presumptuousness has been (dare I say it this political season)
trumped by the judgment in defendants' favor. For purposes of Rule 34 issues and concomitant
2

Rule 37 enforcement features, this case is closed. Consequently, I have no authority to order
source code production, even if I had been inclined to do so, or to order sanctions related to
previous failures to produce source code, 1 and thus plaintiffs application for source code
production is denied. IT IS SO ORDERED.
With respect to sanctions for past discovery misconduct, the issue revolves around the
timing of "recommendations service" source code production. Plaintiff contends that, by waiting
until the evening before the deposition of the recommendations service-informed Amazon
engineer to produce that source code in exchange for eliminating the deposition, the defendants'
actions were sanctionable. Plaintiff characterizes Amazon's conduct in March as "discovery
abuses" manifested by an "exploitation and manipulation of the discovery process," which
behavior was "prejudicial and costly." Plaintiff believes it "should be compensated for Amazon's
prior abuses", and cites Rule 37(a)(5) 2 as the basis for its application for sanctions.
application to Judge Andrews this past year was, effectively, a motion to compel.

Its
Rule

37(a)(5)(A) is available under circumstances where a motion to compel is granted or if the

requested discovery is provided after a motion is filed. No motion to compel with respect to the
production of recommendations service source code has ever been granted. Consequently, it is

That is, other than recommendations service source code, which is the subject of the remainder of this opinion.
Plaintiff asked me to impose collateral sanctions, e.g., expenses related to reviewing the incomplete source code to
identify missing code packages and files, attorney's fees, fees paid to the Special Master, and costs and expenses
associated with source code depositions and hearings. But, except possibly with respect to the reconunendations
service source code issue, which is addressed below, no such expenses are now at issue since the production of
source code per se is moot. The pat1ies' positions relating to relevancy of any source code package other than
recommendations service, positions on which I requested post-hearing submissions, are similarly moot.
2
FRCP 37(a)(5)(A): "If the Motion is Granted ( ... or Discovel)' is Provided After Filing). lf the motion is
granted-or if the ... requested discovery is provided after the motion was filed-the court must, after giving an
opportunity to be heard, require the party ... whose conduct necessitated the motion, the party or attorney advising
that conduct, or both to pay the movant's reasonable expenses incurred in making the motion, including attorney's
fees.~~

only with respect to the second prong of Rule 37(a)(5)(A) that plaintiffs application for
sanctions can be considered.
Plaintiff claims that it initially applied to Judge Andrews for relief relating to
recommendations service source code on September 30, 2014. Amazon contends that plaintiffs
application was never sufficiently defined then; that only the very broadest scope of production
was contemplated. Defendants do agree that they produced the recommendations service code
package many months later in April 2015. Amazon, however, asserts that its delivery of the
recommendation service source code earlier this year was not in response to plaintiffs
September 2014 application to the Court. Rather, it explains the code delivery as a compromise
quid pro quo for the elimination of plaintiffs Rule 30(b)(6) deposition of one of its source code

engineers.

Moreover, Amazon takes the position that it did not, by producing that code

package, withdraw or undermine its assessment that what was produced was not relevant.
Under those circumstances, then, the issue before me is reduced to whether, under Rule
37(a)(5)(A)(ii), the timing of Amazon's recommendations service source code production was
"substantially justified?"3 If so, sanctions are inappropriate.
On this critical issue, plaintiff contends that the produced code was "relevant." Certainly
at least, plaintiffs point has been all along that it is improper for its adversary to unilaterally
characterize various segments of its source code, including recommendations service, as
irrelevant and thus non-discoverable.
Plaintiff correctly observes that, ultimately, such a determination is not for a party to
make. Smith v. Logansport Comm. School Corp., 139 F.R.D. 637, 648 (N.D. Ind. 1991) [ex parte

Rule 37(a)(5)(A)(ii): "But the com1 must not order this payment if: ... (ii) the opposing party's ... response, or
objection was substantially justified."

determinations of relevancy not permitted]; Alexander v. FBI, 186 F.R.D. 54, 59 (D.D.C. 1998).4
Plaintiff believes that documents and items such as source code should generally be discoverable
if their production will lead to the discovery of admissible evidence. FRCP 26(b)(1 ). 5 In
response to FRCP 26(c) concerns, plaintiff posits that the parties' Protective Order serves to
protect Amazon from the revelation of proprietary information to anyone other than those
individuals specifically authorized by the Order to see it. In that sense, then, according to the
plaintiff there should have been nothing preventing the defendants from producing the various
source code segments sought through discovery. Determinations of relevancy would occur, if
necessary, later.
Amazon, on the other hand, does not concede that production of the recommendations
service source code package was inevitable. It stands by the proposition that, not only did it
have no obligation to produce irrelevant code 6, but its production of that code, just before the
deposition of its source code engineer would be exploring that topic, was anything but a
concession of relevancy.
Here, the defendants claim that they produced the recommendations service package
when they did because (1) it was a single source code package, and (2) "unlike PMC's earlier
demands, it could be located and collected without requiring countless hours of engineering
time." Yet, Amazon's justification for withholding what was apparently an easily identifiable,
located and collected source code package was and is that the plaintiff always wanted too much;

The famous "Filegate" case that constituted one of many court-centered distractions during the William J. Clinton
presidency.
5
Rule 26(b)(I) allows discovety regarding non-privileged matter "that is relevant to any party's claim,"
6
Indeed, the defendants explain that in addition to relevancy, they opposed the prodnction of the recommendations

service source code on overbreadth and burdensomeness grounds.

that it never realistically reduced its overbroad sweep of the material it sought. That position
begs the question, though, why a request for production that might have been overbroad and
burdensome for other source code packages did not induce production of reconunendations
service source code under circumstances of easy access and collection?
Amazon answers the question as follows: Until they asked the plaintiff for a delineation
of specific Rule 30(b)(6) topics prior to the depositions, the plaintiff had not designated with any
specificity the topic(s) regarding the recommendations functionality, a pre-deposition exercise
that I ordered on February 18. 7 When the plaintiff finally specified the "Recommendations
Server" package as being the ultimate object of its discovery effort relating to the
recommendations feature of Amazon's website, Amazon was then in a position to refine its
search and produce the single-package subject source code. This explanation, however, does not
completely comport with the pre-revelation status of the reconunendations service source code
package as I understood it on February 9, 2015. As plaintiff points out, Amazon knew what code
plaintiff was looking for. Specifically, there was a dialogue between defense counsel and me on
February 9 during which counsel conceded that he (and thus his client) knew "exactly" what
plaintiff meant by referring, in an exhibit to its January 23, 2015 pre-hearing submission to me,
to "Recommendations Service."8 Indeed, defense counsel also acknowledged that Amazon could
"produce the package identified in" the exhibit, 9 and the production could occur "today". 10
If my analysis took me no further, I think that there would be a plausible basis to find
Special Master Order, Febmary 18, 2015, p. 3, ~2.: "The Amazon witness being deposed must be prepared to
testify on the following topics: ... c. The identity of the source code that implements functionality that PMC contends
is missing fi:om Amazon's source code production. To facilitate Amazon's preparation of its witness(es), PMC shall
identity, at least four (4) days prior to the deposition, the elements of the asserted claims for which it contends it
does not have relevant source code.''
8
2/9115 hearing transcript, p. 37, lines 5-14.
9
2/9/15 hearing transcript, pp. 39{1ine24}-40{1ines 1-9}.
10
2/9/15 hearing transcript, p.42, lines 9-11.
7

sanctionable recalcitrance. However, by putting this issue in context, the existence of substantial
justification becomes clearer. Later on in the transcript of the hearing 11, defense counsel tried to
put the matter in a broader frame of reference. That context reflected both prior source code
production (which the defendants believed provided sufficient information to allow plaintiff to
try to confirm its infringement contentions) and, as well, a reasonable framework within which
the plaintiff, by taking the depositions of knowledgeable Amazon source code engineers
(including one or more with recommendations service background), could discover all it needed
to know. Significantly, defendants' offer of a source code engineer's deposition had been made
months earlier, at the October 2, 2014 discovery dispute hearing with the Court. l 0/2/14 hearing
transcript, pp.22-24.
Certainly, I thought that the availability of source code engineers' depositions occurring
fairly promptly might do what defense counsel predicted, so I adopted that suggestion in my
February 18 Order. In other words, for purposes of the application that I am presently
considering, allowing the mandated depositions to take place within a few weeks could possibly
generate a resolution to the previously-intractable positions of the litigants. At least with respect
to recommendations service, that process worked. That there was a further delay of a few weeks
between the February 9 concession of an immediately-available package and Amazon's quid pro
quo arrangement in lieu of the recommendations service engineer's deposition, does not by itself

lead me to impose a sanction, especially in light of plaintiffs previous decision not to take any
source code engineers' depositions.
Previously, the litigants had been at loggerheads over what should be produced in
discovery, the bookends to the dynamic being plaintiffs insistence on getting as much of the
11

2/9/15

hearing transcript, p. 46, Jines 2-17.

7

defendants' source code as possible on one end, and defendants' determination to only produce
relevant code on the other. Both sides then made concessions which resulted in the delivery of
the "Recommendations Server package". 12 Thus, the plaintiff accomplished what I had hoped
would occur when I ordered the Amazon engineers' depositions. At least for recommendations
service, it got what it really wanted all along.
Whether plaintiff failed to comply with my February 18, 2015 order in terms of timely
specifying topics for Rule 30(b)(6) inquiry, or whether Amazon knew enough to agree to
production in January or February instead of March, are ultimately not the fulcrum events for
this opinion. Rather, when put into the perspective of a late arriving but prospectively evolving
approach to discovery of source code, I find that Amazon's production of the recommendation
service source code package in April 2015 was substantially justified.

Accordingly, the

sanctions potential of Rule 37(a)(5)(A) is not worthy of invocation under these circumstances.
Plaintiff's application for discovery abuse sanctions is denied. IT IS SO ORDERED.

Special Master
Dated: August 20, 2015

12

It is difficult to reconcile Amazon's position, that it wasn't until the evening before the source code engineer's
anticipated deposition in March that it finally understood exactly what plaintiff was seeking, with this quoted
specific reference on plaintiff's January 23, 2015 pre-hearing submission exhibit. On the other hand, plaintiffs
assertion, that all it wanted in terms of recommendations service source code is reflected on the exhibit presented at
the February 9 hearing, is belied by the actual language on the exhibit: "For example ... [3 Internet sites
listed) ... Other services may also be missing." (emphasis added)