Defendant Ordered to Provide Access to Licensee Websites

November 12, 2014

BNB Health Grades, Inc. ("Health Grades") filed a patent infringement action against MDx Medical, Inc., d/b/a Vitals.com ("MDx"). During the litigation, Health Grades identified licensing agreements and associated systems that it contended could support additional contentions relating to Health Grades' claim for indirect infringement." After MDx declined to produce the additional information, Health Grades filed a motion to compel.

Health Grades argued that MDx has "the right to demand access to the systems or screenshots of the restricted areas." To support this statement, Health Grades quoted from the deposition testimony of MDx's Rule 30(b)(6) designee conceding that MDx can access the information: "[u]pon request by Health Grades' counsel, the MDx corporate representative accessed [a licensee's] site during the lunch break at the deposition in May." As explained by the court, MDx also provided copies of the licensing agreements, which included provisions giving MDx access to the licensees' information, as follows:

As a condition to MDx's obligations hereunder, [licensee] shall at all times: (a) provide MDx with good faith cooperation and access to such information, facilities, and equipment as may be reasonably required by MDx in order to provide the Services, including, but not limited to, providing [licensee] Data; and (b) provide such personnel assistance, as may be reasonably requested by MDx from time to time.

Health Grades also argued that "MDx apparently made no effort to obtain responsive documents, noting that 'MDx has not provided any evidence that any of its licensees have refused a demand for access or screenshots.'"

In responding to the motion, MDx did not dispute that the information was responsive to Health Grades' request for production or that the requested documents were relevant to the subject matter involved in this action. Instead, as explained by the court, "MDx's response is exact, stating only that MDx does not have 'login credentials' or 'access' to the restricted areas. . . . MDx carefully avoids any representations about its ability to obtain login credentials or access, and it does not address its possession of or access to screenshots."

The court then analyzed MDx's obligation to provide the requested information: "A party must produce documents in its "possession, custody, or control." Fed. R. Civ. P. 34(a). '[C]ontrol comprehends not only possession but also the right, authority, or ability to obtain the documents.' Comeau v. Rupp, 810 F. Supp. 1127, 1166 (D. Kan. 1992)."

Based on the evidence provided by Health Grades, the court found "that access to the licensees' restricted areas are within MDx's control." The court also found that the access was relevant to the issues. "The requested access is relevant to the subject matter in suit, responsive to Health Grades' written discovery requests, and in the control of MDx."

Accordingly, the court granted the motion to Compel access.

BNB Health Grades, Inc. v. MDX Medical, Inc., Case No. 11-cv-00520-RM (D. Col. Nov. 3, 2014)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.