Flowrider Surf, Ltd. et al v. Pacific Surf Designs, Inc., No. 3:2015cv01879 - Document 97 (S.D. Cal. 2016)

Court Description: ORDER Granting in Part and Denying in Part Plaintiff's 77 Motion to Compel Defendant's Discovery Responses. Signed by Magistrate Judge Barbara Lynn Major on 11/3/2016. (knb)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 FLOWRIDER SURF, LTD., et al., Case No.: 15cv1879-BEN (BLM) Plaintiffs, 12 13 v. 14 ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS’ MOTION TO COMPEL DEFENDANT’S DISCOVERY RESPONSES PACIFIC SURF DESIGNS, INC., 15 16 [ECF No. 77]. Defendant. AND RELATED COUNTERCLAIMS 17 18 19 Currently before the Court is Plaintiffs’ September 9, 2016 “Motion to Compel 20 Defendant’s Discovery Responses” [ECF No. 77 (“Mot.”)], Defendant’s September 16, 2016 21 opposition to the motion [ECF No. 84 (“Oppo.”)], and Plaintiffs’ September 23, 2016 reply [ECF 22 No. 92 (“Reply”)]. Having considered the briefing submitted by the parties and having reviewed 23 1 15cv1879-BEN (BLM) 1 all of the supporting exhibits, the Court GRANTS IN PART and DENIES IN PART Plaintiffs’ 2 motion for the reasons set forth below. 3 FACTUAL AND PROCEDURAL BACKGROUND 4 On August 24, 2015, Plaintiffs FlowRider Surf Ltd. (“FlowRider”) and Surf Waves, Ltd. 5 (“Surf Waves”) filed this suit against Defendant Pacific Surf Designs (“PSD”) for patent 6 infringement. ECF No. 1. FlowRider is the exclusive global licensee of U.S. Patent No. 6,491,589 7 (the “‘589 Patent”) entitled “Mobile Water Ride Having Sluice Slide-Over Cover,” issued on 8 December 10, 2002. Id. at 3. The ‘589 Patent is “generally directed to a simulated wave water 9 ride attraction having one or more water covers for ensuring the safety of riders and lowering 10 the risk of injury or interference with ride operation.” Id. Plaintiff Surf Waves owns the U.S. 11 Patent No. 8,088,016 (the “‘016 Patent”), entitled “Half-Pipe Water Ride,” issued on January 3, 12 2012. Id. The ‘016 Patent is “generally directed to a half-pipe water ride including a substantially 13 flat middle section, a first curved sidewall, and a second curved sidewall opposite to the first 14 curved sidewall.” Id. 15 Defendant competes with Plaintiffs in the waterpark rides industry. Plaintiffs accuse 16 Defendant PSD of making and selling infringing waterpark rides. Specifically, Plaintiffs assert 17 that Defendant “makes, has made, imports, uses, offers for sale and/or sells products that 18 infringe one or more claims” of the patents-in-suit, including “ProFlow Single,” “ProFlow Double,” 19 “ProFlow Triple,” “ProFlow Quad,” “ProFlow Mini Single,” “ProFlow Mini Double,” “ProFlow 20 Quarterpipe,” “ProFlow Halfpipe,” “Supertube,” and PSD’s unnamed refurbishment of surfing 21 rides (the “Accused Products.”). Id. at 4. On October 22, 2015, Defendant counter-claimed 22 denying infringement of the ‘589 Patent and ‘016 Patent, and alleging that both patents are 23 invalid. ECF No. 13 at 8-10. 2 15cv1879-BEN (BLM) 1 On December 21, 2015, Plaintiffs1 propounded their first set of interrogatories and 2 requests for production (“RFPs”). ECF No. 77-1, Declaration of Shaun A. Hoting (“Hoting Decl.”) 3 at 2; id., Exhs. A-B. Plaintiffs claim that Defendant’s initial and supplemental responses consisted 4 of boilerplate objections and lacked substance. Mot. at 8-9. Plaintiffs filed the instant motion 5 asking the Court to compel the production of information regarding Defendant’s foreign sales 6 (RFP Nos. 44-45 and Interrogatory Nos. 2-3), refurbishment of surf rides (RFP Nos. 21, 44-45 7 and Interrogatory Nos. 2-3), and patent applications (RFP No. 41 and Interrogatory No. 9). Id. 8 at 13-23. 9 LEGAL STANDARD The scope of discovery under the Federal Rules of Civil Procedure is defined as follows: 10 Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable. 11 12 13 14 15 Fed. R. Civ. P. 26(b)(1). 16 District courts have broad discretion to determine relevancy for discovery purposes. See 17 Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). District courts also have broad discretion 18 to limit discovery to prevent its abuse. See Fed. R. Civ. P. 26(b)(2) (instructing that courts must 19 limit discovery where the party seeking the discovery “has had ample opportunity to obtain the 20 21 22 23 1 FlowRider and Surf Waves are wholly owned subsidiaries of Whitewater West Industries, Ltd. (“Whitewater”). See ECF No. 88 at 1. Although Plaintiffs’ motion to compel states that Whitewater is the entity that propounded discovery, for clarity, the Court will refer to “Whitewater” as “Plaintiffs.” 3 15cv1879-BEN (BLM) 1 information by discovery in the action” or where the proposed discovery is “unreasonably 2 cumulative or duplicative,” “obtain[able] from some other source that is more convenient, less 3 burdensome, or less expensive,” or where it “is outside the scope permitted by Rule 26(b)(1)”). 4 A party may request the production of any document within the scope of Rule 26(b). 5 Fed. R. Civ. P. 34(a). “For each item or category, the response must either state that inspection 6 and related activities will be permitted as requested or state with specificity the grounds for 7 objecting to the request, including the reasons.” Id. at 34(b)(2)(B). The responding party is 8 responsible for all items in “the responding party’s possession, custody, or control.” Id. at 9 34(a)(1). Actual possession, custody or control is not required. Rather, “[a] party may be 10 ordered to produce a document in the possession of a non-party entity if that party has a legal 11 right to obtain the document or has control over the entity who is in possession of the 12 document.” Soto v. City of Concord, 162 F.R.D. 603, 619 (N.D. Cal. 1995). 13 An interrogatory may relate to any matter that may be inquired under Rule 26(b). Fed. 14 R. Civ. P. 33(a)(2). “The grounds for objecting to an interrogatory must be stated with 15 specificity,” and any interrogatory not objected to must be answered fully in writing under oath. 16 Fed. R. Civ. P. 33(b)(4). 17 Pursuant to Federal Rule of Civil Procedure 37, “a party may move for an order compelling 18 disclosure or discovery.” Fed. R. Civ. P. 37(a)(1). The party seeking to compel discovery has 19 the burden of establishing that its request satisfies the relevance requirement of Rule 26. Soto, 20 162 F.R.D. at 610. Thereafter, the party opposing discovery has the burden of showing that the 21 discovery should be prohibited, and the burden of “clarifying, explaining, and supporting its 22 objections.” DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002) (citing Blankenship 23 v. Hearst Corp., 519 F.2d 418, 429 (9th Cir. 1975)). 4 15cv1879-BEN (BLM) 1 2 DISCUSSION I. Foreign Sales (RFP Nos. 44-45 and Interrogatory Nos. 2-3) 3 Plaintiffs seek to compel information regarding Defendant’s foreign sales, sought in RFP 4 Nos. 44-45 and Interrogatory Nos. 2-3. See Mot. at 7, 13-15. Plaintiffs argue that the requested 5 information is relevant to Defendant’s infringement because under 35 U.S.C. § 271(a), offers 6 made within the United States to sell an infringing product to an overseas buyer constitutes 7 direct infringement. Id. at 13-14. Plaintiffs further argue that 35 U.S.C. § 271(f) imposes liability 8 for supplying a patented invention’s components from the United States, even if the patented 9 product is made and sold in another country. Id. at 14. Plaintiffs also contend that the requested 10 information is relevant to determine a reasonable royalty and to rebut a prima facie showing of 11 obviousness. Id. at 15. 12 Defendant argues in its opposition that Plaintiffs ignore the territorial limits of patent law 13 because “[a]n ‘offer to sell’ made within the United States that contemplates a ‘sale’ of goods 14 outside of the United States is not within the permissible scope of liability for 35 U.S.C. § 271(a).” 15 Oppo. at 5 (citing Cybiotronics, Ltd. v. Golden Source Elecs., Ltd., 130 F. Supp. 2d 1152, 1171 16 (C.D. Cal. 2001) (emphasis in original)). Defendant asserts that Plaintiffs’ allegations are limited 17 to direct infringement under 35 U.S.C. § 271(a), that Plaintiffs have not alleged infringement 18 under 35 U.S.C. § 271(f) in their complaint and infringement contentions, and that therefore 19 Plaintiffs cannot seek discovery regarding infringement theories they have not raised. Id. at 5, 20 10-11. Defendant also maintains that because Plaintiffs’ patented products are at issue, its sales 21 are not relevant to secondary considerations of non-obviousness, and that Plaintiffs already 22 possess information concerning its U.S. sales. Id. at 11-12. Defendant thus asks the Court to 23 5 15cv1879-BEN (BLM) 1 deny Plaintiffs’ motion to compel documents and information concerning its foreign sales. Id. 2 at 12. 3 In their reply, Plaintiffs argue that 35 U.S.C. § 271(f) creates liability for foreign sales and 4 that information concerning those sales is relevant. Reply at 3. Plaintiffs maintain that their 5 complaint contains allegations regarding Defendant’s potential liability for indirect infringement 6 of the Asserted Patents, and argue that their infringement claims are not limited to direct liability 7 under 25 U.S.C. § 271(a). Id. at 2-4. Plaintiffs further allege that depending on the nature of 8 Defendant’s foreign sales activity, such sales could also be found to infringe the Accused Patents 9 under 35 U.S.C. § 271(a), because offers made within the U.S. to sell an infringing product to 10 an overseas buyer could constitute direct infringement. Id. at 2, 4 (citing CLS Bank Int’l v. Alice 11 Corp. Pty., 667 F. Supp. 2d 29, 37 (D.D.C. 2009)). Finally, Plaintiffs reassert their argument 12 that Defendant’s foreign sales are relevant to determining a reasonable royalty and rebutting a 13 showing of obviousness. Id. at 6-7. 14 a. Applicable Law 15 35 U.S.C. § 271(a) provides in relevant part that “whoever without authority makes, uses, 16 offers to sell, or sells any patented invention, within the United States or imports into the United 17 States any patented invention during the term of the patent therefore, infringes the patent.” 35 18 U.S.C. § 271(a). “It is the general rule under United States patent law that no infringement 19 occurs when a patented product is made and sold in another country,” and “[t]he presumption 20 that United States law governs domestically but does not rule the world applies with particular 21 force in patent law.” Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 441, 454-55 (2007); see 22 also Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1371 (Fed. 23 Cir. 2013) (“It is axiomatic that U.S. patent law does not operate extraterritorially to prohibit 6 15cv1879-BEN (BLM) 1 infringement abroad.”). However, 35 U.S.C. § 271(f)(1) provides an exception to the general 2 rule that no infringement occurs when a patented product is made and sold in another country 3 by providing the following: 4 5 6 7 8 9 10 11 12 (1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. (2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. 35 U.S.C. § 271(f)(1). 13 United States patent laws “do not [ ] provide compensation for a defendant’s foreign 14 exploitation of a patented invention, which is not infringement at all.” Power Integrations, Inc. 15 v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1371 (Fed. Cir. 2013). “Patent infringement 16 damages . . . must compensate only for the consequences of domestic activities.” Oracle Am., 17 Inc. v. Google Inc., 798 F. Supp. 2d 1111, 1118 (N.D. Cal. 2011). 18 Commercial success is a “secondary consideration” relevant to the obviousness or non- 19 obviousness of the patent, because “the law presumes an idea would successfully have been 20 brought to market sooner, in response to market forces, had the idea been obvious to persons 21 skilled in the art.” Murata Mfg. Co., Ltd. v. Bell Fuse, Inc., 422 F. Supp. 2d 934, 936 n.1 (citing 22 Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966) and Merck & Co., Inc. v. 23 Teva Pharmaceuticals USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005)). 7 15cv1879-BEN (BLM) 1 2 3 4 The theory underlying the doctrine is that an invention enjoys commercial success because a need for the invention existed. From the existence of this need and the readily available rewards, courts have been urged to conclude that a plaintiff’s invention must be patentable, since the need would have been filled by others, at a much earlier date, if the solution was obvious. Put another way, courts are urged to conclude that an invention which enjoys commercial success is nonobvious for, if the invention were obvious to make, it would have been discovered and exploited in the marketplace, long before plaintiff came along. 5 6 Murata Manufacturing Co., Ltd., 422 F. Supp. 2d at 936 n.1 (citation omitted). As a limit on 7 evidence of commercial success, a nexus is required between the merits of the patented 8 invention and the evidence offered. In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). This 9 nexus ensures that evidence of commercial success is attributable to the inventions of the claims 10 at issue, and not to “extraneous factors such as advertising and marketing,” or to the features 11 outside the claim. Id. 12 b. Analysis 13 RFP No. 44 seeks “[a]ll invoices, bills of lading, order forms, or purchase orders for 14 Accused Product sold by PSD between December 10, 2002 to the present date.” Hoting Decl., 15 Exh. A at 15. Defendant responded that the request was overbroad, not proportional to the 16 needs of the case and unduly burdensome, and that it would “produce non-privileged and 17 non-work product invoices and purchase orders for sales of the Accused Products in the U.S. 18 dating back to August 24, 2009, to the extent such documents exist and are in [its] possession, 19 custody, or control.” Id., Exh. C at 63. 20 Plaintiffs’ RFP No. 45 requests: 21 All Documents constituting, referring or relating to the purchase, sale, and/or distribution of the Accused Products, including, without limitation, sales and return records, accounting and financial records, product pricing information, customer lists, purchase orders, advertising, website pages, and marketing materials from December 10, 2002 to present. 22 23 8 15cv1879-BEN (BLM) 1 Id., Exh. A at 15-16. Defendant asserted the same objection as it did to RFP No. 44 and 2 stated that it would “produce non-privileged and non-work product sales documents showing 3 revenues, U.S. sales, profits, costs, and expenses for the Accused Products dating back to 4 August 24, 2009, to the extent such documents exist and are in [its] procession, custody, or 5 control.” Id., Exh. C at 64. 6 Interrogatory No. 2 requests the following: 7 Identify and describe each and every Accused Product (past and present, chronologically, by name, model and serial number, if applicable), including without limitation each PSD surfing or other attraction having curved sidewalls or a cover associated with a fluid emitting element, that has been made, imported, sold, used, manufactured, or offered for sale by PSD between December 10, 2002, to the present date. In providing an answer to this Interrogatory, list the number of units sold of each Accused Product, and identify each and every Person or entity PSD sold or offered for sale an Accused Product, and identify any other products sold in conjunction with any of the Accused Products. 8 9 10 11 12 13 Id., Exh. B at 27-28. Defendant objected in its initial and supplemental responses that the 14 interrogatory was vague, ambiguous, compound, premature, sought information protected by 15 the attorney-client privilege or the work product doctrine, and attempted to improperly shift 16 Plaintiffs’ burden of proof to Defendant. Id., Exh. D at 84-85; Exh. E at 110-11. Defendant 17 also objected that the interrogatory was overbroad and unduly burdensome because it sought 18 information about products that had not been accused of infringement, and products that 19 were “neither made, imported, sold, used, manufactured, nor offered for sale in the United 20 States.” Id., Exh. D at 84-85; Exh. E at 111. Defendant further stated that: 21 22 23 [t]he installation of a Mahaka Double product was completed by approximately November 10, 2014 at The Barracks in College Station, Texas pursuant to an agreement dated December 18, 2013 between Pacific Surf Designs, Inc. and HMH Aquatic Enterprises, LLC. No other Accused Products have been sold or installed within the United States. 9 15cv1879-BEN (BLM) 1 Id., Exh. D at 85; Exh. E at 111. In its subsequent supplemental responses to the 2 interrogatory, Defendant identified certain bates numbered documents and stated that the 3 answers to non-objectionable portions of the interrogatory could be determined from those 4 documents. Id., Exh. F at 15 (filed under seal); Exh. G at 14-16 (filed under seal). 5 Interrogatory No. 3 seeks the following: 6 For each Accused Product identified and/or described in response to “INTERROGATORY NO. 2:” as having been sold or offered for sale by PSD, identify and describe the full and complete sales detail information for the Accused Products, including but not limited to: 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 (a) the date each Accused Product was first offered for sale or sold and last offered for sale or sold; (b) the historic retail sales price of each Accused Product; (c) the date of any contract covering such sale or offer for sale; (d) the name, principal contact Person(s), address, and telephone number of each customer to whom you sold or offered to sell each Accused Product; (e) the name of the PSD Persons involved in and the circumstances surrounding the supplying, advertising, marketing, and sales of the Accused Products[;] (f) the date and purchase order number of each purchase order from that customer made pursuant to the contract; (g) the date(s) of each shipment of the Accused Products to that customer and the number of units shipped on each shipment date; (h) the total number of units of Accused Products sold or offered for sale by PSD; (i) the total dollar revenues for such sales; (j) the average price per unit charged for such sales; (k) PSD’s income and expenses attributable to its sales of the Accused Products; and (l) the gross profit and net incremental profit for each sale. In providing an answer to this Interrogatory, with respect to the revenue, gross profit, and net incremental profit information, describe in detail how these were calculated, including without limitation the fixed and variable costs of manufacturing and selling each Accused Product and the type and manner of each calculation of each deduction used to arrive at net profits. 22 23 10 15cv1879-BEN (BLM) 1 Id., Exh. B at 28-29. Defendant objected in its original and supplemental responses that that 2 the interrogatory was vague and ambiguous, compound, overboard, unduly burdensome, and 3 sought information not proportional to the needs of the case. Id., Exh. D at 86-87; Exh. E at 4 112-13. Defendant further stated that: 5 7 [t]he installation of a Mahaka Double product was completed by approximately November 10, 2014 at The Barracks in College Station, Texas pursuant to an agreement dated December 18, 2013 between Pacific Surf Designs, Inc. and HMH Aquatic Enterprises, LLC. No other Accused Products have been sold or installed within the United States. 8 Id., Exh. D at 87; Exh. E at 113. In its supplemental responses to the interrogatory, Defendant 9 identified certain bates numbered documents and alleged that the answers to non- 10 objectionable portions of the interrogatory can be determined from those documents. Id., 11 Exh. F at 18 (filed under seal); Exh. G at 18 (filed under seal). 6 12 In this motion to compel, Plaintiffs assert that Defendant produced only two documents 13 relating to its two sales in the U.S., but “no documents relating to any foreign sales or offers 14 for sale of the Accused Products.” 15 (“Costantini Decl.”) at 2. The Court initially notes that Defendant provides no facts indicating 16 what it construes as “foreign sales” and how it interprets “offers to sell.” See Oppo; see also 17 Shah Decl. Section 271(a) provides that “whoever without authority makes, uses, offers to 18 sell, or sells any patented invention, within the United States . . . infringes the patent.” 35 19 U.S.C. § 271(a) (emphasis added). An “offer to sell” is to be interpreted by resorting to 20 traditional contract analysis of what constitutes a commercial offer for sale. Rotec Indus., 21 Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1254-55 (Fed. Cir. 2000). An “offer to sell” requires 22 an “offer,” whereby a party “communicate[s] a manifestation of willingness to enter into a ECF No. 77-2, Declaration of Leanna C. Costantini 23 11 15cv1879-BEN (BLM) 1 bargain, so made as to justify another person in understanding that his assent to that bargain 2 is invited and will conclude it.” MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 3 420 F.3d 1369, 1376 (Fed. Cir. 2005) (quotation omitted) (finding that an e-mail which 4 described the accused product without price terms could not be construed as an offer to sell). 5 The alleged offer must also contemplate a commercial transaction that rises to the level of a 6 “sale” of the patented invention that would infringe the patent. See Cybiotronics, Ltd. v. 7 Golden Source Electronics Ltd., 130 F. Supp. 2d 1152, 1170 (C.D. Cal. 2001) (“[L]iability under 8 Section 271(a) does not extend to ‘offers to sell’ which do not contemplate actual ‘sales’ of 9 goods to be consummated within the United States.”). 10 “It is well-established that the reach of section 271(a) is limited to infringing activities 11 that occur within the United States.” MEMC Elec. Materials, Inc., 420 F.3d at 1375 (emphasis 12 added). The Federal Circuit’s recent opinions indicate that the location analysis for “offer for 13 sale” should look to the location of the future sale that would occur pursuant to that offer. 14 See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 15 1296, 1309-10 (Fed. Cir. 2010); Halo Elec., Inc. v. Pulse Elec., Inc., 831 F.3d 1369 (Fed. Cir. 16 2016). In Transocean Offshore Deepwater Drilling, Inc., the court stated that “[t]he focus 17 should not be on the location of the offer, but rather the location of the future sale that would 18 occur pursuant to the offer.” Id., 617 F.3d at 1309. The court held that a “contract between 19 two U.S. companies for performance in the U.S. may constitute an offer to sell within 20 § 271(a),” and noted that the “fact that the offer was negotiated or a contract signed while 21 the two U.S. companies were aboard does not remove the case from statutory liability.” Id. 22 at 1310. In Halo Elec., Inc., 831 F.3d at 1380, the court held that the alleged contract 23 12 15cv1879-BEN (BLM) 1 negotiations in the U.S. regarding a product made and delivered outside of the U.S. was not 2 an offer for sale within the United States. Id. The court reasoned as follows: We adopt the reasoning of Transocean and conclude here that Pulse did not directly infringe the Halo patents under the “offer to sell” provision by offering to sell in the United States the products at issue, because the locations of the contemplated sales were outside the United States. Cisco outsourced all of its manufacturing activities to foreign countries, and it is undisputed that the locations of the contemplated sales were outside the United States. Likewise, with respect to other Pulse customers, there is no evidence that the products at issue were contemplated to be sold within the United States. 3 4 5 6 7 An offer to sell, in order to be an infringement, must be an offer contemplating sale in the United States. Otherwise, the presumption against extraterritoriality would be breached. If a sale outside the United States is not an infringement of a U.S. patent, an offer to sell, even if made in the United States, when the sale would occur outside the United States, similarly would not be an infringement of a U.S. patent. We therefore hold that Pulse did not offer to sell the products at issue within the United States for purposes of § 271(a). 8 9 10 11 12 Id. 13 Further, a “sale” within the meaning of 35 U.S.C. § 271(a) is “not limited to the transfer 14 of tangible property; a sale may also be the agreement by which such a transfer takes place.” 15 Transocean Offshore Deepwater Drilling, 617 F.3d at 1311. The court in Transocean Offshore 16 Deepwater Drilling held that a contract between two U.S. companies for the sale of the 17 patented invention with delivery and performance in the U.S. constituted a “sale” under 35 18 U.S.C. § 271(a). Id. 19 The Court therefore finds that Defendant does not have to provide discovery regarding 20 its foreign sales and offers to sell that result in foreign sales as those phrases are interpreted 21 by the Federal Circuit in Transocean Offshore Deepwater Drilling, Inc., 617 F.3d at 1309-11 22 and Halo Elec., Inc., 831 F.3d at 1380. If any of Defendant’s sales or offers to sell do not 23 13 15cv1879-BEN (BLM) 1 constitute foreign sales as interpreted by the Federal Circuit in the cited cases, then Defendant 2 must provide supplemental responses as to any such sales.2 As previously noted, Defendant 3 has not provided any evidence establishing how it is defining foreign sales and offers to sell. 4 Accordingly, Plaintiffs may conduct focused discovery to determine whether the sales and 5 offers to sell that Defendant is labeling as foreign sales constitute foreign sales under the 6 applicable law set forth in this order. 7 Defendant also asserts that Plaintiffs’ allegations are limited to direct infringement 8 under 35 U.S.C. § 271(a), that Plaintiffs have not alleged infringement under 35 U.S.C. § 9 271(f) in their complaint and infringement contentions, and that therefore Plaintiffs cannot 10 seek discovery regarding infringement theories that they have not raised. Oppo. at 5, 10-11. 11 Plaintiffs’ complaint alleges the following: 12 Plaintiffs are informed and believe that Defendant has and continues to infringe, contributory infringe, and/or induce infringement of one or more of the Patentsin-Suit by knowingly and actively (making, having made, importing, using, offering for sale and/or selling products that infringe one or more claims of the Patent-in-Suit, including, but not limited to the Accused Products, (2) inducing others to do the same, and (3) contributing to the manufacture, import, use sale, or offer for sale of products that infringe one or more claims of the Patentsin-Suit. 13 14 15 16 17 18 19 20 21 22 23 2 The Court notes that Plaintiffs’ RFP Nos. 44-45 and Interrogatory No. 3 seek documents and information dating back to December 10, 2002. See Hoting Decl., Exh A at 15-16, Exh. B at 2728. Defendant objected to RFP Nos. 44-45 and Interrogatory No. 3 stating, inter alia, that they were overly broad and unduly burdensome because they sought financial documents dating back more than six years prior to the filing date of this action. Exh. C at 63-64; D at 85. With respect to RFP Nos. 44-45, Defendant offered to produce certain responsive documents dating back to August 24, 2009. Id., Exh. C at 63-64. Neither party raised the issue of the temporal scope of the above discovery requests in their briefs. See Mot.; Oppo.; Reply. The Court therefore uses the date suggested by Defendant and implicitly accepted by Plaintiffs, and limits the temporal scope of the above requests to the time period beginning on August 24, 2009. 14 15cv1879-BEN (BLM) 1 ECF No. 1 at 5, see also id. at 6-7. Plaintiffs’ infringement contentions specifically reserve the 2 right to amend or supplement. ECF No. 70-4, Exh. A at 3, 6-8. Plaintiffs contentions also 3 state that “[t]o the extent it is later learned in discovery that Defendant has induced other 4 entities or individuals or otherwise contributed to the infringement by other entities or 5 individuals by selling, ordering to sell, and/or importing material components of the asserted 6 claims that have no substantial non-infringing uses, Plaintiffs reserve the right to contend that 7 Defendant indirectly infringes those asserted claims.” Id. at 5. As such, Plaintiffs have alleged 8 not only direct infringement under 35 U.S.C. § 271(a), but also indirect infringement in 9 violation of other provisions of 35 U.S.C. § 271, and infringement involving component sales 10 in violation of 35 U.S.C. § 271(f). See id.; ECF No.1; see also Reply at 3-4; Microsoft Corp., 11 550 U.S. at 449 (“Section 271(f) applies to the supply abroad of the “components of a patented 12 invention, where such components are uncombined in whole or in part, in such manner as to 13 actively induce the combination of such components.”) (emphasis in original). The Court 14 therefore finds that, under the discovery standard set forth in Rule 26(b), Defendant must 15 provide supplemental responses regarding component sales that are relevant to Plaintiffs’ 16 allegations of violations of 35 U.S.C. § 271(f). 17 II. 18 Nos. 21, 44-45 and Interrogatory Nos. 2-3) Information Relating to Defendant’s Refurbishment of Surf Rides (RFP 19 Plaintiffs move to compel documents and information relating to Defendant’s 20 refurbishment of surf rides, in response to RFP Nos. 21, 44-45 and Interrogatory Nos. 2-3. 21 Mot. at 15-20. In support, Plaintiffs argue that Defendant’s surf ride refurbishments are an 22 accused product in this case, and that Defendant is potentially liable for direct or contributory 23 15 15cv1879-BEN (BLM) 1 infringement based on Flow Services Inc.’s (“Flow Services”)3 refurbishments. See id. at 16- 2 17. Plaintiffs assert that the bounds of discovery are not circumscribed by their infringement 3 contentions, and that they have alleged in their complaint that Defendant’s infringement 4 conduct included not only direct, but also indirect4 infringement. Id. at 16. Plaintiffs also 5 claim that Defendant and Flow Services appear to be “in all material respects the same entity” 6 because both companies were founded by Defendant’s CEO Yong Yeh and share the same 7 business address, and that, consequently, Flow Services’ direct infringement should be 8 imputed to Defendant. See id. at 17 (citing Hoting Decl. at 5; id., Exhs. P-R). 9 Defendant alleges in its opposition that Plaintiffs are improperly seeking refurbishment 10 documents that are maintained by a third party, Flow Services. Oppo. at 5. Defendant asserts 11 that because Flow Services has not been named as a defendant and has not been subpoenaed, 12 Plaintiffs cannot use this motion to compel “as an end-run around” the Court’s Patent Local 13 Rules. See id. at 6, 12-13. Defendant further alleges that Flow Services claims on its website 14 that it is responsible for refurbishment services, and that despite this publicly available 15 information, Plaintiffs have not alleged in their infringement contentions that Flow Services 16 infringed any claims, and/or that Defendant induced Flow Services to infringe any claims. Id. 17 at 12-13 (citing Exh. 5). Defendant also argues that Plaintiffs have not alleged an alter ego 18 theory sufficient to pierce the corporate veil and are improperly seeking to impose vicarious 19 liability upon Defendant for alleged actions of Flow Services. Id. at 6, 13. 20 21 22 23 Plaintiffs contend that Flow Services is the company through which Defendant refurbishes surf rides. Id. at 16. 3 4 Plaintiffs reference their complaint allegations that Defendant was “inducing others to do the same” and “contributing to the manufacture, import, use, sale, or offer for sale of products that infringe one or more claims of the Patents-in-Suit.” Id. (citing ECF No. 1 at 5). 16 15cv1879-BEN (BLM) 1 Plaintiffs reply that Defendant’s surf ride refurbishments are an accused product in this 2 case and that Defendant fails to justify withholding information regarding the refurbishments. 3 Reply at 2. 4 Defendant’s liability, and that because Defendant does not argue that it lacks possession, 5 custody, or control over Flow Services’ sales information, the Court should compel the 6 production of documents and information relating to the refurbishment activities, regardless 7 of whether the contracting party for those sales was Defendant or Flow Services. Id. at 2, 7- 8 10. Plaintiffs also claim that it is unclear whether Defendant is alleging that none of its 9 refurbishment activities are subject to disclosure or whether it is withholding information 10 regarding Flow Services’ refurbishment activities only, and argue that both positions lack 11 merit. 12 refurbishment contracts it entered into directly. Id. Plaintiffs further assert that Defendant is 13 required to produce responsive information in its “possession, custody, or control” pursuant 14 to Fed. R. Civ. P. 34, and that Defendant owns and controls Flow Services because both 15 companies were founded by Defendant’s CEO Yong Yeh and share the same business address. 16 Id. at 9; Hoting Decl., Exhs. P-R. Finally, Plaintiffs allege that if discovery establishes that 17 Defendant and Flow Services are separate entities, they will amend their complaint to add 18 Flow Services as a party; and if discovery establishes that Flow Services is a shell company 19 through which Defendant refurbished surf rides, such amendment is not necessary. Reply at 20 9. Plaintiffs claim that the surf ride refurbishments at issue are relevant to Id. at 8. Plaintiffs maintain that Defendant should be compelled to produce 21 22 23 17 15cv1879-BEN (BLM) 1 a. Applicable Law 2 With regard to discovery requests, the responding party is responsible for all items in 3 “the responding party’s possession, custody, or control.” Fed. R. Civ. P. 34(a)(1). “A party 4 may be ordered to produce a document in the possession of a non-party entity if that party 5 has a legal right to obtain the document or has control over the entity who is in possession of 6 the document.” Soto v. City of Concord, 162 F.R.D. 603, 619 (N.D. Cal. 1995); see also Bryant 7 v. Armstrong, 285 F.R.D. 596, 603 (S.D. Cal. 2012) (stating that the term “control” is broadly 8 construed, and includes documents that the responding party has the legal right to obtain 9 from third parties); In re Citric Acid Litig., 191 F.3d 1090, 1107 (9th Cir. 1999) (“Control is 10 defined as the legal right to obtain documents upon demand.”). “Common relationships 11 between a party and its related nonparty entity are particularly important to the determination 12 of control . . . [and] include the ownership of the nonparty, any overlap of directors, officers, 13 and employees, and the financial relationship between the two entities.” Stella Sys., LLC v. 14 MedeAnalytics, Inc., 2015 WL 1870052, at *3 (N.D. Cal. Apr. 22, 2015) (quoting Steele 15 Software Sys., Corp. v. DataQuick Info. Sys., Inc., 237 F.R.D. 561, 564 (D. Md. 2006)). In 16 determining whether a responding party has the requisite control within the meaning of 17 Rule 34, courts have considered the corporate structure of the party and nonparty, the 18 nonparty’s connection to the transaction at issue in the litigation, the degree that the nonparty 19 will benefit from the outcome of the case, whether the related entities exchange documents 20 in the ordinary course of business, and whether the nonparty has participated in the litigation 21 at issue. See id. The party seeking production of the documents bears the burden of proving 22 that the opposing party has control. Quintero–Perez v. U.S., 2016 WL 705904, at *2 (S.D. 23 18 15cv1879-BEN (BLM) 1 Cal. Feb. 23, 2016) (citing U.S. v. Int’l Union of Petroleum and Indus. Workers, AFL-CIO, 870 2 F.2d 1450, 1452 (9th Cir. 1989)). 3 b. Analysis 4 Plaintiffs’ Interrogatory Nos. 2 & 3, RFP Nos. 44-45, and Defendant’s responses to those 5 interrogatories and requests are discussed in detail supra, Section I. The remaining request 6 at issue, Plaintiffs’ RFP No. 21, seeks “[a]ll Documents relating to Flow Services and the 7 relationship between PSD and Flow Services.” Hoting Decl., Exh. A at 11. Defendant objected 8 that the interrogatory was vague, ambiguous, overboard, unduly burdensome, sought 9 documents protected by the attorney-client privilege or work product doctrine, was not 10 proportional to the needs of the case, and refused to produce any responsive documents. Id., 11 Exh. C at 48. 12 As discussed above, Plaintiffs allege in their complaint direct and contributory 13 infringement by Defendant. See ECF No. 1 at 5-7. Because Plaintiffs claim that Defendant’s 14 surf ride refurbishments are an accused product in this case [see id. at 4-5], such 15 refurbishments are relevant to Defendant’s alleged liability for direct and/or contributory 16 infringement. Accordingly, Defendant is ORDERED to produce responsive documents and 17 information regarding its surf ride refurbishments, including refurbishment contracts it directly 18 entered into with third parties, subject to the Court’s guidance provided supra in Section I. 19 Turning to responsive refurbishment documents and information maintained by 20 nonparty Flow Services, Plaintiffs, as the party seeking production, bear the burden of proving 21 that Defendant has control over the requested documents and information. See Int’l Union 22 of Petroleum and Indus. Workers, AFL-CIO, 870 F.2d at 1452 (providing that “[t]he party 23 19 15cv1879-BEN (BLM) 1 seeking production of the documents . . . bears the burden of proving that the opposing party 2 has such control.”). Based on the evidence before the Court, Plaintiffs have not met this 3 burden. Although Defendant’s CEO founded Defendant and Flow Services and both companies 4 share the same business address, such factors, without more, are insufficient to establish the 5 requisite control. See Stella Sys., LLC, 2015 WL 1870052, at *3; Steele Software Sys. Corp., 6 237 F.R.D. at 564. The Court thus DENIES WITHOUT PREJUDICE Plaintiffs’ motion to 7 compel the production of documents and information regarding Flow Services’ surf ride 8 refurbishments maintained by nonparty Flow Services. 9 However, Plaintiffs are entitled to conduct discovery to determine the relationship 10 between Defendant and Flow Services. The Court finds Plaintiffs’ request in RFP No. 21 for 11 “all documents relating to Flow Services” overbroad and not proportional to the needs for the 12 case. See Fed. R. Civ. P. 26(b)(1). Accordingly, the Court GRANTS IN PART Plaintiffs’ 13 motion to compel further production in response to RFP No. 21 and ORDERS Defendant to 14 provide documents relating to “the relationship between PSD and Flow Services.” Plaintiffs 15 also may conduct additional discovery designed to determine whether Defendant has 16 possession, custody and control over the refurbishment documents created and maintained 17 by Flow Services. 18 III. Pending Patent Applications (RFP No. 41 and Interrogatory No. 9) 19 Plaintiffs ask the Court to compel Defendant to produce information relating to its 20 pending patent applications. Mot. at 7-8, 20-23. Plaintiffs argue that Defendant’s pending 21 patent applications are relevant to infringement, invalidity, claim construction, willfulness, 22 prior art, and equivalency. Id. at 7-8. Plaintiffs claim that the requested information is 23 20 15cv1879-BEN (BLM) 1 relevant because Defendant’s products, the ProFlow line and the Supertube, are alleged to 2 infringe the Asserted Patents, and because Defendant advertises the products as practicing 3 its issued or pending patents.5 Id. at 20 (citing Hoting Decl. at 6; id., Exhs. V-W). Plaintiffs 4 also assert that Defendant’s opinions about whether the Accused Products are covered by 5 such products are not privileged. See Mot. at 23 (citing Fed. R. Civ. P. 33(a)(2) (“[A]n 6 interrogatory is not objectionable merely because it asks for an opinion or contention that 7 relates to fact or the application of law to fact.”); Notes of Advisory Committee on Rules (1970) 8 Amendment to Subdivision (b) (“As to requests for opinions or contentions that call for the 9 application of law to fact, they can be most useful in narrowing and sharpening the issues, 10 which is a major purpose of discovery.”)). Plaintiffs further assert that Defendant’s 11 confidentiality objections are waived, because Defendant did not raise them in its responses, 12 and that the parties’ Protective Order adequately addresses Defendant’s confidentiality 13 concerns. Id. at 7-8, 21-22. 14 Defendant argues that Plaintiffs’ request for pending, unpublished patent applications 15 is overbroad and seeks irrelevant information, because such applications are not related to 16 the asserted patents and are not directed to the two types of products it manufactures. See 17 Oppo. at 14-15. Defendant alleges that companies routinely seek patent protection on 18 19 20 21 22 23 5 Plaintiffs allege that the requested information will help them “[u]nderstand[] how [Defendant] uses terms and technology with respect to its patents in comparison to its statements and characterizations of the exact same products accused of infringement in this case.” Id. at 2021. Plaintiffs also argue that because Defendant identified in its invalidity contentions prior art that it contends renders the Asserted Patents invalid, “[t]o the extent that any such prior art is mentioned in [Defendant’s] patent applications for the accused products, how [Defendant] characterizes them is highly relevant to the scope of the prior art–particularly if such admissions contradict [Defendant’s] statements in this case.” Id. at 21. 21 15cv1879-BEN (BLM) 1 products that they “anticipate are coming to market” or believe to be novel, and that, 2 consequently, such patent applications are not always relevant. See id. at 14. Defendant 3 contends that it offered to produce unpublished, pending patent applications that “cite or 4 discuss either of the [A]sserted [P]atents” or “mention the inventors of the [A]sserted 5 [P]atents, or any prior art references relied upon by [Defendant] in its invalidity contentions 6 or inter partes review positions.” 7 concerning whether the Accused Products are covered by its patents and applications [see 8 Interrogatory No. 9] is privileged under the work-product doctrine. Id. at 15. In support, 9 Defendant claims that the interrogatory seeks “opinions of counsel regarding the scope of the 10 patents and the operation of the products” and requires its attorneys “to perform an analysis 11 that they have not already made.” Id. Defendant states that it offered to disclose the 12 following non-privileged responsive information: (1) whether it marked any of its accused 13 products with a patent number pursuant to 35 U.S.C 287(a)” (which it claims it did not), and 14 (2) “whether either of its two employees have an understanding of Interrogatory No. 9 outside 15 of discussions with counsel” (which they did not). Id. (emphasis omitted) (citing Hoting Decl., 16 Exh. F). Id. Defendant also claims that its counsel’s advice 17 Plaintiffs reply that they only seek the production of Defendant’s “patent applications 18 that relate to the subject matter in this case—water rides.” Reply at 10. Plaintiffs assert that 19 Defendant has not produced any requested responsive documents, and that Defendant’s 20 proposed production may exclude “applications related to the subject matter of this case . . . 21 that fail to disclose . . . the relevant prior art.” Id. at 10-11. Plaintiffs also assert that 22 Defendant’s response to Interrogatory No. 9 is insufficient, and that Defendant’s unverified 23 22 15cv1879-BEN (BLM) 1 statement made for the first time in its opposition does not satisfy Rules 26 and 33. Id. at 2 11. 3 a. Applicable Law 4 Courts have recognized an important interest in preserving the secrecy of pending or 5 abandoned patent applications. See Tristrata Tech., Inc. v. Neoteric Cosmetics, Inc., 35 F. 6 Supp. 2d 370, 372 (D. Del. 1998); Caliper Techs. Corp. v. Molecular Devices Corp., 213 F.R.D. 7 555, 562 (N.D. Cal. 2003). In order to determine whether to order the disclosure of pending 8 or abandoned patent applications, courts apply a balancing test and consider the following 9 factors: the relevancy of the requested information, the availability of the information absent 10 disclosure, the potential harm resulting from disclosure, and the availability of means to reduce 11 the potential harm. Id. “Many courts have concluded that [pending and abandoned patent 12 applications that are related to the patent-in-suit] are relevant because they may contain 13 information or admissions that clarify, define or interpret the claims of the patent in suit.” 14 Caliper Techs. Corp., 213 F.R.D. at 561 (internal quotation marks and citation omitted); see 15 also Zest IP Holdings, LLC v. Implant Direct Mfg., LLC, 2011 WL 5525990, at *1 (S.D. Cal. 16 Nov. 14, 2011) (“Relevant evidence regarding willful infringement, prior art, and equivalency 17 may be present within [defendant’s] patent applications.”); Morvil Tech., LLC, 2012 WL 18 1965385, at *2 (finding that defendant’s pending patent applications that mentioned the 19 inventor of the patent at issue or any prior art reference relied on by defendant in its invalidity 20 contentions were relevant). 21 “[A] party may not discover documents and tangible things that are prepared in 22 anticipation of litigation or for trial by or for another party or its representative (including the 23 23 15cv1879-BEN (BLM) 1 other party’s attorney, consultant, surety, indemnitor, insurer, or agent).” Fed. R. Civ. P. 2 26(b)(3)(A). 3 discoverable under Rule 26(b)(1); and (ii) the party shows that it has substantial need for the 4 materials to prepare its case and cannot, without undue hardship, obtain their substantial 5 equivalent by other means.” Id. However, even when substantial need for work product has 6 been shown, the court must still “protect against disclosure of the mental impressions, 7 conclusions, opinions, or legal theories of a party’s attorney or other representative concerning 8 the litigation.” Fed. R. Civ. P. 26(b)(3)(B). 9 10 b. Nevertheless, those materials may be discovered if “(i) they are otherwise Analysis (1) RFP No. 41 11 Plaintiffs’ RFP No. 41 requests: “[a]ll PSD issued patents, pending patent applications, 12 abandoned, or otherwise inactive patent applications (U.S. and foreign), including any related 13 patent file histories, that relate to any waterslides, including but not limited to waterslides that 14 utilize a nozzle cover and/or curved sidewalls.” Hoting Decl., Exh. A at 15. Defendant objected 15 that the request was vague, ambiguous, overbroad, unduly burdensome, not proportional to 16 the needs of the case, sought documents protected by the attorney-client privilege or work 17 product doctrine, and requested “documents and things that [wer]e publicly available and 18 accessible to Plaintiffs.” Id., Exh. C at 61-62. Plaintiffs subsequently offered to narrow the 19 scope of the request to Defendant’s pending patent applications, which are not publicly 20 available, but Defendant refused to produce the documents asserting relevancy objections. 21 See Mot. at 20; Hoting Decl., Exh. H at 132 (containing the parties correspondence in which 22 Plaintiffs asked Defendant to produce “any pending patent applications, abandoned, or 23 24 15cv1879-BEN (BLM) 1 otherwise inactive patent applications (U.S. and foreign) that relate to any waterslides.”); id., 2 Exh. J at 144. Because Plaintiffs offered to narrow the scope of RFP No. 41, the Court will 3 analyze the request as limited by Plaintiffs. 4 When determining whether to order disclosure of pending or abandoned patent 5 applications courts balance the objecting party’s interest in secrecy with the requesting party’s 6 interest in disclosure. See Tristrata Tech., Inc., 35 F. Supp. at 372; Caliper Techs. Corp., 213 7 F.R.D. at 562. Both parties seem to agree that unpublished, pending patent applications that 8 cite or discuss either of the asserted patents or mention the inventors of the asserted patent, 9 or any prior art references relied upon by Defendant in its invalidity contentions or inter partes 10 review petitions are relevant. See Oppo. at 14; Mot. at 20-21, 23; Reply at 10-11. However, 11 Plaintiffs seek broader production of “all [Defendant’s] patent applications that relate to the 12 subject matter in this case.” Reply at 11. The Court finds that Plaintiffs’ suggested limitation 13 to the “subject matter of this case” is too broad. The Court therefore limits the scope to 14 pending patent applications that mention the Asserted Patents, the inventors of the Asserted 15 Patents, and any prior art identified in Defendant’s invalidity contentions and finds that with 16 such limitations any such applications would be relevant to this case. See Caliper Techs. 17 Corp., 213 F.R.D. at 561 (pending and abandoned patent applications related to the patent- 18 in-suit are relevant because they “may contain information or admissions that clarify, define 19 or interpret the claims of the patent in suit.”); Zest IP Holdings, LLC, 2011 WL 5525990, at *1 20 (“[r]elevant evidence regarding willful infringement, prior art, and equivalency may be present 21 within [defendant’s] patent applications.”); Morvil Tech., LLC, 2012 WL 1965385, at *2 22 (finding that pending patent applications that mention the inventor of the patent at issue or 23 25 15cv1879-BEN (BLM) 1 any prior art reference relied on by defendant in its invalidity contentions were “directly 2 relevant” to the case)). As limited, this factor weighs in favor of disclosure. See id. 3 Turning to the availability of the information absent disclosure, Defendant’s pending 4 patent applications are likely not publicly available and accessible to Plaintiffs. See, e.g., 35 5 U.S.C. § 122(b)(1)(A) (providing in relevant part that “each application for a patent shall be 6 published . . . after the expiration of a period of 18 months from the earliest filing date for 7 which a benefit is sought); 35 U.S.C. § 122(b)(2) (providing that patent applications are not 8 published if they fall within listed exceptions). Accordingly, this factor also weighs in favor of 9 disclosure. 10 The Court recognizes that Defendant has an important interest in maintaining the 11 secrecy of its pending and abandoned patent applications and that any harm resulting from 12 unauthorized disclosure of such applications may be significant. This factor therefore weighs 13 against disclosure. However, the parties have negotiated a Protective Order, which the Court 14 entered in this case [ECF No. 24], and the Court finds that disclosure pursuant to the parties’ 15 Protective Order significantly reduces any potential harm from disclosure. See Morvil Tech., 16 LLC, 2012 WL 1965385, at *2 (finding that protective order addressed confidentiality concerns 17 regarding the disclosure of pending patent applications); Zest IP Holdings, 2011 WL 5525990, 18 at *1-2 (same); Caliper Techs. Corp., 213 F.R.D. at 562 (same). 19 After balancing the above factors, the Court finds that the disclosure of Defendant’s 20 pending patent applications that mention the Asserted Patents, the inventors of the Asserted 21 Patents, or any prior art identified in Defendant’s invalidity contentions, or inter partes review 22 positions, is warranted in this case. Defendant is ORDERED to produce such documents to 23 26 15cv1879-BEN (BLM) 1 Plaintiffs. 2 defendant’s abandoned patent applications that defendant agreed to produce, pending patent 3 applications or their relevant portions that mentioned the inventor of the patent at issue or 4 any prior art reference relied on by defendant in its invalidity contentions); Caliper Techs. 5 Corp., 213 F.R.D. at 562 (ordering the production of the objecting party’s patents and pending 6 patent applications, U.S. and foreign, that related to the invention in the patent at issue). 7 See Morvil Tech., LLC, 2012 WL 1965385, at *2 (ordering the production of (2) Interrogatory No. 9 Interrogatory No. 9 requests the following: 8 If PSD contends or believes that any of the Accused Products are covered by or related to issued patents (U.S. and foreign) or pending, abandoned, or otherwise inactive patent applications (U.S. and foreign), identify such patents and patent applications, and identify what aspect of the Accused Products are covered by or related to said patents and patent applications. 9 10 11 12 Hoting Decl., Exh. B at 30. Defendant refused to answer claiming in its initial and 13 supplemental responses that the interrogatory was vague, ambiguous, compound, sought 14 information not proportional to the needs of the case, and attempted to shift Plaintiffs’ burden 15 of proof. See id., Exh. D at 94-95; id., Exh. E at 121-22. Plaintiffs subsequently narrowed 16 the scope of the interrogatory to patent applications “belonging or assigned” to Defendant,6 17 but Defendant refused to respond asserting that the information was privileged and/or 18 19 20 21 22 23 6 The full text of the Interrogatory No. 9, as limited by Plaintiffs stated: If PSD contends or believes that any of the Accused Products are covered by or related to issued patents (U.S. and foreign) or pending, abandoned, or otherwise inactive patent applications (U.S. and foreign) belonging or assigned to PSD, identify such patents and patent applications, and identify what aspect of the Accused Products are covered by or related to said patents and patent applications. Id., Exh. O at 164 (emphasis in original). 27 15cv1879-BEN (BLM) 1 irrelevant, and could be obtained through a deposition. Id., Exh. O at 161, 163-64. Defendant 2 offered to disclose the following non-privileged responsive information: (1) whether it marked 3 any of its accused products with a patent number pursuant to 35 U.S.C 287(a), and 4 (2) “whether either of its two employees have an understanding of Interrogatory No. 9 outside 5 of discussions with counsel.” See Oppo. at 15; Hoting Decl., Exh. F; Id., Exh. O at 161 6 (Defendant offered to ask its two employees “if they have [] personal opinions about patents 7 or applications covering the accused products that are not based on the advice of counsel.”). 8 Defendant provided supplemental responses to Interrogatory No. 9 stating that “it 9 does not mark any Accused Product with a patent number.” Hoting Decl., Exh. F at 27 (filed 10 under seal); Exh. G at 28 (filed under seal). In its reply to the instant motion to compel 11 Defendant appears to represent that its two employees did not have an understanding of 12 Interrogatory No. 9 outside of discussion with counsel, but Defendant did not disclose this 13 information in its interrogatory responses. 14 answer provided for the first time in its opposition to Plaintiffs’ motion to compel is insufficient. 15 See Fed. R. Civ. P. 33(b)(3) (stating that “[e]ach interrogatory must, to the extent it is not 16 objected to, be answered separately and fully in writing under oath.”); Fed. R. Civ. P. 26(g)(1) 17 (providing that “[e]very discovery . . . response, or objection must be signed by at least one 18 attorney of record in the attorney’s own name. . . .”). As such, Defendant must provide a 19 supplemental response that complies with the applicable Federal Rules of Civil Procedure. See id. Defendant’s purported interrogatory 20 However, the Court agrees with Defendant that Interrogatory No. 9 seeks privileged 21 information implicating Defendant’s counsel’s opinions “regarding the scope of the patents 22 and the operation of the products” and requires its attorneys “to perform an analysis that they 23 28 15cv1879-BEN (BLM) 1 have not already made.” See Oppo. at 15-16; see also Fed. R. Civ. P. 26(b)(3)(A) (providing 2 that “a party may not discover documents and tangible things that are prepared in anticipation 3 of litigation or for trial by or for another party or its representative . . . .”). Defendant is 4 therefore ORDERED to supplement its response to Interrogatory No. 9 with non-privileged 5 responsive information, indicating the knowledge of its two employees outside of discussions 6 with counsel, but Plaintiffs’ motion to compel further responses to this interrogatory is 7 DENIED. 8 9 SUMMARY AND CONCLUSION For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART 10 Plaintiffs’ motion compel Defendant’s responses and document production. 11 ORDERED to provide further responses and produce responsive documents, as directed in 12 this Order, by November 18, 2016. 13 Defendant is IT IS SO ORDERED. 14 15 Dated: 11/3/2016 16 17 18 19 20 21 22 23 29 15cv1879-BEN (BLM)

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