Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

ACI Worldwide Corp. v. Churchill Lane Associates, LLC

United States District Court, D. Nebraska

August 20, 2018

ACI WORLDWIDE CORP., Plaintiff,
v.
CHURCHILL LANE ASSOCIATES, LLC, Defendant.

          ORDER

          MICHAEL D. NELSON UNITED STATES MAGISTRATE JUDGE

         This matter is before the Court on the Renewed Motion to Compel Post-Termination Royalty Discovery (Filing No. 205) filed by Defendant and Counter-Plaintiff, Churchill Lane Associates, LLC (“Churchill”). The issues raised by Churchill's renewed motion have been extensively discussed between the parties and the Court. Most recently, the Court held a telephone conference on July 12, 2018, regarding any outstanding issues the parties were unable to resolve after their meet and confer. Prior to the telephone conference, the parties prepared a discovery dispute chart as directed by the Court, attached as Exhibit A to this Order. Churchill also submitted a letter to the Court on June 27, 2018, attached as Exhibit B, requesting clarification of the Court's prior Order, which was also discussed during the July 12, 2018, telephone conference. Upon review of the chart at Exhibit A, and after consideration of the parties' arguments during the telephone conference and briefs and evidence previously submitted with respect to Churchill's first motion to compel (Filing No. 135), the Court makes the following rulings:

         Interrogatory No. 13

         Churchill requests that ACI Worldwide Corp. (“ACI”) “fully answer Interrogatory No. 13 of Churchill's Third Set of Interrogatories by identifying all New Technology customers as of July 21, 2014, including, but not limited to, the group of On Demand customers that ACI identified during the conference with the Court on July 12, 2018, as being withheld from discovery by ACI.”

         The “On Demand” category of customers, as explained by counsel for ACI during the telephone conference, include individuals who have the “option” to use “PRM” (a/k/a “New Technology”) but never exercised the option and therefore were never licensees. Counsel for ACI therefore object to identifying these “On Demand” customers as not being relevant since this group has a “contractual right” to access ACI's database to use the PRM but are not “licensees” under the Licensing Agreement.

         “Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). The scope of permissible discovery is extremely broad. “Discovery requests should be considered relevant if there is any possibility the information sought is relevant to any issue in the case and should ordinarily be allowed, unless it is clear the information sought can have no possible bearing on the subject matter of the action.” Met-Pro Corp. v. Industrial Air Technology, Corp., No. 8:07CV262, 2009 WL 553017, * 3 (D. Neb. March 4, 2009).

         Considering the broad scope of permissible discovery, the Court will compel ACI to identify the “On Demand” category of customers as requested by Churchill. As explained to the Court, these “On Demand” customers paid a fee for the “contractual right” to access ACI's database to use PRM. Although ACI's counsel indicated many of these customers may have never used PRM despite having the contractual right to do so, it is possible that the district judge may ultimately conclude that ACI must pay royalties on fees paid by those customers, regardless of whether ACI and ACI affiliates considered those customers licensees or sublicensees. In identifying such “On Demand” customers, ACI should also disclose whether those customers exercised the option to use PRM.

         Interrogatory No. 14

         Churchill requests that ACI “fully answer Interrogatory No. 14 of Churchill's Third Set of Interrogatories by identifying, for each customer with a sublicense for the New Technology that was granted before and still in effect as of July 21, 2014, the date the customer first licensed the New Technology and the date (if any) the customer stopped licensing the New Technology.” Churchill represents this information cannot be readily determined from ACI's document production.

         ACI responds that it “incorporates its initial objections and answer to Interrogatory No. 14, ” including that the interrogatory is “vague and unduly burdensome because it contains no date limitation.” Based on that objection, ACI further stated that “to the extent this Interrogatory seeks the date when each customer originally sublicensed New Technology or asks about customers who were no longer licensing the New Technology as of July 21, 2014, ACI Worldwide provides no response.” (Filing No. 138-4 at p. 8). ACI answers that “information responsive to these requests is contained in documents which have been produced by ACI Worldwide and are incorporated herein pursuant to Fed. R. Civ. P. 33(d). Specifically, . . . master agreements, attachments, and termination notices containing the requested information.” Churchill denies that the information can be readily determined from ACI's document production.

         To the extent ACI maintains its objections that Churchill's request is vague and burdensome because it does not contain a date limitation, that objection is overruled. Churchill's request is limited to “each customer with a sublicense for the New Technology that was granted before and still in effect as of July 21, 2014[.]” Such request is not vague, nor does ACI provide evidence of its burden to answer that request. The information sought by this interrogatory was deemed relevant by Chief Judge Smith Camp when denying ACI's motion for summary judgment. See Filing No. 182 at p. 18 (denying summary judgment “pending further discovery regarding the sublicenses granted by ACI affiliates before termination of the Licensing Agreement, and the status of ACI's, or its affiliates', current contractual relationship with those customers”).

         To the extent ACI asserts that Churchill can find the information responsive to this interrogatory in ACI's document production, ACI shall be required to identify by Bates number the specific records from which Churchill can ascertain the starting and ending dates that each customer licensed the New Technology. Pursuant to Fed. R. Civ. P. 33(d), “If the answer to an interrogatory may be determined by examining, auditing, compiling, abstracting, or summarizing a party's business records, . . . the responding party may answer by . . . specifying the records that must be reviewed, in sufficient detail to enable the interrogating party to locate and identify them as readily as the responding party could[.]” Fed. R. Civ. P. 33(d). “While Fed. R. Civ. P. 33 permits a party to respond to interrogatories by producing business records, the records must be described in sufficient detail to enable the requesting party to readily identify them.” W. Plains, L.L.C. v. Retzlaff Grain Co. Inc., No. 8:13CV47, 2014 WL 2515198, at *4 (D. Neb. June 3, 2014). Accordingly, ACI shall provide a complete answer to this interrogatory, either by answering in full, or by identifying the specific documents Churchill must review to readily locate the requested information.

         Request for Production Nos. 82, 94, and 95

         Churchill's Request for Production No. 82 requests “Complete copies, including all attachments and exhibits, of all contracts for the license, use and/or maintenance of the New Technology for all ACI customers that were using the New Technology as of June 30, 2014 (in English).” (Filing No. 138-5 at p. 2). The Court previously denied Churchill's motion to compel as to this request, subject to reassertion after it reviewed ACI's supplemental production of relevant master agreements with attachments. Churchill has renewed its motion to compel, requesting complete copies of all contracts for the license of the New Technology for all customers as of June 30, 2014. This request includes “all non-PRM ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.