Case 2:21-cv-00283-TS-DAO Document 221 Filed 01/09/23 PageID.6642 Page 1 of 7
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`UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
`
`
`
`MEMORANDUM DECISION AND
`ORDER GRANTING PLAINTIFFS’
`SHORT FORM MOTION FOR A
`PROTECTIVE ORDER
`(DOC. NO. 153)
`
`Case No. 2:21-cv-00283
`
`District Judge Ted Stewart
`
`Magistrate Judge Daphne A. Oberg
`
`
`
`EAGLE VIEW TECHNOLOGIES, INC., and
`PICTOMETRY INTERNATIONAL CORP.,
`
`
`Plaintiffs,
`
`
`v.
`
`NEARMAP US, INC.,
`
`
`Defendant.
`
`
`
`In this patent infringement case, Plaintiffs Eagle View Technologies, Inc. and Pictometry
`
`International Corp. (collectively, “EagleView”) move for a protective order to prevent Defendant
`
`Nearmap US, Inc. from deposing EagleView’s CEO, Chris Jurasek, and general counsel, Kim
`
`Nakamaru.1 EagleView argues these depositions are unjustified under Rule 26 of the Federal
`
`Rules of Civil Procedure, the apex doctrine, and the counsel deposition doctrine.2 Nearmap, on
`
`the other hand, contends Mr. Jurasek and Ms. Nakamaru have relevant, personal knowledge
`
`which justifies deposing them.3 The court held a hearing on December 12, 2022.4 Because
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`Nearmap has not demonstrated Mr. Jurasek and Ms. Nakamaru have unique personal knowledge
`
`
`1 (Pls.’ Short Form Disc. Mot. for a Protective Order Precluding Deps. of CEO Chris Jurasek and
`General Counsel Kim Nakamaru (“Mot.”), Doc. No. 153.)
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`2 (See id.)
`
`3 (Def.’s Opp’n, Doc. No. 163.)
`
`4 (See Minute Entry, Doc. No. 187.)
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`
`
`1
`
`
`
`
`UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
`
`
`
`MEMORANDUM DECISION AND
`ORDER GRANTING PLAINTIFFS’
`SHORT FORM MOTION FOR A
`PROTECTIVE ORDER
`(DOC. NO. 153)
`
`Case No. 2:21-cv-00283
`
`District Judge Ted Stewart
`
`Magistrate Judge Daphne A. Oberg
`
`
`
`EAGLE VIEW TECHNOLOGIES, INC., and
`PICTOMETRY INTERNATIONAL CORP.,
`
`
`Plaintiffs,
`
`
`v.
`
`NEARMAP US, INC.,
`
`
`Defendant.
`
`
`
`In this patent infringement case, Plaintiffs Eagle View Technologies, Inc. and Pictometry
`
`International Corp. (collectively, “EagleView”) move for a protective order to prevent Defendant
`
`Nearmap US, Inc. from deposing EagleView’s CEO, Chris Jurasek, and general counsel, Kim
`
`Nakamaru.1 EagleView argues these depositions are unjustified under Rule 26 of the Federal
`
`Rules of Civil Procedure, the apex doctrine, and the counsel deposition doctrine.2 Nearmap, on
`
`the other hand, contends Mr. Jurasek and Ms. Nakamaru have relevant, personal knowledge
`
`which justifies deposing them.3 The court held a hearing on December 12, 2022.4 Because
`
`Nearmap has not demonstrated Mr. Jurasek and Ms. Nakamaru have unique personal knowledge
`
`
`1 (Pls.’ Short Form Disc. Mot. for a Protective Order Precluding Deps. of CEO Chris Jurasek and
`General Counsel Kim Nakamaru (“Mot.”), Doc. No. 153.)
`
`2 (See id.)
`
`3 (Def.’s Opp’n, Doc. No. 163.)
`
`4 (See Minute Entry, Doc. No. 187.)
`
`
`
`1
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`Case 2:21-cv-00283-TS-DAO Document 221 Filed 01/09/23 PageID.6643 Page 2 of 7
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`relevant to the existing claims and defenses, a protective order precluding the depositions is
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`warranted under Rule 26 and the apex doctrine.5 Accordingly, EagleView’s motion is granted.
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`LEGAL STANDARDS
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`Rule 26(c) of the Federal Rules of Civil Procedure permits the court, “for good cause,
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`[to] issue an order to protect a party or person from annoyance, embarrassment, oppression, or
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`undue burden or expense.”6 Under Rule 26(b), the scope of discovery encompasses “any
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`nonprivileged matter that is relevant to any party’s claim or defense and proportional to the
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`needs of the case.”7
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`The apex doctrine allows a court to protect a high-level corporate executive from the
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`burdens of a deposition when any of the following circumstances exist:
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`(1) the executive has no unique personal knowledge of the matter in dispute; (2) the
`information sought from the executive can be obtained from another witness; (3)
`the information sought from the executive can be obtained through an alternative
`discovery method; or (4) sitting for the deposition is a severe hardship for the
`executive in light of his obligations to his company.8
`
`“[T]he party seeking to depose an executive bears an initial burden of making some showing that
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`the executive has unique personal knowledge of some relevant issues.”9 “Upon such a showing,
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`the burden shifts to the executive to demonstrate by evidence that he in fact has no unique
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`5 Because a protective order is warranted on these grounds, the court need not address
`EagleView’s argument regarding the counsel deposition doctrine.
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`6 Fed. R. Civ. P. 26(c)(1).
`
`7 Fed. R. Civ. P. 26(b)(1).
`
`8 Naylor Farms, Inc. v. Anadarko OGC Co., No. 11-cv-01528-REB-KLM, 2011 U.S. Dist.
`LEXIS 68940, at *3 (D. Colo. June 27, 2011) (unpublished).
`
`9 Id. at *4 (internal quotation marks omitted).
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`2
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`Case 2:21-cv-00283-TS-DAO Document 221 Filed 01/09/23 PageID.6644 Page 3 of 7
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`personal knowledge or that there exists one of the other three circumstances under which
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`requiring him to sit for a deposition is inappropriate.”10
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`BACKGROUND
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`EagleView brought this action against Nearmap alleging infringement of eight patents.11
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`EagleView seeks damages, including lost profits, in an amount not less than a reasonable
`
`royalty.12
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`EagleView settled a separate infringement action against Xactware Solutions, Inc. and
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`Verisk Analytics, Inc. (collectively, “Verisk”) involving related patents. Eagle View produced
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`the Verisk settlement agreement to Nearmap in discovery in this case, and the court granted
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`Nearmap’s motion to compel EagleView to produce other documents related to the Verisk
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`settlement, including an “integration agreement” and documentation of settlement negotiations.13
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`The court found these documents relevant to EagleView’s claimed damages in this case,
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`including calculation of a reasonable royalty.14
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`After receiving the settlement agreement and related documents, Nearmap moved to
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`amend its answer to add a patent misuse defense based on the Verisk settlement.15 Nearmap’s
`
`motion to amend remains pending.
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`
`
`10 Id.
`
`11 (Compl. ¶ 2, Doc. No. 2.)
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`12 (Id. at 95.)
`
`13 (Mem. Decision and Order Granting in Part Def.’s Short Form Disc. Mot. Re. Settlement
`Docs., Doc. No. 93.)
`
`14 (Id. at 5.)
`
`15 (Def.’s Mot. for Leave to File First Am. Answer and Countercls., Doc. No. 101.)
`
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`3
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`Case 2:21-cv-00283-TS-DAO Document 221 Filed 01/09/23 PageID.6645 Page 4 of 7
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`ANALYSIS
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`Nearmap seeks to depose Mr. Jurasek and Ms. Nakamaru regarding the Verisk settlement
`
`and related negotiations.16 Nearmap argues this topic is relevant to both Nearmap’s proposed
`
`patent misuse defense and to calculation of damages for EagleView’s existing claims.17
`
`Nearmap asserts Mr. Jurasek and Ms. Nakamaru have unique, personal knowledge regarding this
`
`topic because they each participated in oral negotiations with Verisk representatives leading up
`
`to the settlement.18 Nearmap also contends their names appear on “nearly 500 key documents”19
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`and provided six examples as supporting exhibits.20
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`EagleView argues any claim of relevance to Nearmap’s proposed patent misuse defense
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`is unavailing because the proposed defense is not part of the current pleadings.21 EagleView also
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`contends Nearmap could obtain information regarding the Verisk settlement through other
`
`means, such as a Rule 30(b)(6) deposition, and, therefore, Nearmap has not shown the executives
`
`have “truly unique” knowledge.22 EagleView further argues the depositions will impose severe
`
`hardship on the witnesses given their roles at the company.23
`
`16 (Opp’n 2, Doc. No. 163.)
`
`
`
`17 (Id. at 1–2.)
`
`18 (Id.)
`
`19 (Id. at 2.)
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`20 (Exs. 1–6 to Mot., Doc. Nos. 165-2–165-7 (sealed).)
`
`21 (Mot. 2, Doc. No. 153.)
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`22 (Id. at 2–3.)
`
`23 (Id. at 3.)
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`4
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`Case 2:21-cv-00283-TS-DAO Document 221 Filed 01/09/23 PageID.6646 Page 5 of 7
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`A protective order preventing Mr. Jurasek and Ms. Nakamaru from being deposed is
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`warranted under Rule 26 and the apex doctrine. As an initial matter, Nearmap’s argument that
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`the depositions are relevant to its proposed patent misuse defense fails to establish relevance
`
`under Rule 26(b)(1). Parties “have no entitlement to discovery to develop new claims or
`
`defenses that are not already identified in the pleadings.”24 Discovery must be relevant to
`
`“issues of the present lawsuit as it currently exists” and cannot be used to “explore alternative
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`theories.”25 Because Nearmap’s proposed patent misuse defense is not part of the current
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`pleadings, discovery related to this proposed defense is not permitted under Rule 26.
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`Nearmap also argues the depositions are relevant to the calculation of damages under the
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`current pleadings. But Nearmap has failed to demonstrate Mr. Jurasek and Ms. Nakamaru have
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`unique personal knowledge relevant to this issue.
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`Damages in patent infringement cases are calculated by determining a reasonable
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`royalty.26 Settlement agreements from prior litigation involving the same (or related) patents are
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`relevant to this determination and, therefore, discoverable.27 The underlying settlement
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`negotiations may also be relevant and discoverable where they “could aid defendant in its
`
`
`24 Gatti v. Granger Med. Clinic, P.C., No. 2:19-cv-00028, 2019 U.S. Dist. LEXIS 202299, at *5
`(D. Utah Nov. 20, 2019) (unpublished) (quoting Fed. R. Civ. P. 26(b)(1) advisory committee’s
`note to 2000 amendments).
`
`25 US Magnesium, LLC v. ATI Titanium LLC, No. 2:17-cv-00923, 2020 WL 12847147, at *6 (D.
`Utah May 22, 2020) (unpublished).
`
`26 Modern Font Applications v. Alaska Airlines, No. 2:19-cv-00561, 2021 U.S. Dist. LEXIS
`21563, at *6 (D. Utah Feb. 3, 2021) (unpublished) (citing 35 U.S.C. § 284).
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`27 Id. at *7.
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`5
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`Case 2:21-cv-00283-TS-DAO Document 221 Filed 01/09/23 PageID.6647 Page 6 of 7
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`calculations concerning a reasonable royalty amount and damages.”28 And settlement-related
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`communications may “be key in determining whether the settlement agreements accurately
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`reflect the inventions’ value or were strongly influenced by a desire to avoid or end full
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`litigation.”29 For these reasons, the court previously ordered EagleView to produce
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`documentation of negotiations related to the Verisk settlement to Nearmap, finding these
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`documents relevant to damages. EagleView produced email exchanges between EagleView and
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`Verisk leading to the settlement, including redlined drafts of the settlement agreement.
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`While it is undisputed that Mr. Jurasek and Ms. Nakamaru participated in negotiating the
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`Verisk settlement, there is no indication they have unique personal knowledge relevant to
`
`calculation of a reasonable royalty in this case. Nearmap asserts they each participated in one-
`
`on-one oral conversations with Verisk representatives, which no other witness can testify about.
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`As support for this assertion, Nearmap provided negotiation emails produced by EagleView
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`which reference phone calls and meetings involving these executives.30 But the discussion
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`topics mentioned in the emails do not include valuation of the patents or the settlement amount,
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`and there is no evidence Mr. Jurasek or Ms. Nakamaru have unique knowledge on these topics.
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`Further, EagleView has already produced the final settlement agreement, negotiation emails, and
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`redlined settlement drafts reflecting the consideration and exchanges of value that influenced the
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`settlement amount. Nearmap has failed to demonstrate Mr. Jurasek and Ms. Nakamaru have
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`28 Kajeet, Inc. v. Qustodio, LLC, No. 18-1519-JAK, 2019 U.S. Dist. LEXIS 227979, at *23 (C.D.
`Cal. Oct. 22, 2019) (unpublished).
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`29 Clear with Computers, LLC v. Bergdorf Goodman, Inc., 753 F.Supp.2d 662, 664 (E.D. Tex.
`2010).
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`30 (Exs. 1–6 to Opp’n, Doc. Nos. 165-2–165-7 (sealed).)
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`6
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`Case 2:21-cv-00283-TS-DAO Document 221 Filed 01/09/23 PageID.6648 Page 7 of 7
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`unique knowledge, above and beyond the information in this production, regarding whether the
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`Verisk settlement amount reflects a reasonable royalty.
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`Although Nearmap argues these executives’ names appear on other “key documents” in
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`this case, Nearmap filed no other examples.31 And this assertion, even if true, is insufficient to
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`show the executives have unique personal knowledge of relevant topics which no other witnesses
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`could address.
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`Because Nearmap has not established Mr. Jurasek and Ms. Nakamaru have unique
`
`personal knowledge relevant to the existing claims and defenses, a protective order prohibiting
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`Nearmap from deposing them is warranted under Rule 26 and the apex doctrine.
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`CONCLUSION
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`
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`EagleView’s motion for a protective order to preclude the depositions of Mr. Jurasek and
`
`Ms. Nakamaru is GRANTED.
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`DATED this 9th day of January, 2023.
`
`BY THE COURT:
`
`____________________________
`Daphne A. Oberg
`United States Magistrate Judge
`
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`31 Nearmap provided an additional email at the hearing but did not seek to enter it into the record
`for this motion. Accordingly, it is not addressed here.
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`
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`7
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