IconFind, Inc. v. Google, Inc.

Filing 61

STATEMENT of Parties (Joint Statement) re Discovery Disagreement by Plaintiff IconFind, Inc. re 60 Notice - Other. (Attachments: # 1 Exhibits A and B, # 2 Exhibits C and D)(Baxter, Daniel)

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1 2 3 4 5 6 WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) TRedmon@wilkefleury.com Daniel L. Baxter (SBN 203862) DBaxter@wilkefleury.com 400 Capitol Mall, 22nd Floor Sacramento, CA 95814 Phone: (916) 441-2430 Fax: (916) 442-6664 12 NIRO, HALLER & NIRO Raymond P. Niro (Admitted Pro hac vice) RNiro@nshn.com Raymond P. Niro, Jr. (Admitted Pro hac vice) RNiroJr@nshn.com Brian E. Haan (Admitted Pro hac vice) BHaan@nshn.com Anna B. Folgers (Admitted Pro hac vice) AFolgers@nshn.com 181 West Madison, Suite 4600 Chicago, IL 60602-4515 Phone: (312) 236-0733 Fax: (312) 236-3137 13 Attorneys for Plaintiff, IconFind, Inc. 7 8 9 10 11 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA 14 15 ICONFIND, INC., Case No. 2:11-cv-00319-GEB-JFM 16 Plaintiff, 17 JOINT STATEMENT RE DISCOVERY DISAGREEMENT v. 18 GOOGLE INC., 19 Defendant. Hearing Date: July 28, 2011 Time: 11:00 a.m. 8th Floor Courtroom Before the Honorable Judge John F. Moulds 20 21 Pursuant to Local Rule 251, the Parties hereby submit to the Court a Joint Statement re 22 Discovery Disagreement. The Parties seek the Court’s guidance on the disputed issues of 23 whether: (a) Google has properly calculated Iconfind’s interrogatories; as exceeding twenty- 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) 1 five; and, if so, (b) IconFind should be granted leave to serve additional interrogatories than the 2 twenty-five interrogatories provided for by Federal Rule of Civil Procedure 33(d). 3 A. 4 On February 3, 2011, IconFind filed this suit in the United States District Court for the 5 Eastern District of California for infringement of its United States Patent No. 7,181,459 B2, 6 entitled "Method Of Coding, Categorizing, And Retrieving Network Pages And Sites," which 7 issued on February 20, 2007 (“the ’459 Patent”). On May 17, 2011, IconFind served on Google 8 its First Set of Interrogatories Nos. 1-16 and First Set of Request for Production Nos. 1-45. (Ex. 9 A). Details of the conference or conferences; On May 26, 2011, Google informed IconFind of its position that its interrogatories, as 10 originally served, materially exceeded the limit of twenty-five set forth in Fed.R.Civ.P. 33(a)(1) 11 – as calculated by Google – and requested IconFind to advise whether it would retract its 12 interrogatories and re-serve them. Google advised IconFind that if it was unwilling to retract and 13 re-serve its interrogatories, Google would respond to the first twenty-five only and object to the 14 remaining interrogatories as over the limit. The parties participated in a meet and confer on this 15 issue on May 31, 2011. During the meet and confer, Google informed IconFind of the bases for 16 its count of IconFind’s interrogatories as originally served. IconFind responded that given 17 Google’s position, additional interrogatories beyond the limit set forth in Rule 33 would be 18 necessary and requested Google to stipulate instead to seventy-five interrogatories. Google 19 declined to so stipulate and stated that the parties had already agreed that only 25 interrogatories 20 were necessary. Google reiterated its position that if agreement could not be reached, it would 21 only answer the first 25 interrogatories and object to the remainder. In an effort to expedite 22 obtaining relevant discovery, IconFind, without admitting that Google’s objections have any 23 merit, withdrew (and reserved the right to re-serve) Interrogatory Nos. 2, 6, 7, and 9-16. (Ex. B). 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) -2- 1 Google on June 20, 2011 served its responses to Interrogatory Nos. 1, 3-5, and 8 (maintaining its 2 objections that these interrogatories were compound). (Ex. C). 3 4 B. Statement of nature of the action and its factual disputes insofar as they are pertinent to the matters to be decided and the issues to be determined at the hearing; 5 This is an action for infringement of United States Patent No. 7,181,459 B2. IconFind 6 has accused Google of infringement of at least claims Google has infringed and continues to 7 infringe at least claims 1, 6, 9, 16, 17, 19, 20, 21, 22, 29, 30 and 31 of the '459 patent under 35 8 U.S.C. § 271(a) through Google's use, ownership and operation of websites in which it 9 incorporates and facilitates Creative Commons licenses, including but not limited to Google 10 Knol, Google Books and Google Picasa. (Complaint, ¶ 7, Dkt. No. 1). 11 IconFind in its discovery requests defined the "Accused Google Instrumentality" as “each 12 Google website that incorporates and facilitates Creative Commons licenses (‘the Creative 13 Commons Feature’), including but not limited to Google Knol (www.knol.google.com), Google 14 Books (www.books.google.com) and Google Picasa (www.picasa.google.com) and all software 15 and hardware which provide and support these websites, including without limitation, databases, 16 interfaces, computer networks, applications, servers, storage systems, entry systems and 17 processing systems.” (Ex. A). 18 Google’s position is that many of IconFind’s interrogatories contain numerous discrete 19 subparts: (1) Nos. 1-5 each constitute three separate interrogatories as they relate to three 20 separate Google products; (2) No. 6 constitutes at least two interrogatories, one directed to when 21 Google first became aware of the ‘459 Patent and another requesting information concerning 22 action taken by Google with respect to designing around the patent-in-suit; (3) No. 7 constitutes 23 at least two interrogatories, one directed at Google’s contentions regarding a reasonable royalty 24 and another requesting identification of documents; (4) No. 8 constitutes six interrogatories 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) -3- 1 because it relates to three separate Google products, and requests that Google, for each product, 2 include a non-infringement claim chart and identify persons “having knowledge relating to the 3 facts provided in response to this interrogatory”; (5) Nos. 9-15 each constitute at least two 4 interrogatories because they each request at least the following subparts: “identify all information 5 including, but not limited to, documents considered, reviewed and/or relied upon by Google as a 6 basis for the facts and assertions provided in response to this interrogatory, with reference to 7 Bates numbers in accordance with Fed.R.Civ.P. 33(d)” and “identify persons having knowledge 8 concerning facts provided in response to this interrogatory”; and (6) No. 16 constitutes at least 9 two interrogatories because it also requests that Google identify persons with relevant 10 information as well as documents to be consulted by that person in preparation for his or her 11 testimony. Thus, as to interrogatories numbered 1, 3-5, and 8 (which have been answered), 12 Google believes these should be counted as 18 interrogatories. 13 retracted by Iconfind, Google believes these remaining interrogatories as previously propounded 14 would amount to 23 additional interrogatories, bringing the total to 41. As to the 11 interrogatories 15 IconFind disagrees and seeks an order from the Court to order Google to answer retracted 16 Interrogatory Nos. 2, 7, and 9-16 as originally served. (Ex. A). In regards to Interrogatory No. 17 6, Iconfind concedes that this interrogatory could be interpreted as two interrogatories and will 18 reserve this interrogatory after this Court rules on the current dispute. However, should the 19 Court find that these interrogatories all contain discrete subparts, IconFind requests leave to 20 serve an additional fifty interrogatories than provided for in Rule 33, or, seventy- so that it can 21 reserve its highly relevant and proper interrogatories. 22 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) -4- 1 2 Contentions of each party as to each contested issue, including a memorandum of each party’s respective arguments concerning the issues in dispute and the legal authorities in support thereof. 3 1. 4 C. Plaintiff IconFind’s Contentions (a) Google’s Objections to IconFind’s Interrogatories Are Unfounded 5 The purpose of discovery is to make trial “less a game of blind man's bluff and more a 6 fair contest with the basic issues and facts disclosed to the fullest practicable extent possible.” 7 Duhn Oil Tool, Inc. v. Cooper Cameron Corp., 2010 WL 716306, *1 (N.D. Cal. Mar. 2, 2010) 8 (citing United States v. Procter & Gamble, 356 U.S. 677, 68S (1958)). Federal Rule of Civil 9 Procedure 26(b) establishes the scope of discovery and states in pertinent part: “[p]arties may 10 obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of 11 any party, including the existence, description, nature, custody, condition, and location of any 12 books, documents, or other tangible things and the identity and location of persons having 13 knowledge of any discoverable matter … Relevant information need not be admissible at trial if 14 the discovery appears reasonably calculated to lead to the discovery of admissible evidence.” 15 “The party who resists discovery has the burden to show that discovery should not be allowed, 16 and has the burden of clarifying, explaining, and supporting its objections.” Duhn Oil Tool, Inc., 17 2010 WL 716306, *1 (E.D. Cal. Mar. 2, 2010) (citing Oakes v. Halvorsen Marine Ltd., 179 18 F.R.D. 281, 283 (C.D. Cal. 1998)). 19 Pursuant to Rule 33(a), a party may not serve on its adversary more than twenty-five 20 interrogatories, including all discrete subparts. “Although the term ‘discrete subparts’ does not 21 have a precise meaning, courts generally agree that ‘interrogatory subparts are to be counted as 22 one interrogatory … if they are logically or factually subsumed within and necessarily related to 23 the primary question.” Superior Communications v. Earhugger, Inc., 257 F.R.D. 215, 218 (C.D. 24 Cal. 2009). “An interrogatory containing subparts directed at eliciting details concerning a 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) -5- 1 ‘common theme’ should generally be considered a single question.” Swackhammer v. Sprint 2 Corp. PCS, 225 F.R.D. 658, 664-65 (D. Kan. 2004). 3 Primarily at issue are two categories of interrogatories which seek highly relevant 4 information in this case: (1) Nos. 1-5 and 8 seek information related the instrumentalities 5 accused of infringement of the ‘459 Patent (Google Picasa, Google Books and Google Knol); 6 and (2) Nos. 9-15 seek the complete factual basis of Google’s contentions, the identity of all 7 information including, documents considered, reviewed and/or relied upon by Google as a basis 8 for the facts and assertions provided in response to each interrogatory, with reference to Bates 9 numbers in accordance with Fed.R.Civ.P. 33 and the identity of persons having knowledge 10 concerning facts provided in response to each interrogatory. (Ex. A). The contentions at issue in 11 Interrogatory Nos. 9-16 include: • Google's Counterclaim II and Second Affirmative Defense that the “[t]he ’459 patent is invalid under 35 U.S.C. § 101” (Ex. A, Interrogatory No. 9); • Google’s Counterclaim II and Second Affirmative Defense that the ‘459 Patent is invalid for failure to meet the “conditions of patentability of 35 USC § 102” (Ex. A., Interrogatory No. 10); • 12 Google's Counterclaim II and Second Affirmative Defense that the ’459 Patent is invalid for failure to meet “the conditions for patentability” of 35 USC § 103 (Ex. A, Interrogatory No. 11); • Google's Counterclaim II and Second Affirmative Defense that the ’459 Patent is invalid because it fails to meet the conditions for patentability of 35 USC § 112 (Ex. A, Interrogatory No. 12); • Google's Third Affirmative Defense that “IconFind’s claim for damages, if any, against Google for alleged infringement of the ’459 patent are limited by 35 U.S.C. §§ 286, 287, and/or 288” (Ex. A, Interrogatory No. 13); • Google's Fourth Affirmative Defense that "[o]n information and belief, IconFind’s claims for relief are barred, in whole or in part, by the equitable doctrines of laches and estoppel” (Ex. A, Interrogatory No. 14); and • Google’s Fifth Affirmative Defense that “[a]ny and all products or actions accused of infringement have substantial uses that do not infringe and do not 13 14 15 16 17 18 19 20 21 22 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) -6- 1 induce or contribute to the alleged infringement of the claims of the ’459 Patent” (Ex. A, Interrogatory No. 15). 2 Interrogatory No. 16 seeks the identity of: 3 4 5 6 7 [E]ach and every person known to Google who it believes has knowledge of facts that Google believes are pertinent or relevant to this Lawsuit (including, but not limited to, any person whom Google intends to call as a fact witness under Fed. R. Evid. 702, 703, or 705 and who is not retained or specifically employed to provide expert testimony in this case by Google) by providing at least his/her name, most current or last known address and, if known, phone numbers, a concise description of the nature of their association with the parties and the substance of any such knowledge, and identification of all persons and documents consulted or to be consulted by each such witness in preparation for his or her testimony. 8 9 (Ex. A). Accordingly, Interrogatory No. 16 sits in a category of its own to the extent is 10 seeks essentially the same information that IconFind is entitled to obtain pursuant to 11 Fed.R.Civ.P. 26(a). 12 In regards to Category 1, Google asserts that because IconFind has accused three Google 13 instrumentalities of infringement, each interrogatory that requests information concerning the 14 Accused Google Instrumentality (which has been defined as including all three products), 15 constitutes not one interrogatory but three. Taken to its logical conclusion, if IconFind had 16 accused twenty-five Google instrumentalities of infringement of one claim of one patent, 17 IconFind would be allowed to serve only one narrowly-tailored interrogatory under the 18 Federal Rules. 19 Committee Note to 1993 Amendment to Fed.R.Civ.P. 33(d) (“the aim [of the numerical limit] is 20 not to prevent needed discovery, but to provide judicial scrutiny before parties make potentially 21 excessive use of this discovery device”). Through its Category 1 interrogatories, IconFind seeks 22 highly relevant information concerning the instrumentalities that it has accused Google of 23 infringement. (Ex. A). For example, Interrogatory Nos. 1-3 seek information concerning the 24 structure, function and operation of and the design and development history of the Accused 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT This is improper and is at odds with Fed.R.Civ.P. 33(d). (Case No. 11-00319 GEB JFM) See Advisory -7- 1 Google Instrumentalities which are relevant to IconFind’s claims of infringement and Google’s 2 claims of non-infringement. 3 information necessary to prove IconFind’s damages claims. Simply put, to accept Google’s 4 argument would simply catapult form over substance to the prejudice of IconFind. Interrogatory Nos. 4-5 seek usage statistics and financial 5 Google’s reliance on Stamps.com v. Endicia, Inc., 2009 WL 2576371, *3 (C.D. Cal. May 6 21, 2009), for the proposition that the Category 1 interrogatories constitute numerous and 7 disecrete subparts because they are directed toward all three of the accused products is 8 inappropriate. 9 requested: 10 11 In Stamps.com, the plaintiff’s non-infringement contention interrogatory For each of the accused products with respect to which [defendants] deny [plaintiff’s] allegations of infringement or seek a declaration of non-infringement, identify such product by name and description, and provide a claim chart showing with specificity on a claim by claim basis, why the product does not infringe each of the patents in suit. 12 13 Id. at *1 (emphasis added). While the court found that this interrogatory was directed to 14 distinct subjects, this interrogatory seeks information concerning infringement of not one patent- 15 in-suit, which is the case here, but “over 600 claims” in twelve patents. Id. at *2, *4. In this 16 case, IconFind seeks Google’s non-infringement positions for three products and twelve claims 17 of one patent. Clearly this case is distinguishable. 18 Moreover, each accused instrumentality is merely a logical extension of each “basic 19 interrogatory” of which they are a part. Chapman v. California Dep’t. of Edu., 2002 WL 20 32854376, *1 (N.D. Cal. Feb. 6, 2002) (“…the question is whether … the subparts are a logical 21 extension of the basic interrogatory”). The Category 1 interrogatories seeks information related 22 to only one specific question. 23 instrumentality is logically and factually subsumed within and necessarily related to the primary 24 question asked in each interrogatory. Stamps.com, 2009 WL 2576371 at *3 (C.D. Cal. May 21, 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Ex. A). The information requested for each accused (Case No. 11-00319 GEB JFM) -8- 1 2009) (“[a]lthough the term ‘discrete subparts’ does not have a precise meaning, courts generally 2 agree that ‘interrogatory subparts are to be counted as one interrogatory … if they are logically 3 or factually subsumed within and necessarily related to the primary question”). The “common 4 theme,” for instance, in Interrogatory No. 4 is the usage statistics of the Accused 5 Instrumentalities; in Interrogatory No. 5, it is the quarterly revenues and quarterly profit of the 6 Accused Instrumentalities. (Ex. A); Swackhammer v. Sprint Corp. PCS, 225 F.R.D. 658, 664-65 7 (D. Kan. 2004) (“An interrogatory containing subparts directed at eliciting details concerning a 8 ‘common theme’ should generally be considered a single question”). 9 objections to these interrogatories as containing numerous and discrete subparts should be 10 As such, Google’s denied. 11 In regards to Category 2, Google asserts that because each interrogatory seeks fact 12 supporting Google’s contentions, persons with knowledge of those facts, and documents 13 containing those facts, that they are three separate requests. This district court held otherwise on 14 this precise issue in Stamps.com v. Endicia, Inc., 2009 WL 2576371, *3 (C.D. Cal. May 21, 15 2009). The plaintiff in Stamps.com served an even broader interrogatory than the Category 2 16 interrogatories at issue here, seeking: 17 18 19 20 21 On a claim by claim basis, state with specificity all facts and reasons known to [defendants] that support [defendants’] allegation that each of the Patents in Suit are invalid, identify all natural persons with knowledge of such fact or reason, and identify all documents, references or facts that [defendants] contend render the claim invalid either individual or in combination. For each of the accused products with respect to which [defendants] deny [plaintiff’s] allegations of infringement or seek a declaration of non-infringement, identify such product by name and description, and provide a claim chart showing with specificity on a claim by claim basis, why the product does not infringe each of the patents in suit. 22 23 Id. at *1 (emphasis added). The court plainly stated in response to defendants’ numerous 24 and discrete subparts objection: “This court finds that the requests for facts, persons with 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) -9- 1 knowledge of those facts and documents containing those facts should be considered one 2 interrogatory because they are subsumed within the primary question of facts supporting 3 defendants’ infringement and invalidity contentions.” Id. at *3. The interrogatories at issue here 4 are even more narrow than the interrogatories served in Stamps.com: they separately address 5 each invalidity claim per legal theory (e.g. anticipation under Section 102, obviousness under 6 Section 103 and indefiniteness under Section 112) and per affirmative defense, rather than 7 grouping together in one interrogatory all counterclaims and affirmative defenses together 8 under the umbrella of invalidity. Accordingly, the Category 2 Interrogatories properly seek 9 the disclosure of facts, persons with knowledge of those facts and documents containing those 10 facts and are subsumed within the primary question of what facts support Google’s contentions. 11 In regards to Interrogatory No. 16, Google has not articulated a substantive position as to 12 why this interrogatory constitutes multiple discrete subparts. IconFind asserts that this is due to 13 the fact that this interrogatory is directed towards one logically related topic: persons with 14 relevant information, their contact information and the identity of that relevant information. 15 In sum, each and every one of IconFind’s interrogatories seeks highly relevant 16 information that IconFind is entitled to obtain pursuant to the Federal Rules. To deny IconFind 17 access to basic information, evidence and documents which are necessary to support its claims of 18 infringement and to defend against Google’s counterclaims and affirmative defenses is 19 prejudicial and improper. As such, the Court should deny Google’s objections and order Google 20 to answer all remaining interrogatories as originally served by IconFind (with the exception of 21 Interrogatory No. 6). 22 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 10 - 1 (b) Should the Court Accept Google’s Objections, IconFind Respectfully Requests Leave To Serve An Additional Fifty Interrogatories 2 Under both Rule 26(b)(2) and Rule 33(a) a court may grant leave to serve additional 3 interrogatories and the “[l]eave to serve additional interrogatories shall be granted to the extent 4 consistent with the principles of Rule 26(b)(2).” The parties may also agree by written 5 stipulation to the service of additional interrogatories. See Fed.R.Civ.P. 29. In this case Google 6 has refused to stipulate and has instead refused to answer any interrogatory after the first twenty7 five it considered to be separate requests. While IconFind retracted several requests in an effort 8 to obtain at least some discovery information from Google expeditiously, IconFind must serve 9 additional interrogatories directed to the information it sought in its withdrawn interrogatories. 10 As such, should this Court agree with Google’s position, IconFind respectfully requests that this 11 court grant IconFind of leave to serve an additional fifty interrogatories as consistent with the 12 principals of Rule 26(b)(2). 13 “In many cases, it will be appropriate for the court to permit a larger number of 14 interrogatories in the scheduling order entered under Rule 26(b).” Advisory Committee Notes, 15 1993 Amendments. This flexibility is consistent with the requirement that the Federal Rules of 16 Civil Procedure “be construed and administered to secure the just, speedy, and inexpensive 17 determination of ever action.” Fed.R.Civ.P. 1. Moreover, “[t]he aim of the [numerical limit] is 18 not to prevent needed discovery, but to provide judicial scrutiny before the parties make 19 potentially excessive use of the discovery device.” Safeco v. Rawstron, 181 F.R.D. 441, 443 20 (C.D. Cal. 1998) (citing Advisory Committee Notes, 1993 Amendments). Patent cases, in 21 particular, “where the issues are often more complex than the typical federal case for which the 22 presumptive limit was developed, leave to exceed 25 interrogatories may we be appropriate.” 23 Protective Optics, Inc. v. Panoptx, Inc., 2007 WL 963972, *2 (N.D. Cal. Mar. 30, 2007) 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 11 - 1 (granting motion to compel response to contention interrogatories seeking identification of 2 claims allegedly not met by the accused products); see also Collaboration Properties, Inc. v. 3 Polycom, Inc., 224 F.R.D. 473 (N. D. Cal 2004) (interrogatory limit expanded to 50 in patent 4 infringement suit). 5 In Chapman v. California Dept. of Educ., 2002 WL 32854376 (N. D. Cal. Feb. 6, 2002), 6 the court was faced with this exact issue assumed for the sake of argument that the requests were 7 two separate interrogatories and sua sponte granted the plaintiff leave to serve additional 8 interrogatories. In so holding, the court stated: 13 Here, although the thirty-four interrogatories are over the numerical limit imposed by Rule 33(a), the interrogatories are neither cumulative nor duplicative. The subject matter of the interrogatories (e.g., relating to assessment of the test validity, etc.) appear directly relevant to the issues in the case. Moreover, the request to identify documents (the second subpart of the interrogatory) could have been propounded as a request for production of documents under Rule 34 for which the Rule 33(a) numerical limit of interrogatories would not apply. To limit discovery which is clearly relevant under these circumstances would exalt form over substance. Therefore, the Court sua sponte grants Plaintiffs leave to serve the interrogatories at issue. 14 Id. at *2 (emphasis added). The same is true in this case. Iconfind is clearly entitled to 15 the information it seeks through both its Category 1 and 2 interrogatories. The Category 1 16 interrogatories seeks information concerning the instrumentalities accused of infringement in this 17 case. The Category 2 interrogatories seek all facts that Google intends to use to support its 18 counterclaim for non-infringement and invalidity and corresponding affirmative defenses. 19 Additionally, these interrogatories seek the identity of the persons with knowledge of the 20 interrogatory and the documents Google will use to support its contentions. 21 interrogatories clearly request relevant information and Iconfind should be granted leave to serve 22 additional interrogatories to obtain this information should the court find that the Category 1 and 23 2 interrogatories contain numerous discrete subparts. 9 10 11 12 These 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 12 - 1 Moreover, had Google not unreasonably refused in contravention of the caselaw in this 2 district to stipulate to the additional interrogatories requested, the parties would not have had to 3 burden the court with the issue. This district court’s analysis in Stamps.com, 2009 WL 2576371 4 at *3 (C.D. Cal. May 21, 2009) in regards to the cooperation expected amongst parties when 5 dealing with situations such as this is telling: “[i]n any event, given that defendant …should 6 have reasonably stipulated to permitting a reasonable number of excess interrogatories in this 7 action involving twelve patents … the court would permit the additional interrogatories.” 8 (emphasis added). This district’s sister court takes a similar approach: “reasonable parties should 9 stipulate to appropriate additional interrogatories in a complex case [], rather than engage in 10 motion practice.” Protective Optics, Inc. v. Panoptx, Inc., (N.D. Cal. Mar. 30, 2007). The court 11 in Protective Optics, “[i]n view of Defendant’s unreasonable failure to do so,” allowed additional 12 interrogatories. Id. at *2. The court in this case, in light of Google’s unreasonable refusal to 13 stipulate to IconFind’s request to serve additional interrogatories where they are obviously 14 necessary in light of Google’s own positions, should grant IconFind’s motion for leave. 15 Accordingly, should this Court find that Google’s objections have merit, IconFind 16 respectfully requests that this Court grant IconFind leave to serve an additional fifty 17 interrogatories in this case. 18 19 20 2. Defendant Google’s Contentions a. Only The Number Of Discrete Subparts Contained In Interrogatory Nos. 1, 3-5, And 8 Are Properly Before This Court 21 The only issue properly before this court is how many interrogatories have been served 22 and answered at this point in the litigation. In order to determine that issue, the Court must 23 decide how many discrete subparts are contained in IconFind’s Interrogatory Nos. 1, 3-5, and 8. 24 Fed.R.Civ.P. 33(a). Google’s position is that these interrogatories amount to eighteen separate 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 13 - 1 interrogatories. If the Court agrees, then Iconfind has seven remaining interrogatories. The 2 parties, with the Court’s guidance on this issue, can then evaluate whether or not Iconfind’s 3 agreement to be bound by the twenty-five interrogatory limit must be revisited. 4 On May 17, 2011, Iconfind served eighteen interrogatories consisting of more than 5 twenty-five discrete subparts. Rather than answering the first twenty-five interrogatories and 6 objecting to the remaining interrogatories and thereby foreclosing IconFind’s ability to prioritize 7 its discovery requests, Google, in good faith and exactly as Moore’s Federal Practice suggests,1 8 alerted IconFind to its positions and allowed it to re-serve its prioritized requests. IconFind 9 elected to retract eleven interrogatories. Google responded to the five unretracted interrogatories 10 (which amount to eighteen interrogatories). (Ex. C). Only interrogatories that are served and 11 cause a responding party to undertake the burden of preparing and serving responses are counted 12 toward the numerical interrogatory limit for purposes of Rule 33(a). Walker v. Lakewood 13 Condominium Owners Ass'n, 186 F.R.D. 584, 587 (C.D. Cal. 1999); Benas v. Baca, No. 00- 14 11507, 2003 WL 21697750, at *1 (C.D. Cal. July 16, 2003). Because Google did not undertake 15 the burden of preparing and serving responses to Interrogatories 2, 6, 7, and 9-16, those 16 interrogatories do not count toward the numerical limit agreed to by IconFind in the Joint 17 Statement (Dkt. 47) and prescribed by Rule 33(a). 18 The parties properly seek the Court’s guidance on the number of discrete subparts 19 contained in the five unretracted interrogatories. Beyond seeking this guidance, IconFind also 20 seeks an advisory opinion on whether it would be over the agreed limit of twenty-five had it not 21 retracted Interrogatories 2, 6, 7, and 9-16. IconFind also prematurely requests that this Court 22 triple the number of interrogatories allotted to it before it has even reached the agreed limit of 23 24 25 1 7-33 Moore's Federal Practice - Civil § 33.30 ("[T]he better rule is to require the responding party to answer the first 25 interrogatories, and object to the remainder."). JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 14 - 1 twenty-five. Google respectfully requests that this Court address only the issue properly before 2 it. IconFind’s additional requests should be denied. 3 4 b. Interrogatory Nos. 1-5, and 8 Constitute Three Discrete Subparts Because They Are Directed At Distinct Products Interrogatory Nos. 1-5 and 82 contain three discrete subparts each because they are 5 directed at three distinct subjects — three separate and distinct products. See Collaboration 6 Props., Inc. v. Polycom, Inc., 224 F.R.D. 473, 474-75 (N.D. Cal. 2004) (ruling that an 7 interrogatory directed at twenty-six different accused products has twenty-six discrete subparts 8 because “a party cannot avoid the numerical limits by asking questions about distinct subjects, 9 but numbering the questions as subparts.” (quoting 7-33 Moore's Fed. Prac.-Civ. § 33.30[2] 10 (Magistrate Judge Chen’s emphasis))); Stamps.com v. Endicia, Inc., No. 06-7499, 2009 WL 11 2576371, at *3 (C.D. Cal. May 21, 2009) (ruling that “interrogatories seeking facts relating to 12 separate patents or separate accused products seek information concerning distinct subjects and, 13 therefore, constitute separate interrogatories” (emphasis added)). Magistrate Judge Austin 14 recently used interrogatories directed at multiple products as an example of interrogatories 15 containing discrete subparts. Singleton v. Hedgepath, No. 08-95, 2011 WL 1806515, at *7 (E.D. 16 Cal. May 10, 2011) (citing Collaboration Props.). 17 Despite IconFind’s conclusory argument that the information requested for each accused 18 instrumentality is “logically and factually subsumed within and necessarily related to the primary 19 question,” the fact remains that these interrogatories request three distinct sets of information. In 20 answering the interrogatories that ask Google to identify documents associated with the accused 21 22 23 24 25 2 Interrogatory No. 8 actually consists of six discrete subparts because it falls into Category 1 (interrogatories requesting information related to all three accused products) and Category 2 (interrogatories requesting identification of facts, documents and persons with knowledge of those facts). Google presents these arguments in different sections for clarity. JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 15 - 1 products (1, 3-5 and 8), Google will identify three independent sets of document. The three 2 accused products are not related in any material way apart from the fact that they are all accused 3 of infringement by IconFind. Each was developed by different groups of engineers at a different 4 time for a different purpose. In order to answer these interrogatories, Google attorneys will have 5 to speak with three different sets of engineers and will need to pull data and documents from 6 various product-specific resources. IconFind’s decision to label them in the singular (“Accused 7 Google Instrumentality”) does not make them a single product, or even a group of related 8 products. 9 IconFind also asserts that Google’s position is incorrect because if, hypothetically, 10 IconFind had accused twenty-five products it would only be allowed to ask one interrogatory. In 11 Collaboration Props., where twenty-six products were accused, Judge White imposed a fifty 12 interrogatory limit and Magistrate Judge Chen found that interrogatories directed at all accused 13 products contained twenty-six discrete subparts. 14 completely irrelevant to the facts of this case, it has also been decided in favor of Google’s 15 position in prior case law. So, not only is IconFind’s hypothetical 16 The purpose of the numerical limit to interrogatories is to prevent discovery that is 17 unduly burdensome. See Advisory Committee Note to 1993 Amendment to Fed.R.Civ.P. 33(a) 18 (“the aim [of the numerical limit ...] is to provide judicial scrutiny before parties make potentially 19 excessive use of this discovery device”). Gathering the requested information on an accused 20 product is burdensome, and Interrogatory Nos. 1-5, and 8 are each three times as burdensome 21 because they are directed at three distinct products. Under the law, interrogatories directed at 22 distinct products are properly considered as separate interrogatories. 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 16 - 1 c. 2 Interrogatories Nos. 6-16 Each Contain Multiple Subparts Because They Require Identification Of Facts, Documents And Persons With Knowledge Of Those Facts 3 Interrogatory Nos. 8-16 each seek identification of “all information, including but not 4 limited to documents...” as well as “all persons having knowledge related to [the information 5 provided in subpart 1].” Thus, each of these interrogatories contains at least two discrete 6 subparts: identification of persons and identification of documents. See Superior Comm’ns v. 7 Earhugger, Inc., 257 F.R.D. 215, 218 (C.D. Cal. 2009). In Superior, Interrogatory no. 1 read: 8 “State all of the facts that support or undermine the allegation in YOUR answer to the 9 Complaint. Identify all PERSONS who have knowledge of these facts. Identify all 10 DOCUMENTS and things that RELATE or refer to those facts.” The court found that this 11 interrogatory consisted of three discrete subparts: “facts; persons; and documents.” Id. (citing 12 Safeco v. Rawstron, 181 F.R.D. 441, 445-48 (C.D. Cal. 1998)); U.S. ex rel. Pogue v. Diabetes 13 Treatment Centers of Am., Inc., 235 F.R.D. 521, 527 (D.D.C. 2006) (Interrogatory seeking “all 14 facts supporting Relator's contention that [defendant] was aware of the illegal conduct of the 15 medical directors ...; asks Relator to identify each person who knew, and to explain how they 16 knew, of the violations [and] requests that Relator identify all documents that support the 17 contention as to each medical director” is “more accurately counted as three separate 18 interrogatories.”). 19 IconFind’s argument that counting each discrete subpart as an additional interrogatory 20 will result in it being denied evidence and documents necessary to support its claims is an 21 exaggeration. All the documents that IconFind seeks identification of in these interrogatories 22 will be produced pursuant to IconFind’s Requests For Production. See Iconfind’s Requests For 23 Production, attached as Exhibit D, and compare Interrogatory 8(a) to RFP 32; Interrogatory 9(a) 24 to RFP 33; Interrogatory 10(a) to RFP 34; Interrogatory 11(a) to RFP 35; Interrogatory 12(a) to 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 17 - 1 RFP 36; Interrogatory 13(a) to RFP 37; Interrogatory 14(a) to RFP 38; Interrogatory 15(a) to 2 RFP 39. Thus, IconFind will have the names of all the people that it may want to depose from 3 these interrogatories as well as all the documents it wishes to review from its requests for 4 production regardless of how these interrogatories are counted. 5 Similar to Nos. 8-16, Interrogatory No. 7 requests that Google (1) “describe in detail the 6 complete factual basis” for its reasonable royalty calculation; (2) identify the documents relied 7 on; and (3) identify all factors relevant to a hypothetical negotiation. Again, identification of 8 documents and identification of facts constitute two discrete subparts. Superior Comm’ns, 257 9 F.R.D. at 218. IconFind has conceded that Interrogatory No. 6 contains two discrete subparts. 10 11 12 Google respectfully requests that the Court find that each of these interrogatories contain at least two discrete subparts. d. IconFind’s Request For Additional Interrogatories Should Be Denied Because It Is Unnecessary And Premature 13 IconFind agreed that “[t]he limitations of the Federal Rules of Civil Procedure shall 14 govern depositions, interrogatories and all other discovery, absent further agreement of the 15 parties or leave of the Court.” Joint Status Report (Dkt. 47) at 6. Now, before it has even 16 reached the limit to which it agreed, IconFind prematurely asks this Court to triple the number of 17 interrogatories it may propound. 18 Despite IconFind’s accusations, Google has not unreasonably refused to stipulate to 19 additional interrogatories. First, the parties discussed the interrogatory limit months ago and 20 both sides agreed that the limit supplied by the Rule 33(a) would be appropriate in this case and 21 memorialized that agreement and communicated it to the Court in the Joint Status Report. Dkt. 22 47. It is not unreasonable for a party to hold another party to its prior agreements. Second, 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 18 - 1 IconFind has proposed tripling the number of interrogatories without providing any reason why 2 that is required. Obviously, responding to 75 interrogatories is very burdensome. 3 In its papers, IconFind advances a new standard for allowing additional interrogatories: 4 if the interrogatories “clearly request relevant information” then they should be allowed. This 5 new standard is not supported by the Federal Rules or relevant case law. 6 Chapman v. California Dept. of Educ., No. 01-1780, 2002 WL 32854376 (N. D. Cal. Feb. 6, 7 2002) to support its new standard. In Chapman, the Court granted the plaintiff additional 8 interrogatories because (1) the interrogatories were neither cumulative nor duplicative; and (2) 9 the requests to identify documents “could have been propounded as a request for production of 10 documents under Rule 34 for which the Rule 33(a) numerical limit of interrogatories would not 11 apply.” Id. at *2 (emphasis added). In this case, the request for identification of documents 12 requested in Interrogatory Nos. 9-15 has already been propounded as a request for production of 13 documents. Thus, these interrogatories are clearly duplicative of other discovery requests. There 14 is no reason to grant additional interrogatories in order to request identification of materials 15 already requested. Finally, the Chapman Court sua sponte granted additional interrogatories that 16 had actually been served by the plaintiff and objected to by the defendant as over the limit. 17 Plaintiff Chapman did not receive additional interrogatories before reaching the limit imposed by 18 the Federal Rules or before it had actually informed the defendant of the scope of the additional 19 requested discovery as IconFind now requests of this Court. IconFind cites 20 In the Joint Status Report the parties agreed to follow the Northern District of 21 California’s Patent Local Rules with regard to invalidity contentions. Dkt. 47 at 5(d). Google’s 22 invalidity contentions are due August 15th and require Google to exchange the same substantive 23 materials requested in Interrogatory Nos. 9-12. To the extent that these interrogatories call for 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 19 - 1 non-privileged information, they are cumulative of the required invalidity contentions. 2 Therefore, these interrogatories are unnecessary. 3 IconFind claims that it is entitled to additional interrogatories beyond the agreed limit 4 because this is a complex patent case and cites other patent cases where more than twenty-five 5 interrogatories were propounded. Protective Optics, Inc. v. Panoptx, Inc., No. 05-2732, 2007 6 WL 963972 (N.D. Cal. Mar. 30, 2007) (ordering defendant to answer particular interrogatories 7 already served and objected to beyond the limit of twenty-five where fourteen separate products 8 were accused); Collaboration Props., Inc. v. Polycom, Inc., 224 F.R.D. 473 (N. D. Cal 2004) 9 (limit of fifty interrogatories imposed by Judge White where twenty-six different products were 10 accused and each interrogatory aimed at the accused product counted as twenty-six discrete 11 subparts). In this case, three separate products are accused of infringing one patent. This case 12 does not come close to the complexity of the cited cases. Furthermore, neither case granted the 13 plaintiff anything that even approached twenty-five interrogatories per accused product, as 14 IconFind now requests. 15 Therefore, Google respectfully requests that IconFind’s request for additional 16 interrogatories be denied so that IconFind is held to the agreed limit of twenty-five. Should 17 Iconfind wish to serve interrogatories exceeding the agreed to 25 limit, Google will negotiate 18 with them in good faith to determine whether the interrogatories are not cumulative or otherwise 19 designed merely to increase the costs of litigation. 20 21 Respectfully submitted, Respectfully submitted, 22 /s/ Anna B. Folgers NIRO, HALLER & NIRO Raymond P. Niro (Pro hac vice) RNiro@nshn.com Raymond P. Niro, Jr. (Pro hac vice) /s/ Kenneth M. Maikish KAYE SCHOLER LLP Michael J. Malecek (Pro hac vice) michael.malecek@kayescholer.com Kenneth M. Maikish (Pro hac vice) 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 20 - 1 2 3 4 5 6 RNiroJr@nshn.com Brian E. Haan (Pro hac vice) BHaan@nshn.com Anna B. Folgers (Pro hac vice) AFolgers@nshn.com kenneth.maikish@kayescholer.com Attorneys for Defendant, Google Inc. WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP Thomas G. Redmon (SBN 47090) TRedmon@wilkefleury.com Daniel L. Baxter (SBN 203862) DBaxter@wilkefleury.com 7 Attorneys for Plaintiff, IconFind, Inc. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM) - 21 - 1 2 CERTIFICATE OF SERVICE The undersigned hereby certifies that on July 21, 2011 the foregoing 3 JOINT STATEMENT RE DISCOVERY DISAGREEMENT 4 was filed with the Clerk of Court using the CM/ECF system, which will then send a notification of such filing to the following counsel of record. 5 Michael J. Malecek Michael.malecek@kayescholer.com Kenneth Maikish Kenneth.maikish@kayescholer.com Kaye Scholer LLP Two Palo Alto Square, Suite 400 3000 El Camino Real Palo Alto, California 94306 Telephone: (650) 319-4500 Facsimile: (650) 319-4700 6 7 8 9 10 11 12 Attorneys for Defendant Google Inc. I certify that all parties in this case are represented by counsel who are CM/ECF participants. 13 /s/ Daniel L. Baxter Attorneys for Plaintiff 14 15 16 17 18 19 20 21 22 23 24 25 JOINT STATEMENT RE DISCOVERY DISAGREEMENT (Case No. 11-00319 GEB JFM)

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