The court held a hearing on April 5, 2012 on two discovery motions. The first motion, filed by plaintiff IconFind, concerns defendant Google's document production and corresponding privilege log. The second motion, filed by defendant Google, concerns the sufficiency of IconFind's infringement contentions. Anna Folgers appeared for plaintiff. Michael Malecek appeared for defendant. Upon review of the joint discovery statements, upon hearing the arguments of counsel and good cause appearing therefor, THE COURT FINDS AS FOLLOWS:
RELEVANT PROCEDURAL BACKGROUND
In this patent case initiated on February 3, 2011, IconFind sues Google for infringement of its patent entitled "Method of Coding, Categorizing, and Retrieving Network Pages and Sites" ("the '459 patent"). IconFind accuses three Google products of infringement: Google Books, Google Picasa and Google Knol. With its answer, Google has filed counterclaims for declaratory judgment of non-infringement and invalidity.
An in-court tutorial is scheduled for June 25, 2012 before the Honorable Garland E. Burrell, Jr. A Claim Construction Hearing is scheduled for July 23, 2012, also before Judge Burrell.
A. Plaintiff IconFind's Discovery Motion
In its discovery motion, IconFind challenges Google's supplemental document production and corresponding privilege log. For the reasons set forth below, the court find this motion to be premature.
a. Initial Production and Privilege Log
On May 17, 2011, IconFind served its first set of interrogatories and requests for production. On June 20, 2011, Google served its responses and objections, and on August 8 and 12, 2011 Google produced documents corresponding to the requests for production. On August 25, 2011, Google produced additional documents and two privilege logs.
On February 13, 2012, counsel for IconFind requested a meet and confer to discuss Google's privilege log. At the February 16, 2012 meet and confer, counsel for Google agreed to investigate the sufficiency of the privilege log. On February 22, 2012, less than a week after the meet and confer, IconFind noticed this matter for hearing.
b. Supplemental Production and Revised Privilege Log
On March 27, 2012, Google provided a revised privilege log. On March 28, 2012, Google provided a supplemental production via FTP. Also on March 28, 2012, Google mailed via Federal Express a disc with the supplemental document production to IconFind.
2. The Parties' Positions
In their joint statement, plaintiff admits that it has not had a chance to review Google's supplemental production and revised privilege log. Therefore, plaintiff's position in the joint statement speaks to Google's initial production of documents and privilege log.
Google argues that in light of its supplemental production and revised privilege log, plaintiff's motion is moot and the filing of the motion was premature. It argues that it has revised the privilege log substantially; whereas the original privilege log contained 479 entries, the revised privilege log contains only 19 entries. Moreover, Google has produced, unredacted, 127 documents that were listed in its original privilege log.
At the April 5, 2012 hearing, counsel for plaintiff stated that, upon a cursory review of the supplemental document production and revised privilege log, issues remain as to the redaction of source code and the withholding of certain documents based on a prosecution bar. It is evident, however, that the parties have not met and conferred regarding ...