In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied plaintiff’s motion to compel, pursuant Fed. R. Civ. P. 34(a), defendant Konami Digital Entertainment Inc. (“Konami US”) to produce core technical documents regarding certain accused products that are in the possession of Konami US’s foreign affiliate. Princeton Digital Image Corp. v. Konami Digital Entertainment, Inc., et al., C.A. No. 12-1461-LPS-CJB (D. Del. Aug. 31, 2016). Specifically, plaintiff requested that Konami US be ordered to “supplement its core technical document production . . . to include the technical documents describing the features of each accused game title, including the functional requirements, technical specifications, test plans and other relevant technical documents” by producing records in the possession of Konami US’s non-party sister entity, Konami Digital Entertainment, Ltd. (“Konami Japan”). Id. at 1. Konami US and Konami Japan are owned by a common parent company. Id.
In arguing that Konami US “has control over core technical documents in the possession of Konami Japan,” plaintiff asserted that “[Konami US] had acted with [Konami Japan] in effecting the transaction giving rise to suit and is litigating on its behalf[.]” Id. at 2-3. Judge Burke rejected this argument, observing that plaintiff “has pointed to very little evidence with regard to the relationship between Konami US and Konami Japan.” Id. at 4. Judge Burke further explained that plaintiff “has not offered an articulation as to what it would mean for Konami US, in this patent litigation matter, to have ‘acted with’ Konami Japan to ‘effect’ the relevant ‘transaction[s].’” Id. at 6. Plaintiff also failed to offer “any other information about Konami Japan’s connection to the instant litigation.” Id.
Judge Burke similarly found that “the Court has no basis to conclude that Konami US ‘is litigating on [Konami Japan’s] behalf.’” Id. at 7-8. Judge Burke noted, for example, that “[t]here is no record here of . . . Konami Japan employees directing the course of this litigation or making important strategic decisions in the matter for Konami US.” Id. at 8. Judge Burke further explained as follows: “That Konami Japan has, in at least one instance, made evidence (source code) in its possession accessible to Konami US . . . simply in order to . . . ‘protect its employees from time-consuming work in connection with’ this matter . . . cannot be enough to make this showing under Rule 34(a).” Id.