Implicit Networks, Inc. v. Juniper Networks, Inc.

Filing 89

ORDER ON DISCOVERY MOTIONS 81 85 86 (Illston, Susan) (Filed on 6/5/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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IMPLICIT NETWORKS, INC.,

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Plaintiff,

United States District Court
For the Northern District of California

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No. C 10-04234 SI
ORDER ON DISCOVERY MOTIONS

v.
JUNIPER NETWORKS, INC.,

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Defendant.

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Currently before the Court are three discovery motions. The Court will address each in turn.

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1.

Implicit’s Motion to Compel Juniper to Produce Patent License Discovery

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Implicit asks the Court to order Juniper to identify and produce patent licenses covered by

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Interrogatory No. 9 as well as Requests for Production Nos. 10 and 23 which cover all licences (“in”

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and “out” and “cross”) regarding computer networking technology. Docket No. 85. Implicit argues that

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Juniper has failed to agree or disagree to Implicit’s requests, and that Juniper’s responses to date about

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whether they have fully complied with the requests have been ambiguous. Id. Juniper responds that

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Implicit’s motion is moot and contends that it has fully complied with Implicit’s requests by providing

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all inbound, outbound or cross licenses, whether entered in connection with litigation or not, covering

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networking technology. Docket No. 87. Implicit has not responded to Juniper’s contentions and,

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therefore, the Court DENIES Implicit’s motion to compel as moot.

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2.

Juniper’s Motion to Compel Implicit to Produce Patent License Discovery
In its motion to compel, Juniper asks the Court to order Implicit to identify: (1) all licensees

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and other entities alleged to have made any embodiment of the patent-in-suit; (2) the alleged

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embodiments; (3) claim charts for the alleged embodiments to the extent Implicit can, based on public

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information; and (4) facts regarding the sales volumes and other information for the alleged

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embodiments to the extent Implicit can, based on public information. Docket No. 81. Juniper also

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wants the Court to order Implicit to produce all documents regarding its licenses, including all

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communications with actual or potential licensees and draft licenses. Id.
As to the discovery aimed at requiring Implicit to identify and disclose documents regarding its

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knowledge of other “alleged embodiments,” the Court finds the discovery overbroad and unduly

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burdensome and DENIES the motion to compel without prejudice. If Juniper demonstrates a particular

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United States District Court
For the Northern District of California

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need for information regarding a specific alleged embodiment or alleged embodiments made by a

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particular manufacturer, the Court will reconsider its motion in that context.

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With respect to the second issue, Implicit responds that it has already provided all of the licenses

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themselves, but objects to producing documents regarding the negotiations and drafting of licenses

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because that information is settlement and negotiation information protected by FRE 408. Both parties

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rely on In re MSTG, Inc., 2012 U.S. App. LEXIS 7092 (Fed. Cir. Apr. 9, 2012). In that case, the Federal

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Circuit found that Rule 408 did not protect settlement discussions from discovery, and held that

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“settlement negotiations related to reasonable royalties and damage calculations are not protected by

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a settlement negotiation privilege.” Id., at *27; see also Matsushita Elec. Indus. Co. v. Mediatek, Inc.,

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2007 U.S. Dist. LEXIS 27437 (N.D. Cal. Mar. 30, 2007) (rejecting existence of federal settlement

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privilege and ordering documents regarding the licensing of, and the negotiations regarding the licensing

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of, the patents-in-suit).

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The MSTG Court, however, recognized “that courts have imposed heightened standards for

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discovery in order to protect confidential settlement discussions” where necessary. Id., at *25-26. In

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MSTG, the Court found that plaintiff had put not only its licenses but also its settlement negotiations

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directly in dispute by having its expert opine that the licenses did not fully represent a reasonably royalty

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and were based in part on other business decisions. Id., *28-29. In light of the expert’s report and

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testimony, the Federal Circuit found that the district court did not abuse its discretion in ordering the

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production of discovery related to the licenses and settlement negotiations. Here, Implicit has not put
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its negotiations of the licenses in dispute. At this juncture therefore, and in light of the special concerns

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surrounding the disclosure of settlement negotiation information, the Court DENIES the motion to

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compel without prejudice.

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Juniper’s motion to compel production of discovery regarding Implicit’s licenses and
negotiations, therefore, is DENIED without prejudice.

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3.

Implicit’s Motion to Compel a Further Answer to Interrogatory No. 3
Implicit also moves to compel Juniper to provide a further answer to Interrogatory No. 3, which

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asks Juniper to set forth its non-infringement contentions and provide a chart setting forth its contentions

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United States District Court
For the Northern District of California

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on an element by element basis. Docket No. 86. Implicit filed this motion by unilateral letter brief on

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May, 30, 2012. Juniper has not, as of this date, filed a responsive letter brief. Implicit notes that the

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parties’ have been pursuing this issue since March 2011, and that after Implicit submitted its latest round

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of revisions to its amended infringement contentions, Juniper promised it would provide the awaited

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further response regarding its non-infringement contentions on May 25, 2012. Now, Implicit argues that

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the May 25, 2012, production is insufficient, as it is only a two-page response – without charts – which

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essentially argues that Implicit has failed to prove infringement. See Docket No. 86-2 at pgs. 9-12. the

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Court has reviewed the May 25, 2012 supplemental response and finds it insufficient. Accordingly,

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Implicit’s motion is GRANTED and Juniper is ORDERED to provide a full response and chart(s)

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for Interrogatory No. 3 no later than June 12, 2012.

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IT IS SO ORDERED.

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Dated: June 5, 2012
SUSAN ILLSTON
United States District Judge

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