IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
September 20, 2011
TECHNOLOGY PROPERTIES LTD., PATRIOT SCIENTIFIC CORP., AND ALLIACENSE LTD.,
The opinion of the court was delivered by: Howard R. Lloyd United States Magistrate Judge
E-filed September 20, 2011
NOT FOR CITATION
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 "reasonable inquiry" requirement is not to be
2. RFP Nos. 78-80
CHIP, corresponding to each printed circuit board in the BARCO CHIP"; and "[o]ne copy of each Despite Barco's assertion that product-level documents are not relevant, the court thinks Nevertheless, Barco has produced some responsive documents. See DDJR No. 1 at 8-11.
taken lightly. However, the court need not -- and refuses to -- monitor Barco's compliance with this 2 requirement throughout the discovery phase of this case. Specifically, the court will not require, as 3
TPL requests, Barco to submit a certification describing in detail the scope and methods of its search 4 for documents responsive to TPL's RFPs. That said, Barco's argument that it is easier for the chip-5 makers to produce any responsive documents does not mean that it is "unduly burdensome" for 6 "unduly burdensome" for it to search for and produce responsive documents. In other words, if 8 additional responsive chip-level and product-level documents exist (and they may or may not), and 9 if they are within Barco's possession, custody, or control (whether in emails or not), Barco must 10 conduct a reasonable search for them and produce them. Barco shall have 21 days to do so. To the extent that Barco is confused by any of the terms included within TPL's RFPs, the parties are ordered to meet-and-confer about them.
In the second Joint Report, the parties argue over whether TPL should have to amend its infringement contentions ("ICs"). Barco says TPL must amend them; TPL says it does not need to 17 do so. 18 19 Barco argues that TPL's ICs "are simply too vague to show 'specifically where' the accused instrumentality meets the claim limitation." DDJR No. 2 at 2. asserted claim, each accused . . . instrumentality . . . of which the party is aware. This identification 24 shall be as specific as possible. Each product, device, and apparatus shall be identified by name or 25 model number, if known." Patent L.R. 3-1(b). The ICs also must contain "a chart identifying 26 specifically where each limitation of each asserted claim is found within each accused 27 instrumentality." Patent L.R. 3-1(c).
Barco to do so (to the extent they exist). Despite its claim, Barco has not shown that it would be B. Discovery Dispute Joint Report No. 2
1. Barco's Argument that TPL's ICs Are Vague and Insufficient
This District's Patent Local Rules require that a party's ICs contain, "separately for each parties more efficient, to streamline the discovery process, and to articulate with specificity the 3 claims and theory of a plaintiff's infringement claims." Intertrust Techs. Corp. v. Microsoft Corp., No. 01-1640, 2003 U.S. Dist. LEXIS 22736, at *6 (N.D. Cal. Nov. 26, 2003). "Patent L.R. 3-1, 5 more specifically, is a discovery device that 'takes the place of a series of interrogatories that 6 defendants would likely have propounded had the patent local rules not provided for streamlined 7 discovery.'" Bender v. Maxim Integrated Prods., Inc., No. C09-01152 SI, 2010 WL 1135762, at *2 8 VRW, 2002 WL 32126128, at *3-4 (N.D. Cal. Aug. 13, 2002)(hereinafter "NCT I")). Patent L.R. 3-10 irrefutable claim constructions. Network Caching Tech., LLC v. Novell, Inc., No. 01-2079 VRW, 2003 WL 21699799, at *4 (N.D. Cal. Mar. 21, 2003) (hereinafter, "NCT II"). Thus, "[a]t this 13 juncture, a party may comply with Patent L.R. 3-1 by setting forth particular theories of 14 infringement with sufficient specificity to provide defendants with notice of infringement beyond 15 that which is provided by the mere language of the patents themselves." Id.
It makes sense, then, that ICs "are not meant to provide a forum for
litigation of the
substantive issues." Id. at *5. But that is exactly what Barco
appears to be doing. For example, with 18 respect to the '336 Patent,
Barco explains: 19 20
system" that includes a "central processing unit." TPL has accused a
programmable gate array" chip called the Xilinx Virtex-5, of
has pointed out to TPL that, although some Virtex-5 chips include
microprocessors, the one Barco uses does not. TPL's ICs are deficient
respect because they only contain the unsupported statement that "the
contains the Xilinx Virtex-5 microprocessor. This microprocessor is a
integrated circuit." TPL does not even alleged that the purported
includes a central processing unit.
"The overriding principle of the Patent Local Rules is that they are designed [to] make the (N.D. Cal. Mar. 22, 2010) (quoting Network Caching Tech., LLC v. Novell, Inc., No. 01-2079 9 1, however, does not require a party to produce evidence of infringement or to set forth ironclad and All the asserted claims of the '336 [P]atent expressly require "a microprocessor DDJR No. 2 at 3 (internal citations omitted) (emphasis in original). As TPL notes, this is a factual 3 assertion that goes to the merits of TPL's infringement claim. DDJR No. 2 at 9. Indeed, Judge
NCT "failed to provide 'support for the allegation that [Inktomi's] Traffic Server [product] always 6 saves a copy of the requested data.'" NCT II, 2003 WL 21699799, at *5. "These sorts of concerns," 7 he wrote, "are not meant to be resolved all in the context of NCT's [ICs], and the court declines to 8 do so here. Defendants will be afforded shortly the opportunity to press the validity of NCT's 9 construction of its own patent claims and defendants' products." Id.; see also FusionArc, Inc. v. 10 2007) ("While the [Patent Local] Rules are . . . intended to hasten resolution on the merits, they are Walker rejected a similar argument in NCT II, when defendant Inktomi contended that plaintiff 5 Solidus Networks, Inc., No. C06-06760 RMW (RS), 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, not, as [defendant] appears to be attempting to enforce them, a mechanism for resolving the merits 13 of the parties' dispute.") (emphasis in original). 14 Moreover, TPL's ICs are not like those submitted in Bender, as Barco suggests. In that case, 15 the plaintiff's ICs simply repeated for each claim limitation that "[t]his element is located on the 16 integrated circuit contained in the product." See Bender, No. C09-01152, Docket No. 48-1 (N.D. Cal. Feb. 5, 2010). Thus, Judge Illston explained that the plaintiff's ICs "do not actually specific the 18 location of each element within the accused product. Rather, the court is asked to assume that 19 certain elements of the patent are present in the accused product." Bender, 2010 WL 1135762, at * 20
2. Here, TPL's ICs are not so bare. Indeed, it appears that TPL has provided in its ICs all of the 21 information to which it currently has access. See FusionArc, 2007 WL 1052900, at *2 (Defendant's 22 motion to compel amendment of FusionArc's ICs "because FusionArc has adequately established it 23 has provided all of the information in its possession as to how and why it believes [Defendant's] 24 services infringe the [patent-in-suit]."). As such, the court disagrees with Barco's statement that 25
TPL's ICs are "simply too vague." 26 27
2. Barco's Argument that TPL's ICs Rely on Unrelated Material
Barco also argues that TPL's ICs "rely on published articles and chips other than the accused chips to allegedly show the claim elements are found within the accused instrumentalities," and that 3 "[i]n each case, TPL does not and cannot show any relationship between the actual accused products 4 and the material referenced." DDJR No. 2 at 4. 5
Barco is correct that some of TPL's ICs are based on material for other products. For instance, TPL accuses Barco of infringement based on its use of a DDP1011 chip, but it relies upon 7 a presentation about a DDP1000 chip and a datasheet for a CDCDLP223 chip in its ICs. See Docket No. 208-2, Ex. A-8, Pic. 1927. And, in doing so, TPL does not explain how or why information 9 concerning a DDP1000 chip or a CDCDLP223 chip is relevant to its IC for a DDP1011. Perhaps 10 information concerning these other two chips is relevant, or perhaps it is not; from TPL's ICs, the court cannot say. Thus, to the extent that TPL's ICs rely upon information concerning products not at issue in this litigation, TPL must amend its ICs to either provide information concerning the 13 products at issue or explain how and/or why information concerning any products not at issue is 14 relevant to its ICs.
Based on the foregoing, within 21 days from the date of this order:
1. the parties may file a joint letter, not to exceed 3 pages,
describing any remaining impasse
concerning RFP Nos. 75 and 76 and proposing a possible resolution
2. Barco shall search for and produce any documents responsive to RFP Nos. 78-80;
3. TPL shall amend its ICs to either provide information concerning the products at issue or explain how and/or why information concerning any products not at issue is relevant to its ICs.
IT IS SO ORDERED.
C08-05398 Notice will be electronically mailed to: Daniel Joseph O'Connor Daniel.J.Oconnor@Bakernet.com Edward Keith Runyan email@example.com Tod Lawrence Gamlen firstname.lastname@example.org John L. Cooper email@example.com Deepak Gupta firstname.lastname@example.org Eugene Y. Mar email@example.com Jeffrey M. Fisher firstname.lastname@example.org Marc Tarlock MTarlock@fbm.com Nan E. Joesten email@example.com Stephanie Powers Skaff firstname.lastname@example.org Kenneth Harlin Prochnow email@example.com Counsel are responsible for distributing copies of this document to co-counsel who have not registered for e-filing under the court's CM/ECF program.