United States District Court, Northern District of California
MARIA-ELENA JAMES United States Magistrate Judge
Pending before the Court are two Joint Discovery Dispute Letters, filed on October 31, 2014 and November 3, 2014. Dkt. Nos. 128 (“Ital. Lit. Ltr.”) and 131 (“Phys. Embodiments Ltr.”). In the first Joint Letter, Defendant Specialized Bicycle Components, Inc. (“Specialized”) seeks to compel Plaintiff Icon-IP Pty Ltd. (“Icon”) to produce documents relating to Icon’s patent litigation against the Italian corporation Selle Royal. Ital. Lit. Ltr. In the second Joint Letter, Icon seeks to compel Specialized to produce design documents and physical embodiments of each accused saddle model for the years of 2006 to present. Phys. Embodiments Ltr.
On July 23, 2012, Icon filed a complaint against Specialized accusing 33 bicycle saddles of infringing U.S. Patent No. 6, 378, 938 (“the '938 Patent”) and/or U.S. Patent No. 6, 254, 180 (“the ‘180 Patent”), and seeking damages, injunctive and other relief. Dkt. No. 1. Specialized responded to the Complaint on August 14, 2012, denying allegations of infringement and asserting a counterclaim for declaratory judgment of non-infringement and invalidity of the ‘938 and ‘180 Patents. Dkt. No. 10.
In June 2013, Specialized served Icon with a request for all documents related to any enforcement of or litigation involving the Asserted Patents or any Related Patents, and any documents relating to actual or potential prior art raised during such litigations. See, e.g., Ital. Lit. Ltr., Ex. A, Specialized’s First Set of Document Requests Nos. 27, 28, 48, 53, and 54. Icon produced documents referencing its lawsuit against Selle Royal in Italy (“the Italian Litigation”), but did not produce the Italian Litigation documents themselves. Ital. Lit. Ltr. Upon learning of the pending Italian Litigation on August 1, 2014, Specialized immediately propounded a document request applicable to the Italian Litigation Documents. See id., Ex. B, Specialized’s Third Set of Document Requests, No. 84. On August 22, 2014, Icon produced some of these documents, many of them in Italian. Ital. Lit. Ltr. Specialized received them on August 28, 2014. Id.
On October 15, 2014, Specialized notified Icon that it had failed to produce the entire file from the Italian Litigation, specifically substantive documents filed by Icon relating to infringement or invalidity and Icon’s expert reports and claim charts. Id. Specialized now seeks an order requiring Icon to produce all technical reports, opinions, and claim charts relating to the Italian Litigation, including English versions thereof, as well as all things considered by Icon’s expert, Dr. Harrigan. Id.
Icon asserts that it has produced all documents from the Italian Litigation, but Specialized maintains that it has sent these documents to its Italian counsel for verification and thus cannot confirm or deny Icon’s assertion. Id. Icon has also agreed to produce all documents considered by Dr. Harrigan, and attributes any delay to Dr. Harrigan’s back surgery during the week of October 27, 2014. Id. Thus, the only dispute arising from the Italian Litigation Letter appears to be whether Icon is required to produce the Italian Litigation documents in English. Id. As the deadline to file motions to compel in this case has passed, Specialized has filed this motion to preserve its rights should it later deem that production is not complete. Id.
With regard to the design documents and physical embodiments of the accused saddle models, Icon requested documents describing the design and materials of the accused saddles on June 12, 2013, and has propounded an interrogatory requiring Specialized to identify the Bates numbers of the specific documents describing the design for each saddle. See Phys. Embodiments Ltr., Ex. A, Request No. 9 and Ex. B, at Interrogatory 2.
Icon asserts that the physical embodiments of the accused saddles are plainly relevant because Icon’s technical expert requires them to prepare his infringement report. Phys. Embodiments Ltr. As Icon may recover damages for up to six years prior to the filing of its Complaint on July 23, 2012 pursuant to 35 U.S.C. § 286, the accused saddle models and design documents from 2006 to the present are relevant to the present litigation. Id. Though Icon has been able to obtain several of the accused saddles from the internet and from Specialized bicycle dealers, Icon claims that the remaining accused saddles are not available on the public market. Id.
Specialized has produced three physical saddles to date. Id. These saddles are model year 2015 saddles that are currently being manufactured and sold on bikes, and are not available on the website. As to the rest of the accused saddle models, Specialized claims that it does not keep an inventory of seats. However, Specialized has invited Icon to inspect the saddle models it has in its possession at the offices of Specialized’s counsel, and has also offered to sell Icon the saddles in Specialized’s possession if Icon provides Specialized with the SKU number for each desired model. Phys. Embodiments Ltr., Ex. B, Response to Interrogatory No. 2. Specialized maintains that it cannot confirm whether it has models of older saddles in its possession without the SKU numbers.
Specialized also provided Icon with a chart listing various design changes to the accused models within the damages period of this case. Id. Icon interprets this chart as demonstrating that Specialized either “has the older seats in its possession or documents that show these changes, ” which Specialized has not produced. Id. According to Icon, of the documents Specialized has produced, none suggest or demonstrate that structural changes were made to the seats listed in the chart. Id. To the extent that Specialized has any of these documents that show specific designs of accused models from 2006 through the present and has failed to produce them, Icon seeks an order compelling Specialized to do so. Id. Icon also seeks an order compelling Specialized to produce physical models of accused saddles. Id.
As to the design documents, Specialized responded to Icon’s Request for Production of “all CAD drawings, materials lists, specifications, and sales manuals, ” with several objections, including ESI objections. Specifically, Specialized argued that a search of its emails and electronic documents would be costly, “overly burdensome, oppressive, and not reasonably calculated to lead to the discovery of admissible evidence.” Id., Ex. C, Response to Request for Production No. 9. Specialized claims that, subject to its objections, it conducted a reasonable search responsive to Icon’s requests. Phys. Embodiments Ltr. Specialized also states that it did not use CAD or design files for many of its saddles. Id., Ex. D, Bird Depo. at 26:4-33-21. Finally, Specialized points out that the parties signed ...