Kilopass Technology, Inc. v. Sidense Corporation

Filing 172

ORDER RE: DISCOVERY (Illston, Susan) (Filed on 12/13/2011)

Download PDF
1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 KILOPASS TECHNOLOGY INC., 9 Plaintiff, United States District Court For the Northern District of California 10 11 No. C 10-02066 SI ORDER RE: DISCOVERY v. SIDENSE CORPORATION, 12 Defendant. / 13 14 Plaintiff Kilopass Technology, Inc. (“Kilopass”), filed this action for patent infringement under 15 Patent Laws of the United States, 35 U.S.C. § 100, et seq., against defendant Sidense Corporation 16 (“Sidense”). On November 17 and 23, 2011, the parties submitted letter briefs which present various 17 discovery disputes to the Court. The issues will be addressed in turn. 18 19 20 I. Kilopass’ Initial Response to Sidense’s Contention Interrogatories 3-8 In its first set of interrogatories and document requests, served on Kilopass on February 23, 21 2011, Sidense included a number of contention interrogatories. 22 interrogatories call for “all facts that support or rebut” Kilopass’ claims for equitable and monetary relief 23 for patent infringement (3-4) and “all facts that support or rebut” Kilopass’ business tort causes of action 24 (5-8). Kilopass responded on March 28, 2011, and supplemented its responses on June 27, 2011. Doc. 25 170, Exs. A and B. In its responses, Kilopass stated that it “will further produce relevant and non- 26 27 28 Doc. 170, Ex. A., 3-8. The 1 privileged business records pursuant to Fed. R. Civ. P. 33(d), to the extent that they exist.”1 See, e.g., 2 ex. A., 9:5-7. Sidense contends that Kilopass agreed to produce its Rule 33(d) responses by November 3 7, 2011, but has failed to do so. Kilopass argues that it informed Sidense’s counsel they would only 4 identify any relevant 33(d) documents after document products and discovery was complete, particularly 5 since Sidense produced 2.2 million pages of documents between October 31st and November 22nd. 6 Kilopass argues that it is Sidense’s burden to show that it is entitled to responses to contention 7 interrogatories before discovery is complete. Judge Brazil, in In re Convergent Technologies Litigation, 108 F.R.D. 328 (N.D. Cal. 1985), 9 engaged in a comprehensive analysis of contention interrogatory requests. The court expressed 10 United States District Court For the Northern District of California 8 skepticism about the quality of information that early responses to contention interrogatories are likely 11 to contain, particularly before the responding party has had a chance to review produced documents. 12 Id. at 338. Without resorting to a rigid rule that precludes entirely the early use of contention 13 interrogatories, the court found that “the wisest course . . . is to place a burden of justification on a party 14 who seeks answers to these kinds of questions before substantial documentary or testimonial discovery 15 has been completed . . . [T]he propounding party must present specific, plausible grounds for believing 16 that securing early answers to its contention questions will materially advance the goals of the Federal 17 Rules of Civil Procedure.” Id. at 339. 18 Sidense has not provided the Court with any justification to compel responses to its contention 19 interrogatories before Kilopass has had the opportunity to review the voluminous document production 20 in this case. Sidense’s request, therefore, is DENIED. 21 22 23 1 24 25 26 27 28 Federal Rule of Civil Procedure 33(d) describes an optional procedure for producing business records. It states that, “If the answer to an interrogatory may be determined by examining, auditing, compiling, abstracting, or summarizing a party’s business records (including electronically stored information), and if the burden of deriving or ascertaining the answer will be substantially the same for either party, the responding party may answer by: (1) specifying the records that must be reviewed, in sufficient detail to enable to interrogating party to locate and identify them as readily as the responding party could; and (2) giving the interrogating party a reasonable opportunity to examine and audit the records and to make copies, compilations, abstracts, or summaries.” 2 1 II. Kilopass’ Responses to Sidense’s Document Requests 2 A. 3 Sidense’s document request Nos. 5 and 6 relate to the conception and reduction to practice of 4 the patents-in-suit. Sidense contends that Kilopass is in possession of an “invention notebook” of one 5 alleged inventor of the patents, Jack Peng. Kilopass responds that Mr. Peng is no longer Kilopass’ 6 employee, and that it does not have possession of this notebook. Sidense’s request is therefore 7 DENIED. 8 of the technology in dispute, the 1-T memory cell, including any documents referencing tests that 9 Kilopass conducted. According to Sidense, Kilopass has produced only a “handful” of documents Document Request: “Invention Notebook” and 1-T Sidense also requests that Kilopass produce documents related to the manufacturability United States District Court For the Northern District of California 10 referencing these efforts (Bates 00001-94). 11 produced the documents that it was able to find using Sidense’s specifically requested and devised 12 search terms. Sidense’s request is therefore DENIED. Kilopass argues that it has already searched for and 13 14 B. 15 Sidense requests that Kilopass produce all communications between it and any third party about 16 Sidense or the patents-in-suit. It cites to document request Nos. 3, 7, 24, 35, 37, 39, and 41, though 17 request Nos. 3 and 7 relate to Kilopass’ organizational structure and the products embodying the patents, 18 respectively. With respect to those requests, Kilopass states that it has produced the documents, and 19 thus Sidense’s request is DENIED. Document Request Nos. 3, 7, 24, 35, 37, 38, 39, 41 20 With respect to the requests relating to communications between Kilopass and any third party 21 about Sidense or the patents-in-suit, Sidense argues that Kilopass has not produced communications that 22 occurred after the filing of the lawsuit in May 2010. Kilopass argues that it followed the terms of the 23 parties’ June 23, 2011 E-Discovery agreement; it conducted the search requested between March and 24 April 2011, and provided 5,676 documents that contained the word “Sidense” and 5,774 documents that 25 contain the word “patent.” Kilopass argues that “Sidense has not shown why Kilopass should be 26 burdened to conduct a new search for every single possible communication mentioning Sidense or why 27 the Court should compel production in response to such overly broad and non-particularized requests 28 when Sidense already has thousands of documents in its possession that include communications 3 1 between Kilopass and third parties mentioning Sidense or the patents in suit.” Doc. 171, at 2. 2 The Court agrees with Kilopass; Sidense has not stated the relevance of a new search regarding 3 communications mentioning Sidense since the search was run in April 2011. The Court DENIES 4 Sidense’s request without prejudice. 5 6 7 IT IS SO ORDERED. 8 9 Dated: December 13, 2011 SUSAN ILLSTON United States District Judge 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

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?