Abbyy USA Software House, Inc. v. Nuance Communications, Inc.

Filing 69

ORDER re (114 in 3:08-cv-04942-JSW) Order. Signed by Chief Magistrate Judge MARIA-ELENA JAMES on 4/1/10. (bjt, COURT STAFF) (Filed on 4/7/2010)

1 2 3 4 5 6 7 8 v. 9 ECOPY, INC., 10 11 UNITED UNITED STATES DISTRICT COURT 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION Now before the Court is the joint discovery dispute letter ("Joint Letter") filed by Plaintiff Nuance Communications, Inc. ("Plaintiff") and Defendant I.R.I.S. ("Defendant") on March 11, 2010. (Dkt. #144.) Upon consideration of the contentions in the Joint Letter, the Court ORDERS the following. II. BACKGROUND At the December 18, 2009 case management conference before the Honorable Judge White, the presiding judge in the matter, the Court stated: "I am going to order you to come back with a proposal, or dueling proposals, of a way to slim this case down." (RT 18:3-5, Dkt. #132.) The Court further stated: "I want you to come back having met and conferred on a way to narrow down the claims that are initially adjudicated." Id. at 22:18-20. The Court continued: "I think that's a fair point, and I think you can't have meaningful discussions about possible limitations--it's kind of the proverbial pig in a poke here--until that process is completed." Id. at 15:20-23. The Court went on to say: "What if we complete that process with respect for the initial phases, the next phases of the case, what about that?" Id. at 15:24-25. ///
For the Northern District of California

UNITED STATES DISTRICT COURT Northern District of California
NUANCE COMMUNICATIONS, INC., Plaintiff(s), No. C 08-4227 JSW (MEJ) Consolidated with C 08-4942 JSW (MEJ) ORDER RE: JOINT DISCOVERY DISPUTE LETTER (DKT. #144)

Defendant(s). _____________________________________/

1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
For the Northern District of California

III. DISCUSSION Plaintiff argues that it is entitled to fifty-five claim charts beyond the ones already supplied by Defendant. (Joint Letter at 1.) Plaintiff argues that Defendant identified over seventy prior art references, and argues that Defendant must disclose claim charts for each. Id. Plaintiff seeks an order compelling Defendant to provide a chart for each cited prior art. Id. at 3. In response, Defendant argues that it has provided invalidity contentions on all nine patentsin-suit and provided Plaintiff with twenty-three claim charts, representing "the best presently-known prior art for each patent and claim; and provided at least one claim chart invalidating each and every one of them. . . ." Id. Defendant argue that being required to provide additional claim charts for each item of prior art is excessive in light of Judge White's intention to slim down the case. Id. The Court finds that Defendant's willingness to let its invalidity case stand or fall on the twenty-three charts already produced advances Judge White's directive to "slim this case down." Accordingly, the Court ORDERS the parties to file a joint stipulation and proposed order memorializing Defendant's offer. Additionally, it is unclear to the Court why Plaintiff waited until March 11, 2010 to raise the issue of where the non-infringement documentation would be produced. However, Plaintiff's offer to "pay for a server and necessary hardware onto which the source code could be copied and maintained at the office of [Plaintiff's] U.S. outside counsel[,]" is well-taken. Plaintiff argues that this would enable Defendant to control access to the source code, and would save Plaintiff and its experts from having to travel to a foreign country each time Defendant sought to review the source code.1 The Court finds this reasonable. The parties are hereby ORDERED to meet and confer to finalize the terms of a protective order which will address Defendant's concerns over control of the source code. IV. CONCLUSION The parties are hereby ORDERED to submit a joint stipulation and proposed order

See Fortera Systems, Inc. v. Avatar Factory, 2006 WL 2458804, at *2, where a similar plan was implemented. 2

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1 2 3 4 5 6 7 8 9 10 11 UNITED UNITED STATES DISTRICT COURT 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
For the Northern District of California

memorializing Defendant's offer within seven days following the issuance of this Order. The parties are further ORDERED to meet and confer within two weeks regarding the substance of the abovementioned protective order and to file the stipulated protective order within three weeks following the issuance of this Order. IT IS SO ORDERED.

Dated: April 1, 2010 _______________________________ Maria-Elena James Chief United States Magistrate Judge

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