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

Filing 226

ORDER regarding 214 the parties' discovery letter dated May 2, 2013. Signed by Magistrate Judge Laurel Beeler on 5/17/2013. (lblc2, COURT STAFF) (Filed on 5/17/2013)

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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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No. C 11-02709 EMC (LB)

Plaintiffs,

ORDER REGARDING THE PARTIES’
JOINT DISCOVERY LETTER DATED
MAY 2, 2013

v.
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LSI CORPORATION, et al.,
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[Re: ECF No. 214]
Defendants.
_____________________________________/

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INTRODUCTION

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On May 2, 2013, the parties filed a discovery dispute letter about LSI’s request for source code

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for B&N’s servers and in-store wireless service. See 5/2/2013 Joint Letter, ECF No. 214.1 The

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court held a telephonic hearing on May 16, 2013 and orders disclosure pursuant to the protective

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order.

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STATEMENT

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Plaintiffs Barnes & Noble, Inc. and barnesandnoble.com LLC (collectively, “B&N”) filed this

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lawsuit seeking a declaratory judgment of non-infringement and patent invalidity against defendants

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LSI Corporation and Agere Systems, Inc. (collectively, “LSI”). Original Complaint, ECF No. 1.

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LSI brought counterclaims against B&N for patent infringement. Answer and Counterclaims, ECF

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Citations are to the Electronic Case File (“ECF”) with pin cites to the electronicallygenerated page numbers at the top of the document.
C 11-02709 EMC (LB)
ORDER RE: 1/25/2013 JOINT LETTER

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No. 62. The lawsuit involves whether the Nook’s 3G, WiFi, and audio technology infringes on

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LSI’s patents.

other infringing devices. The court previously ordered source code to show the subject matter of the

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accused patents. 9/6/12 Order, ECF No. 130 at 1. LSI wants to examine parts of the source code

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that play a role in 3G and wifi communications, MP3 playback, sound effects for system and

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keyboard events, and coding and decoding of audio data. B&N made a production, and LSI asserts

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that it was deficient in that a significant amount was missing that related to the playback of MP3

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files, 3G communications, and wifi communication. 5/2/2013 Joint Letter, ECF No. 214 at 1. The

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missing code was deployed in NOOK devices and in B&N servers for in-store wifi, such as code for

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the “Read In Store” feature that allows customers to read ebooks for free and receive targeted

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For the Northern District of California

The current dispute is about LSI’s request for source code not just for the NOOK but also for

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UNITED STATES DISTRICT COURT

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promotions in the store. Id. B&N produced some code (presumably that related to the NOOK

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devices) but refused to produce server code in the form of the in-store wifi code that encourages use

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of the wifi in the store. Id.

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ANALYSIS

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The parties argue about whether LSI accuses only NOOK devices.

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LSI points to (1) its counterclaim accusing the wireless connectivity capability of the NOOK and

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other devices to access B&N content and (2) its infringement contentions where it accuses

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“equipment used in providing free in-store WiFi access,” which necessarily encompasses servers.

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Id. (also pointing to claims charts for the ‘958 and ‘867 patents regarding the “Read In Store”

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functionality and the charts for the ‘730 patent accusing sale of audiobooks via B&N’s website).

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LSI asserts that the code in any event is relevant to its inducement theory. Id.

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B&N responds that LSI accuses only the NOOK devices and that it withholds source code

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responsive to two requests that relate only to B&N’s servers and in-store wireless service and thus

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are beyond the scope of the infringement contentions and requests for production. Id. at 3. It is,

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however, “willing to revisit LSI’s source code requests” after LSI serves its amended contentions.

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The court orders production of the source code. At the hearing, B&N talked about how – even

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with amended contentions – it cannot see the relevance of code related to the servers. LSI
C 11-02709 EMC (LB)
ORDER RE: 1/25/2013 JOINT LETTER

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responded that – for example – the “Read in Store” functionality is used with instore wifi access,

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and this is relevant to show the subject matter of the accused patents. As the court said previously,

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on this record, LSI has articulated a theory of relevance to the subject matter of the accused patents

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that is not limited to the NOOK. The case is about LSI’s patents directed to technologies for

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wireless communication and for the delivery and playback of digital content, and it necessarily

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implicates wifi and digital sales via the B&N website. Also, B&N does not object to LSI’s proposed

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amendments for the patents already at issue in this case. See B&N Response to LSI’s Motion For

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Leave to Amend Infringement Contentions and Counterclaims, ECF No. 211 at 3 (“Barnes & Noble

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does not object to LSI’s proposed amendments regarding Barnes & Noble’s purported ‘in-store

about avoiding piecemeal amendments to the contentions, see 4/11/2013 RT, ECF No. 205 at 22, it

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For the Northern District of California

wireless’ and ‘sales of downloads and digital content’ . . . .”). Given the district court’s reservations

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UNITED STATES DISTRICT COURT

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seems a poor choice to engage in piecemeal discovery that at worst will be covered by amended

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contentions that B&N does not oppose. B&N does not argue burden, and the protective order

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addresses any issues about production of source code.

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CONCLUSION

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The court orders production of the withheld source code pursuant to the protective order. This

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disposes of ECF No. 214.
IT IS SO ORDERED.
Dated: May 17, 2013
_______________________________
LAUREL BEELER
United States Magistrate Judge

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C 11-02709 EMC (LB)
ORDER RE: 1/25/2013 JOINT LETTER

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