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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1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 IMPLICIT NETWORKS, INC., 9 Plaintiff, United States District Court For the Northern District of California 10 11 No. C 10-04234 SI ORDER ON DISCOVERY MOTIONS v. JUNIPER NETWORKS, INC., 12 Defendant. / 13 Currently before the Court are three discovery motions. The Court will address each in turn. 14 15 16 1. Implicit’s Motion to Compel Juniper to Produce Patent License Discovery 17 Implicit asks the Court to order Juniper to identify and produce patent licenses covered by 18 Interrogatory No. 9 as well as Requests for Production Nos. 10 and 23 which cover all licences (“in” 19 and “out” and “cross”) regarding computer networking technology. Docket No. 85. Implicit argues that 20 Juniper has failed to agree or disagree to Implicit’s requests, and that Juniper’s responses to date about 21 whether they have fully complied with the requests have been ambiguous. Id. Juniper responds that 22 Implicit’s motion is moot and contends that it has fully complied with Implicit’s requests by providing 23 all inbound, outbound or cross licenses, whether entered in connection with litigation or not, covering 24 networking technology. Docket No. 87. Implicit has not responded to Juniper’s contentions and, 25 therefore, the Court DENIES Implicit’s motion to compel as moot. 26 27 28 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 1 and other entities alleged to have made any embodiment of the patent-in-suit; (2) the alleged 2 embodiments; (3) claim charts for the alleged embodiments to the extent Implicit can, based on public 3 information; and (4) facts regarding the sales volumes and other information for the alleged 4 embodiments to the extent Implicit can, based on public information. Docket No. 81. Juniper also 5 wants the Court to order Implicit to produce all documents regarding its licenses, including all 6 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 8 knowledge of other “alleged embodiments,” the Court finds the discovery overbroad and unduly 9 burdensome and DENIES the motion to compel without prejudice. If Juniper demonstrates a particular 10 United States District Court For the Northern District of California 7 need for information regarding a specific alleged embodiment or alleged embodiments made by a 11 particular manufacturer, the Court will reconsider its motion in that context. 12 With respect to the second issue, Implicit responds that it has already provided all of the licenses 13 themselves, but objects to producing documents regarding the negotiations and drafting of licenses 14 because that information is settlement and negotiation information protected by FRE 408. Both parties 15 rely on In re MSTG, Inc., 2012 U.S. App. LEXIS 7092 (Fed. Cir. Apr. 9, 2012). In that case, the Federal 16 Circuit found that Rule 408 did not protect settlement discussions from discovery, and held that 17 “settlement negotiations related to reasonable royalties and damage calculations are not protected by 18 a settlement negotiation privilege.” Id., at *27; see also Matsushita Elec. Indus. Co. v. Mediatek, Inc., 19 2007 U.S. Dist. LEXIS 27437 (N.D. Cal. Mar. 30, 2007) (rejecting existence of federal settlement 20 privilege and ordering documents regarding the licensing of, and the negotiations regarding the licensing 21 of, the patents-in-suit). 22 The MSTG Court, however, recognized “that courts have imposed heightened standards for 23 discovery in order to protect confidential settlement discussions” where necessary. Id., at *25-26. In 24 MSTG, the Court found that plaintiff had put not only its licenses but also its settlement negotiations 25 directly in dispute by having its expert opine that the licenses did not fully represent a reasonably royalty 26 and were based in part on other business decisions. Id., *28-29. In light of the expert’s report and 27 testimony, the Federal Circuit found that the district court did not abuse its discretion in ordering the 28 production of discovery related to the licenses and settlement negotiations. Here, Implicit has not put 2 1 its negotiations of the licenses in dispute. At this juncture therefore, and in light of the special concerns 2 surrounding the disclosure of settlement negotiation information, the Court DENIES the motion to 3 compel without prejudice. 4 5 Juniper’s motion to compel production of discovery regarding Implicit’s licenses and negotiations, therefore, is DENIED without prejudice. 6 7 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 9 asks Juniper to set forth its non-infringement contentions and provide a chart setting forth its contentions 10 United States District Court For the Northern District of California 8 on an element by element basis. Docket No. 86. Implicit filed this motion by unilateral letter brief on 11 May, 30, 2012. Juniper has not, as of this date, filed a responsive letter brief. Implicit notes that the 12 parties’ have been pursuing this issue since March 2011, and that after Implicit submitted its latest round 13 of revisions to its amended infringement contentions, Juniper promised it would provide the awaited 14 further response regarding its non-infringement contentions on May 25, 2012. Now, Implicit argues that 15 the May 25, 2012, production is insufficient, as it is only a two-page response – without charts – which 16 essentially argues that Implicit has failed to prove infringement. See Docket No. 86-2 at pgs. 9-12. the 17 Court has reviewed the May 25, 2012 supplemental response and finds it insufficient. Accordingly, 18 Implicit’s motion is GRANTED and Juniper is ORDERED to provide a full response and chart(s) 19 for Interrogatory No. 3 no later than June 12, 2012. 20 21 IT IS SO ORDERED. 22 23 Dated: June 5, 2012 SUSAN ILLSTON United States District Judge 24 25 26 27 28 3

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