The opinion of the court was delivered by: Howard R. Lloyd United States Magistrate Judge
ORDER ON DISCOVERY DISPUTE JOINT REPORTS NOs. 1 AND 2 [Dkt. 55, 63]
This case involves the prospective licensing of two patents: U.S. Patent No. 6,452,958 and U.S. Patent No. 6,707,867 ("the Patents"). The Patents are involved in an International Trade 16 Commission ("ITC") investigation that defendants LSI Corporation and Agere Systems LLC ("LSI" 17 or "Defendants") initiated in March 2012. In the Investigation, the Defendants allege that Realtek 18 Semiconductor Corporation ("Plaintiff," or "Realtek") infringes the Patents. In this suit, which was 19 filed three months after the initiation of the investigation, Realtek alleges that Defendants have 20 represented that the Patents are essential to practice the Institute of Electrical and Electronics 21 Engineers ("IEEE") 802.11 standard for wireless communications and that they have agreed to 22 license the patents on reasonable and non-discriminatory ("RAND") terms. Realtek alleges that 23 Defendants breached their commitment to the IEEE by instituting the ITC investigation and by 24 submitting an initial licensing proposal that was notRAND. Realtek seeks relief including, among 25 other things, an order requiring defendants to license the patents to Realtek under RAND terms. 26
Before the Court are two discovery disputes.
1.Discovery Dispute Joint Report No. 1
Defendants to serve supplemental responses to Realtek's Second Set of Interrogatories Nos. 10, 12 3 and 13 and Second Set of Document Requests Nos. 57-59 and 61. In general, the discovery seeks 4 information and documents concerning Defendants' products that are compatible with any standard, 5 including financial information about third-party products that incorporate Defendants' products. 6
Realtek contends that the discovery is relevant to whether Defendants' license proposal complied 8 with their RAND obligations, because Realtek is asking for the type of information that Defendants 9 asked for in their licensing proposal. 10
includes Interrogatory 12, Request for Production ("RFP") 58, and RFP 59. As narrowed by
Realtek, Interrogatory 12 asks Defendants to identify and describe all licenses relating to 13
In Discovery Dispute Joint Report ("DDJR") No. 1, Realtek asks the Court to order Defendants argue that this discovery is irrelevant, overly broad, and unduly burdensome to obtain. 7
Realtek discusses its discovery requests as belonging to three groups. The first group
Defendants' networking products that are compatible with any standard and incorporated into third-14 party products. RFP 58 asks for all licenses for these products. RFP 59 asks for all documents 15
"relating to any inquiries, offers, proposals, or negotiations to license" these products. Defendants 16 state that there are over 1,200 such licenses and that they would have to go through an "extensive 17 notification and approval process whereby each licensee is notified of the intent to disclose the 18 agreement and, if necessary, get approval to do so." The request for documents related to any 19 inquiries, offers, proposals, or negotiations to license these products further compounds the burden 20 of production. Though the Court is not completely convinced by Defendants' burden argument as 21 to each of these discovery requests, the Court is also not convinced that all of the information sought 22 by Plaintiff is relevant. The Court directs Defendants to identify, by name and date, the 23 approximately 1,200 licenses, no later than May 8, 2013. Plaintiff shall then ...