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Gamevice, Inc. v. Nintendo Co., Ltd.

United States District Court, N.D. California

July 2, 2019

GAMEVICE, INC., Plaintiff,
v.
NINTENDO CO., LTD., et al., Defendants.

          ORDER GRANTING IN PART AND DENYING IN PART GAMEVICE'S MOTIONS TO COMPEL RE: DKT. NOS. 66, 67

          THOMAS S. HIXSON UNITED STATES MAGISTRATE JUDGE

         Plaintiff and Counterclaim Defendant Gamevice, Inc. (“Gamevice”) and Defendant and Counterclaimant Nintendo of America, Inc. (“Nintendo”) have filed two joint discovery letter briefs. ECF Nos. 66, 67. The Court held a telephonic hearing on June 27, 2019 and now issues this order.

         A. ECF No. 66

         1.Gamevice's Interrogatory No. 1

         This interrogatory states: “Further to Your disclosure pursuant to Patent Local Rule 3-1(g), provide a claim chart for: (a) the Gameboy Micro, Identifying any and all features and elements of the Gameboy Micro that You contend are covered by each limitation and feature found in claims 1, 4, 8, and 11 of the ‘165 patent; (b) all prototypes and/or mock-ups of the ‘Wii U zapper' that You contend ‘generally correspond with Figs. 15-20 of the ‘514 patent,' Identifying any and all features and elements of such prototypes and/or mock-ups that You contend are covered by each limitation and feature found in one or more asserted claims of the ‘514 Patent; and (c) any other product, prototype and/or mock-up developed, made, and/or sold by You, if any, that You contend are covered by each limitation and feature found in one or more claims of the Counterclaim Patents.”

         Gamevice argues that given its understanding of how Nintendo is reading its claims, it appears that the Wii U Gamepad (without the Wii U zapper mock-up), Nintendo 3DS and Nintendo Switch practice claim 10 of the ‘514 patent. In the joint letter brief, Nintendo clearly states that Nintendo does not contend that the Nintendo 3DS or the Nintendo Switch practice any of the asserted patents. That's a perfectly acceptable response. Interrogatory 1 is, after all, a contention interrogatory that asks Nintendo what it contends. And Nintendo gets to decide what it contends. If Nintendo does not contend that the Nintendo 3DS and Nintendo Switch practice the patents, then information about them is not responsive to this interrogatory and nothing is missing.

         With respect to the Wii U Gamepad, however, Nintendo's response is too cagey. Nintendo does not state one way or the other whether it contends that the Wii U Gamepad practices any of these patents. Nintendo adds that “the parties have a claim-construction dispute over critical limitations that will determine whether or not Nintendo ‘contends' that product practices any of the asserted patents.”

         At the hearing, Nintendo clarified its position. Under Nintendo's own view of what its claims mean, it does believe that the Wii U Gamepad practices the ‘514 patent. But Nintendo views that more as an acknowledgment or an admission, not really a contention that it is making to advance its case. However, Nintendo is interpreting the word “contend” with overly formalistic literalness. Gamevice's interrogatory is asking Nintendo to apply law to fact, and asking Nintendo what it contends is just another way of asking Nintendo what it thinks or believes. The interrogatory is not limited to asking Nintendo only for information that Nintendo thinks is helpful to its case, leaving out information that Nintendo grudgingly admits is true. It is asking for both. Because Nintendo does contend - in this broader sense of the word “contend” - that the Wii U Gamepad practices the ‘514 patent, the Court ORDERS Nintendo to amend its response to this interrogatory to include the responsive information. The Court acknowledges that Judge Seeborg's upcoming claim construction ruling might cause Nintendo to change its views on which of its products practice which patents, but that does not relieve Nintendo of the obligation to answer this interrogatory in the meantime.

         2. Gamevice's Interrogatory No. 4

         In this interrogatory, Gamevice asks: “Separately for each claim of the Counterclaim Patents that NOA contends Gamevice has infringed or is infringing, Identify and Describe in detail all facts and circumstances relating to the earliest making, using, selling, offering for sale, or disclosure of the alleged inventions recited in such asserted claim, including without limitation the first manufacture of the claimed invention, the first use of the claimed invention in the United States, the first public use of the claimed invention in the United States, the first offer for sale of the claimed invention in the United States, the sale of the claimed invention in the United States, the first public disclosure of the claimed invention, and the first disclosure of the claimed invention by a Named Inventor to any other Person. Your response to this Interrogatory should include without limitation the Date on which each such event occurred, the location where each such event occurred, the identity of each Person with knowledge of any of the foregoing, the price of any such offers for sale or sales, and the identities of all Documents (by Bates numbers) relating to any of the foregoing.” Nintendo's response contains objections, five sentences of narrative that provide some of the requested information, and a Rule 33(d) reference to documents. The referenced documents were produced by Nintendo Co., Ltd., Nintendo's Japanese parent company (“Nintendo Japan”). There are more than 400 pages of them, and more than 300 of the pages are in Japanese. The issue the parties raise is what to do with a Rule 33(d) reference to documents in a foreign language.

         Rule 33(d) allows a reference to documents “if the burden of deriving or ascertaining the answer will be substantially the same for either party, ” and the responding party “specif[ies] the records that must be reviewed, in sufficient detail to enable the interrogating party to locate and identify them as readily as the responding party could.” Fed.R.Civ.P. 33(d)(1). There is not much case law on this specific foreign language issue, but the few courts that have addressed it have easily concluded that a Rule 33(d) reference to foreign language documents does not satisfy the requirements of the Rule. See, e.g., Sungjin Fo-Ma, Inc. v. Chainworks, Inc., 2009 WL 2022308, at *4-5 (E.D. Mich. July 8, 2009). The burden of deriving or ascertaining the answer is not the same for Gamevice and Nintendo. Nintendo has its parent company to help it derive the answer from the Japanese language documents, and indeed the parent company was the source of them, whereas Gamevice states it is not able to read them.

         There is another issue, though. This interrogatory is, for the most part, asking for the application of law to fact. Some of what it asks, such as questions about facts and circumstances, prices, locations and identities of people, is factual. But the primary thrust of this interrogatory is about the earliest dates of sale, offer for sale and disclosure on a claim-by-claim basis. This is better known as a contention interrogatory. There is no way Gamevice can look through a stack of documents and discover Nintendo's contentions. Nintendo has to make them.

         To remedy the foreign language problem, courts have come up with two solutions. One, of course, is to order the documents translated. See Nature's Plus Nordic A/S v. Natural Organics, Inc., 274 F.R.D. 437, 441 (E.D.N.Y. 2011) (ordering translation and ordering the parties to split the cost); E&J Gallo Winery v. Cantine Rallo, S.p.A., 2006 WL 3251830, at *5 (E.D. Cal. Nov. 8, 2006) (same, but capping the fraction of the cost borne by the party that served the interrogatory). But another option is to say that the Rule 33(d) reference simply failed - the burden of ascertaining the answer somewhere in the documents is not the same for both sides - so the responding party must answer the interrogatory in the regular narrative fashion. The Court did that in Sungjin, 2009 WL 2022038, at *4-5, where the problem was more than just the foreign language. It was also that the plaintiff simply knew more about its own documents. Even if they were all translated into English, it was too hard for the defendant to figure out which documents related to which subparts of the interrogatories.

         The Court faces an analogous situation here. Even if the documents were all translated into English, how could Gamevice determine from them, for example, whether claim 7 in the ‘806 patent had a different date of first sale from claim 18? That is a legal position, not a factual question. Because of the twin problems that the documents are mostly in Japanese and that this interrogatory seeks the application of law to fact, the Court finds that Nintendo's Rule 33(d) reference ...


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