United States District Court, S.D. California
ORDER ON JOINT MOTION FOR DETERMINATION OF DISCOVERY DISPUTE REGARDING THE DEFINITION OF "ACCUSED PRODUCTS" IN INTERROGATORY NO. 5 (Dkt. No. 97)
NITA L. STORMES, Magistrate Judge.
I. INTRODUCTION AND FACTUAL BACKGROUND
In this case, Plaintiff Largan Precision Co., Ltd. ("Largan") alleges a patent infringement action against Defendant Samsung Electronics Co., Ltd. et al. ("Samsung"). The technology at issue involves imaging lens products that are used in mobile phone cameras. Currently pending before the Court is the parties' joint motion for determination of discovery dispute regarding a discovery request Largan served on Samsung ("Joint Motion"). (Dkt. No. 97.) The dispute relates to Largan's Interrogatory No. 5, or more specifically, the definition of "Accused Product" provided in conjunction with Interrogatory No. 5. The parties met and conferred yet could not resolve their dispute, so they filed the Joint Motion on March 19, 2015. (Dkt. No. 74.)
II. LEGAL STANDARD
The purpose of discovery is to "remove surprise from trial preparation so the parties can obtain evidence necessary to evaluate and resolve their dispute." U.S. ex rel. O'Connell v. Chapman University, 245 F.R.D. 646, 648 (C.D. Cal. 2007) (internal quotation omitted). Federal Rule of Civil Procedure 26(b)(1) offers guidance as to the scope of discovery permitted in an action:
Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense...Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence.
"Relevance for purposes of discovery is defined very broadly." Garneau v. City of Seattle, 147 F.3d 802, 812 (9th Cir. 1998). However, "[t]he party seeking to compel discovery has the burden of establishing that its request satisfies the relevancy requirements of Rule 26(b)(1). Thereafter, the party opposing discovery has the burden of showing that the discovery should be prohibited, and the burden of clarifying, explaining or supporting its objections." Bryant v. Ochoa, 2009 WL 1390794, at *1 (S.D. Cal. May 14, 2009) (internal citation omitted). District courts have broad discretion when determining relevancy for discovery purposes. See Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). However, this discretion should be balanced with the obligation to interpret the Rules in order to secure a "just, speedy, and inexpensive determination" of the action. Fed.R.Civ.P. 1. This Court has the power to restrict discovery when it is necessary to prevent "annoyance, embarrassment, oppression, or undue burden or expense[.]" Fed.R.Civ.P. 26(c). Likewise, the Court will consider whether "the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues." Fed.R.Civ.P. 26(b)(2)(C)(iii).
Largan's Interrogatory No. 5 asks Samsung to identify certain information- e.g., the model name, product number, supplier, cost, and camera location-for each "Accused Product." (Dkt. No. 97 at 7.) Largan defines "Accused Product" as follows:
[A]ny product that contains at least one camera module with a three or five element imaging lens that Samsung has made, imported, offered to sell, or sold in the United States since August 28, 2007 (for products containing a three element imaging lens, or for products containing both a three element imaging lens and a five element imaging lens) or Aug. 13, 2013 (for products containing a five element imaging lens and no three element imaging lens).
( Id. ) In relevant part, Samsung objected to Interrogatory No. 5 on the ground that it is overbroad, unduly burdensome, and not reasonably calculated to lead to the discovery of admissible evidence "to the extent it is not limited to the accused lens assemblies contained in [the products explicitly mentioned in Largan's infringement contentions.]" ( Id. at 8-9.) Samsung thus limited its initial response to the accused lens assemblies-meaning the lens modules and camera modules containing an accused lens module-within those specifically enumerated products. ( Id. at 10-11.) Samsung supplemented its response during the course of discovery. ( Id. at 11-14, 29.) Largan now moves to compel the production of documents responsive to Interrogatory No. 5, consistent with its definition of "Accused Product."
Largan asserts that the Joint Motion "raises two substantive questions: (1) does discovery extend to reasonably similar' products, or only those specifically named in the infringement contentions; and (2) what constitutes reasonably similar' products." (Dkt. No. 97 at 21.) It claims that both questions have been answered by the Court, such that the Court should order Samsung to "identify all of its products containing three or five lens elements." ( Id. (citing Dkt. No. 83).)
Specifically, Largan cites to two Court Orders for its conclusion. First, Largan claims that in a February 5, 2015 Order, the Court held that "any three or five lens element product that will be announced prior to the close of fact discovery is discoverable." (Dkt. No. 97 at 2 (citing Dkt. No. 83).) Largan has mischaracterized the the Order, which is titled, tellingly, "Order Governing Depositions" (hereinafter "Deposition Order"). The Court agrees with Samsung that the Deposition Order "resolved a specific dispute: when Samsung could instruct deposition witnesses not to answer questions about unreleased products based on privilege." (Dkt. No. 97 at 24.) As Samsung now argues, the Court determined that "Samsung could not invoke trade secret privilege during a deposition to instruct a witness not to answer about three-element or five-element lens modules manufactured by Samsung that are currently under development and would be released by the close of fact discovery." ( Id. (citing Dkt. No. 83 at 1-2).) The Court was not, contrary to Largan's claim, making a wholesale determination of relevance for all products containing three or five lens systems.
Second, and similarly, Largan claims that the Court's February 9, 2015 Order (hereinafter the "Samsung Order") already determined the relevance of all three and five element lens designs. ( Id. at 3, 16 (citing Dkt. No. 84).) In fact, Largan states that "this Court has consistently held that three and five element lenses [sic] designs produced during a relevant time period are relevant for discovery." ( Id. at 16.) Largan takes the Samsung Order completely out of context, and its conclusion is incorrect. The Court there determined that Largan's prior designs with certain specific characteristics were relevant to, at a minimum, Samsung's invalidity defense "because they may lead to prior art directed to three-element and five-element designs as claimed in the patents-in-suit and because they provide background information on the state of the art at the ...