The opinion of the court was delivered by: Howard R. Lloyd United States Magistrate Judge
E-filed September 20, 2011
ORDER RE: DISCOVERY DISPUTE JOINT REPORT NOS. 1 AND 2
[Re: Docket No. 207, 208]
In December 2008, plaintiff Barco, N.V. ("Barco"), a Belgian corporation, filed the instant 19 action against defendants Technology Properties Limited and Alliacense Limited (collectively, 20 "TPL") for declaratory judgment of noninfringement and invalidity of three of TPL's patents.*fn1 Two 21 months later, TPL counterclaimed that Barco infringed its patents. In broad terms, TPL contends 22 that Barco's products contain third-party computer chips that infringe the patents-in-suit, and Barco 23 contends that they do not. Two discovery disputes have now arisen, so, pursuant to this Court's 24 Standing Order re: Civil Discovery Disputes, the parties filed two separate Discovery Dispute Joint 25 Reports seeking judicial intervention. Docket Nos. 207 ("DDJR No. 1"), 208 ("DDJR No. 2"). 26 27 for Production of Documents ("RFP"). See, generally, DDJR No. 1. TPL argues that Barco's 5 responses are insufficient and questions whether Barco conducted the "reasonable inquiry" in 6 response to them that is required by Federal Rule of Civil Procedure 26. DDJR No. 1 at 3-4 (citing 7 Apr. 2, 2010)). Barco essentially responds that it has conducted a "reasonable inquiry" in response 9 to TPL's relevant requests but it also maintains that it need not search for documents in response to 10 requests that are not relevant or for which the search would be unduly burdensome. DDJR No. 1 at 7-10.
A. Discovery Dispute Joint Report No. 1
In the first Joint Report, the parties argue over Barco's responses to five of TPL's Requests Qualcomm, Inc. v. Broadcom Corp., No. 05cv1958-B (BLM), 2010 WL 1336937, at *2 (S.D. Cal. 8 investigation, testing, analysis, or study of the BARCO CHIPS or BARCO PRODUCTS" either "conducted by or on behalf of BARCO in the United States" or "that relate to BARCO's assertion 17 that its products do not infringe any valid claims of the PATENTS-IN-SUIT." DDJR No. 1, Ex. A at United States because testing a patented invention, in some cases, may be an infringing "use" under 1364, 1366 (Fed. Cir. 2001)). Barco objected to these RFPs on several boilerplate grounds (e.g., 22 overly broad; vague and ambiguous; privilege; etc.) and on the ground that RFP No. 76 would 23 require it to produce documents not within its possession, custody, or control. DDJR No. 1, Ex. B at 6. In the parties' Joint Report, however, Barco represents that some of the relevant products are 25 tested within the United States, but some are not. DDJR No. 1 at 11. For those that are, Barco states 26 that it has located and will produce responsive documents. DDJR No. 1 at 11. For those that are not, 27 it states that it will submit a declaration to that effect (and so there are no responsive documents).
DDJR No. 1 at 11. Thus, it appears that Barco has taken steps to fully respond to RFP Nos. 75 and 1. RFP Nos. 75-76
TPL's RFP Nos. 75 and 76 together ask for "[a]ll DOCUMENTS concerning any 4-5. In essence, TPL is trying to determine whether Barco tested the accused products within the 19 35 U.S.C. section 271(a). DDJR No. 1 at 6 (citing Waymark Corp. v. Porta Sys. Corp., 245 F.3d 21 76, as it should. If this is not true, within 21 days, the parties may file a joint letter, not to exceed 3 2 pages, describing any remaining impasse and proposing a possible resolution to it. 3 4
TPL's RFP Nos. 78, 79, and 80 ask for "[a]ll DOCUMENTS concerning block 6 specifications, datasheets, floor plans, user manuals, programming manuals, clock tree, I/O protocol 7 specifications, service manuals, CORE manual, die image, chip packaging information, and timing 8 diagrams for any BARCO chip or BARCO PRODUCT"; "[a]ll system and transistor level 9 schematics, including but not limited to schematics contained in service manuals for each BARCO 10 version (including each paper, magnetic, and electronic version) of all manuals, user guides, white papers, training guide, brochures, instructions for use, specifications and licenses (both express and 13 implied) for each model of BARCO PRODUCT, and their prototypes." DDJR No. 1, Ex. A at 5.
Barco objected to these RFPs on the grounds that they seek irrelevant documents for the broadly-15 defined BARCO PRODUCTS and are not limited to documents related to the third-party computer 16 chips that are actually accused of infringing TPL's patents, that it does not understand what TPL 17 means by certain terms, and that the documents it seeks (basically, chip-level and product-level 18 documents) are much more easily obtained from the chip-makers themselves (who TPL only 19 recently subpoenaed, apparently). 20 otherwise. As TPL notes, its claims specify distinct elements that are found outside of the actual 22 computer chips (e.g., the "off-chip external clock"). See DDJR No. 1 at 5. And, as discussed below, 23 because TPL's infringement contentions are not overly vague and sufficiently identify, at this time, 24 the location of each element within the accused products, Barco cannot refuse to produce responsive 25 documents on this basis. See DDJR No. 1 at 10.
The problem, though, is that TPL believes Barco did not try to look for them very hard. As an initial 28 matter, the court reminds both parties that Rule 26's ...