Barnes & Noble Inc. v. LSI Corporation et al.

Filing 183

ORDER directing B&N to submit revised proposed Letters of Request re 164 165 . Signed by Magistrate Judge Laurel Beeler on 2/21/2013. (lblc2, COURT STAFF) (Filed on 2/21/2013)

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UNITED STATES DISTRICT COURT

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Northern District of California

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San Francisco Division
BARNES AND NOBLE, INC., et al.,

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For the Northern District of California

UNITED STATES DISTRICT COURT

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Plaintiffs,
v.

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No. C 11-02709 EMC (LB)
ORDER DIRECTING B&N TO
SUBMIT REVISED PROPOSED
LETTERS OF REQUEST

LSI CORPORATION, et al.,
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[Re: ECF Nos. 164, 165]
Defendants.
_____________________________________/
Plaintiffs Barnes & Noble, Inc. and barnesandnoble.com LLC (collectively, “B&N”) filed the

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instant action seeking a declaratory judgment of non-infringement and patent invalidity against

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defendants LSI Corporation and Agere Systems, Inc. (collectively, “LSI”). Original Complaint,

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ECF No. 1.1 LSI answered B&N’s First Amended Complaint and brought counterclaims against

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B&N for patent infringement. Answer and Counterclaims, ECF No. 62.

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On January 18, 2013, B&N filed two motions that ask the court to issue Letters of Request for

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assistance of the central judicial authority of the Netherlands to obtain deposition testimony and

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certain documents from two non-party individuals who reside in the Netherlands. Motion

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(Diepstraten), ECF No. 164; Motion (Van Nee), ECF No. 165. The first individual, Wilhelmus J.M.

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Diepstraton, is a named inventor of the ‘867 patent, and the second individual, Richard D.M. van

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Citations are to the Electronic Case File (“ECF”) with pin cites to the electronic page
number at the top of the document, not the pages at the bottom.
C 11-02709 EMC (LB)
ORDER

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Nee, is a named inventor of the ‘958 patent. Both patents are at issue in this litigation. Mr.

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Diepstraten and Mr. van Nee appeared before the Institute of Electrical and Electronic Engineers’

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(“IEEE”) subgroup for the 802.11 wi-fi standard and made certain representations about these

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patents.

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LSI opposes the motions for four reasons. It argues that: (1) that the Letters of Request

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unnecessarily ask the court “to adopt certain factual and legal findings concerning disputed issues”

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that are irrelevant to the purposes of the Letters of Request; (2) that some of the discovery sought is

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overbroad; (3) that the Letters of Request improperly ask that the depositions be recorded by a

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stenographer, in violation of Dutch law; and (4) that Dutch courts typically do not allow parties or

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party representatives to conduct oral examinations. Opposition, ECF No. 171.
The court heard oral argument from the parties on these motions on February 21, 2013. The

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For the Northern District of California

UNITED STATES DISTRICT COURT

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court explained that it is sympathetic to LSI’s concerns regarding some of the wording in the

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proposed Letters of Request (e.g., that Mr. Diepstraten’s and Mr. van Nee’s testimony “will be

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highly relevant” to this action). The court also explained that, while LSI’s argument about the

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breadth of some of the discovery B&N seeks is well-taken, it does not believe that the document

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requests and depositions topics are overbroad, especially in light of the practical implications that

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limiting them might have on the taking of Mr. Diepstaten’s and Mr. van Nee’s depositions. In

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addition, the court noted that Mr. Diepstaten and Mr. van Nee were recently deposed in the

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Netherlands by attorneys in a different action and that their depositions were recorded by a

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stenographer, so it does not appear that Dutch law categorically bans these procedures, as LSI

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suggests. Finally, the court noted that, if the depositions do occur, LSI requested that its

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representatives be allowed to participate in the depositions and that B&N did not oppose such

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participation.

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The court thus directs the parties, within 7 days from the date of this order, to meet and confer

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with the court’s opinions in mind and directs B&N thereafter to submit revised proposed Letters of

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Request that take these opinions into account. Once these revised proposed Letters of Request are

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submitted, the court will formally rule on B&N’s motions.

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///
C 11-02709 EMC (LB)
ORDER

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IT IS SO ORDERED.
Dated: February 21, 2013
_______________________________
LAUREL BEELER
United States Magistrate Judge

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For the Northern District of California

UNITED STATES DISTRICT COURT

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C 11-02709 EMC (LB)
ORDER

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