Apple Inc. v. Samsung Electronics Co., Ltd. et al

Filing 202

ORDER by Judge Paul S. Grewal GRANTING-IN-PART 146 SAMSUNG'S MOTION TO COMPEL (psglc2, COURT STAFF) (Filed on 6/5/2012)

1 2 3 4 5 6 7 8 9 United States District Court For the Northern District of California 10 11 UNITED STATES DISTRICT COURT 12 NORTHERN DISTRICT OF CALIFORNIA 13 SAN JOSE DIVISION 14 15 16 17 18 19 20 21 22 APPLE INC., a California Corporation, ) ) Plaintiff, ) ) v. ) ) SAMSUNG ELECTRONICS CO., LTD, a ) Korean corporation; SAMSUNG ) ELECTRONICS AMERICA, INC., a New York ) corporation; and SAMSUNG ) TELECOMMUNICATIONS AMERICA, LLC, ) a Delaware limited liability company, ) ) Defendants. ) ) Case No.: 12-CV-00630-LHK (PSG) ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL (Re: Docket No. 146) In this patent infringement suit, Defendants Samsung Electronics Co., LTD., Samsung 23 Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively 24 “Samsung”) moves to compel Plaintiff Apple Inc. (“Apple”) to supplement its response to one of 25 Samsung’s interrogatory requests relating to Apple’s pending motion for a preliminary injunction. 26 Earlier today, the court heard oral argument on Samsung’s motion. Having considered the 27 arguments and evidence presented, the court GRANTS-IN-PART Samsung’s motion. 28 1 Case No.: 12-CV-00630-LHK (PSG) ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL 1 I. 2 BACKGROUND Samsung moves this court to order Apple to supplement its response to Interrogatory Request No. 4. This interrogatory requests that Apple identify all persons to whom Apple has 4 licensed, offered to license, or received a request to license, the four patents upon which Apple 5 seeks a preliminary injunction (the “preliminary injunction patents”), as well as the current status 6 of any of these licensing discussions. 1 Samsung argues that the information is relevant to Apple’s 7 assertion that it would be irreparably harmed in the absence of an injunction. 2 Samsung also 8 specifically argues that Apple should be obliged to supplement its response to identify all requests 9 for licenses of any of the four preliminary injunction patents, even if the request did not reference 10 United States District Court For the Northern District of California 3 one of them specifically—for example, any requests to license an Apple patent portfolio that might 11 include one of the four preliminary injunction patents. 3 12 Apple responds that its interrogatory response as it currently stands is adequate because the 13 supplemental information that Samsung requests is irrelevant to the preliminary injunction motion, 14 and supplementing its response would place an undue burden on Apple. 15 II. 16 LEGAL STANDARDS Parties may obtain discovery regarding any nonprivileged matter that is relevant to any 17 party's claim or defense. Relevant information need not be admissible at trial if the discovery 18 appears reasonably calculated to lead to the discovery of admissible evidence. The court must limit 19 the frequency or extent of discovery if it is unreasonably cumulative or duplicative, or can be 20 obtained from some other source that is more convenient, or the burden or expense of the proposed 21 discovery outweighs its likely benefit. 4 Upon a showing of good cause, “the court may order 22 discovery of any matter relevant to the subject matter involved in the action.” 5 23 1 See Docket No. 146 (Defs.’ Mot. to Compel Further Resp.). 2 See id. 3 See id. 4 See generally Fed. R. Civ. P. 26. 5 Fed. R. Civ. P. 26(b)(1). 24 25 26 27 28 2 Case No.: 12-CV-00630-LHK (PSG) ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL 1 III. 2 DISCUSSION It is clear that, in the absence of any burden to Apple, the supplemental information 3 Samsung has requested is at least reasonably calculated to lead to the discovery of admissible 4 evidence. The frequency and substance of any license requests, even if ultimately declined or 5 ignored by Apple, sheds light both on how those outside of Apple value the preliminary injunction 6 patents, as well as how Apple itself values them. This is more than conceptually pertinent to 7 Apple’s willingness to license the patents, 6 because even a well-resourced party like Apple is 8 subject to the microeconomic maxim that supply tends to increase as does price. 9 Of course, the initial premise of this discussion, that Apple has no burden in complying United States District Court For the Northern District of California 10 with Samsung’s request, is false. Apple very much confronts a substantial burden in collecting and 11 reviewing data from every possible source within its corporate structure. Fortunately, at oral 12 argument, counsel for Samsung suggested that any order compelling supplementation apply only to 13 the two Apple licensing department employees that Apple previously disclosed to Samsung under 14 Rule 26(a). The court agrees that this strikes the appropriate balance between the competing 15 concerns of the parties. 16 V. 17 CONCLUSION The court GRANTS-IN-PART Samsung’s motion to compel production from Apple. Apple 18 shall supplement its response to Interrogatory No. 4 in accordance with the foregoing. Apple may 19 limit its response to information supplied to the two licensing department employees identified in 20 Apple’s Rule 26(a) disclosure. Samsung shall comply with this order no later than June 7 at noon, 21 so that Judge Koh will have access to this information before ruling on Apple’s motion. 22 23 24 6 25 26 27 28 See Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008) (“While the fact that a patentee has previously chosen to license the patent may indicate that a reasonable royalty does compensate for an infringement, that is but one factor for the district court to consider.”); High Tech Med. Instr., Inc. v. New Image Inds., Inc., 49 F.3d 1551, 1557 (Fed. Cir. 1995) (finding that a patentee’s offer of a license “suggests that any injury suffered by HTMI [the patentee] would be compensable in damages assessed as part of the final judgment in the case”). 3 Case No.: 12-CV-00630-LHK (PSG) ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL 1 IT IS SO ORDERED. 2 Dated: 6/5/2012 3 _________________________________ PAUL S. GREWAL United States Magistrate Judge 4 5 6 7 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 Case No.: 12-CV-00630-LHK (PSG) ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL