Free Memorandum - District Court of Arizona - Arizona

1 MICHAEL O. SUTTON Texas State Bar No. 19535300 2 Federal Bar No. 416565441 3 STEVEN S. BOYD Texas State Bar No. 24001775 4 Federal Bar No. 22772 NATHAN C. DUNN 5 Texas State Bar No. 24036509 6 LOCKE LIDDELL & SAPP LLP 600 Travis St., Suite 3400 7 Houston, Texas 77002 Telephone: (713) 226-1200 8 Facsimile: (713) 223-3717 9 Attorneys for Plaintiff, LEXCEL SOLUTIONS, INC 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -1PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL OR ALTERNATIVELY Case 2:03-cv-01454-JAT Document 145 Filed 08/29/2005 FOR ACCESS TO DOCUMENTS PRODUCED IN COMPANION LITIGATION Page 1 of 7

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA PHOENIX DIVISION

LEXCEL SOLUTIONS, INC., an Arizona Corporation Plaintiffs, v.

MASTERCARD INTERNATIONAL, INC. and MASTERCARD INTERNATIONAL, LLC. both Delaware Corporations Defendants.

) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

CIVIL ACTION NO. CV 03-1454 PHX-JAT

PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL DOCUMENTS OR ALTERNATIVELY FOR ACCESS TO DOCUMENTS PRODUCED IN COMPANION LITIGATION JURY DEMANDED

1 2 3 4 5 Motion To Compel Documents or Alternatively Access To Documents Produced In LEXCEL SOLUTIONS, INC. ("LEXCEL" OR "PLAINTIFF"), pursuant to Federal Rule of Civil Procedure 37 and Local Rule 37.1, files this Memorandum in Support of it

6 Companion Litigation and would show the Court as follows. 7 I. 8 9 10 documents for inspection and copying that have been proven to exist and that are covered by 11 12 requests for production and inspection of documents that were served on November 26, 2003, Introduction Lexcel moves the Court for an order compelling MasterCard International, Inc. and MasterCard International, LLC (collectively "MasterCard" or "Defendants") to produce

13 but which have not been produced to date. This action is an action for breach of contract and 14 copyright infringement, among other claims, based on MasterCard's attempts to replace Lexcel 15 as its supplier of certain simulation and testing software. 16 17 18 19 II. Argument Lexcel served requests for production of documents, which sought documents for the The document requests were

narrowly tailored to seek relevant documents to MasterCard's efforts at phasing out Lexcel.

20 purposes of preparation for the trial in this matter. See Lexcel's First Set of Requests for 21 Production, attached as Exhibit 1. On November 26, 2003 Lexcel served its First Set of 22 23 January 23, 2004. This action is an action for breach of contract and copyright infringement, 24 25 among other claims, based on MasterCard's attempts to replace Lexcel as its supplier of Requests for Production and MasterCard served its Responses and Objections to the same on

26 certain simulation and testing software. Two document requests specifically sought documents 27 related to Lexcel's software and MasterCard's alternate software. See Exhibit 1; see also 28 Lexcel's Rule 37.1 Statement accompanying this motion. MasterCard served its responses to -2PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL OR ALTERNATIVELY

Case 2:03-cv-01454-JAT Document 145 Filed 08/29/2005 FOR ACCESS TO DOCUMENTS PRODUCED IN COMPANION LITIGATION Page 2 of 7

1 these discovery requests on January 23, 2004, with general objections but agreed to produce 2 documents subject to those objections. See Exhibit 1. Discovery subsequently closed on 3 4 5 summary judgment motions. Since this time, however, it has come to the attention to counsel August 6, 2004. This case has been on hold pending the outcome of the parties' respective

6 for Lexcel that additional, relevant documents exist and have not been produced. 7 Currently pending in this District is MasterCard International Inc. et al v. Lexcel

8 Solutions, Inc., NO. CV 04-1336-PHX-NVW, which is a patent case based on the same 9 10 litigation as it covers the same software programs, but is a patent infringement action. That 11 12 case is in its discovery phase. As is more full set forth in the Declaration of Victoria Curtin, software at issue in the present litigation. That case is a companion case to the current

13 documents have been produced in the companion case, See Declaration of Victoria Curtin, 14 attached as Exhibit 2. Ms. Victoria Curtin is counsel for Lexcel in this related matter. 15 16 17 18 the other two disks contained over 380,000 MasterCard documents. Id. The documents On April 14, 2005, MasterCard produced three disks containing document production. See Curtin Decl. at ¶ 2. One disk contained documents to claim construction. Id. However,

19 appear to be the individual computer files of many MasterCard employees involved in the 20 creation and maintenance of MasterCard's simulator programs. Id at ¶ 3. These programs 21 include both Lexcel's software and the alternate software developed by MasterCard to 22 23 has reviewed these documents and has determined that contained in this production are 24 25 memos, notices to MasterCard members, and other materials relating to MasterCard's switch supplant Lexcel. Id. The documents are dated from 1998 to the end of 2004. Id. Ms. Curtin

26 to its new simulators, its "retirement of Lexcel's simulators, and its policies regarding 27 limitations on the continued use of Lexcel's simulators by member banks." Id at ¶ 4. To date 28 none of these documents have been produced in the present litigation. Upon learning that -3PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL OR ALTERNATIVELY

Case 2:03-cv-01454-JAT Document 145 Filed 08/29/2005 FOR ACCESS TO DOCUMENTS PRODUCED IN COMPANION LITIGATION Page 3 of 7

1 these documents existed, Lexcel inquired to MasterCard's attorneys about supplementing their 2 production. See Exhibit 3. MasterCard denied this request. Id. 3 4 5 subject matter of the case. Fed. R. Civ. P. 26(b). Information is discoverable if it appears Discovery may be obtained about any matter not privileged that is relevant to the

6 "reasonably calculated to lead to the discovery of admissible evidence." Id. These documents 7 are responsive to at least two proper requests for production and the information is 8 "reasonably calculated to lead to the discovery of admissible evidence." The two requests at 9 10 11 12 13 4. All documents by MasterCard's employees, representatives, agents, owners or principals or on MasterCard's behalf related to Lexcel and/or Lexcel's Simulation and Testing Software. 23. All documents related to the Alternate Software. issue request:

14 See Exhibit 1 and Lexcel's Rule 37.1 statement. Without specifying objections, and instead 15 relying on a reference to all of its general objections, MasterCard agreed to produce 16 17 18 not all of the documents in its possession. However, under F.R.C.P. 26(e)(2) "a party is under documents responsive to these requests. In fact MasterCard has produced documents, but just

19 a duty seasonably to amend a prior response to...[a] request for production." This includes 20 producing newly discovered documents. MasterCard clearly does not deem these documents 21 privileged, as it has produced them in the companion litigation. And as demonstrated by the 22 23 valid requests. The requests and the documents go to the heart of the litigation: MasterCard's 24 25 26 removal of the Lexcel software. Therefore, Lexcel is entitled to an order to compel MasterCard to produce all relevant Declaration of Lexcel's counsel in that matter, these documents are clearly responsive to the

27 documents that it has in its possession, including but not limited to those documents already 28 produced in the companion litigation. If MasterCard chooses not to produce these documents, -4PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL OR ALTERNATIVELY

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1 Lexcel would ask this Court to amend the current protective order to allow Lexcel's counsel in 2 this matter view the documents produced in the companion litigation. 3 4 5 MasterCard has failed to abide by the Federal Rules of Civil Procedure and seasonably III. Conclusion

6 supplement its document production. MasterCard has located documents and produced them 7 in the patent litigation, yet has refused to produce them in this litigation. The documents are 8 responsive to at least two proper requests and they are directly relevant to the issues in this 9 10 these documents or alternatively for access to documents produced in companion litigation. 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -5PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL OR ALTERNATIVELY Case 2:03-cv-01454-JAT Document 145 Filed 08/29/2005 FOR ACCESS TO DOCUMENTS PRODUCED IN COMPANION LITIGATION Page 5 of 7

case. For these reasons, Lexcel asks the Court to enter and order compelling the production of

1 2 3 4 5 6 7 8 9 10 11 12 13 14 Of Counsel: 15 STEVEN S. BOYD 16 Texas State Bar No. 24001775 Federal Bar No. 22772 17 [email protected] NATHAN C. DUNN 18 Texas State Bar No. 24036509 19 [email protected] LOCKE LIDDELL & SAPP LLP 20 600 Travis St., Suite 3400 Houston, Texas 77002 21 Telephone: (713) 226-1200 Facsimile: (713) 223-3717 22 23 24 25 26 27 28 -6PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL OR ALTERNATIVELY Case 2:03-cv-01454-JAT Document 145 Filed 08/29/2005 FOR ACCESS TO DOCUMENTS PRODUCED IN COMPANION LITIGATION Page 6 of 7

Respectfully submitted, Dated: August 29, 2005 LOCKE LIDDELL & SAPP LLP

By: s/ Nathan C. Dunn MICHAEL O. SUTTON Texas State Bar No. 19535300 Federal Bar No. 416565441 [email protected] LOCKE LIDDELL & SAPP LLP 600 Travis St., Suite 3400 Houston, Texas 77002 Telephone: (713) 226-1200 Facsimile: (713) 223-3717 Attorney for Plaintiff Lexcel Solutions, Inc.

1 2 3 CERTIFICATE OF CONFERENCE

On July 27, 2005, I conferenced via email with counsel for Plaintiffs MasterCard International, Inc. and MasterCard International, L.L.C., regarding seeking MasterCard's 4 joining in the filing of this motion. MasterCard opposes this Motion and the correspondence is attached to this memorandum as Exhibit 3. 5 6 7 8 9 10 CERTIFICATE OF SERVICE s/ Michael O. Sutton w/p Nathan C. Dunn Michael O. Sutton

11 Copy of the foregoing was sent via FedEx, return receipt requested, this 29th day of AUGUST, 2005 to: 12 13 VIA FEDEX Sid Leach 14 SNELL & WILMER One Arizona Center 15 400 E. Van Buren 16 Phoenix, AZ 85004-2202 17 VIA FEDEX Thomas Cummings 18 ARMSTRONG TEASDALE LLP 19 One Metropolitan Square, Suite 2600 St Louis, MO 63102-2740 20 ATTORNEYS FOR DEFENDANTS 21 MASTERCARD INTERNATIONAL, INC. AND MASTERCARD INTERNATIONAL, LLC 22 23 24 25 26 27 28 -7PLAINTIFF'S MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL OR ALTERNATIVELY Case 2:03-cv-01454-JAT Document 145 Filed 08/29/2005 FOR ACCESS TO DOCUMENTS PRODUCED IN COMPANION LITIGATION Page 7 of 7

s/ Nathan C. Dunn Nathan C. Dunn