Thought, Inc. v. Oracle Corporation et al

Filing 138

Discovery Order re 137 Letter filed by Thought, Inc. Signed by Judge Maria-Elena James on 4/9/2015. (cdnS, COURT STAFF) (Filed on 4/9/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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THOUGHT, INC.,

Case No. 12-cv-05601-WHO (MEJ)

Plaintiff,
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DISCOVERY ORDER DENYING
REQUEST TO COMPEL FINANCIAL
DOCUMENT PRODUCTION

v.
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ORACLE CORPORATION, et al.,

Re: Dkt. No. 137

Defendants.

United States District Court
Northern District of California

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INTRODUCTION

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The Court is in receipt of the parties’ joint discovery dispute letter, filed April 7, 2015.

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Dkt. No. 137. Plaintiff Thought, Inc. moves for an order compelling production of documents

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responsive to its Requests for Production (“RFP”) Nos. 48 and 49, which request financial

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documents relating to “Accused Products.” Jt. Ltr., Ex. A. Having considered the parties’

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positions, relevant legal authority, and the record in this case, the Court issues the following order.

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BACKGROUND

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According to Thought, this dispute resolves itself upon the proper construction of claim 7

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of U.S. Patent No. 5,857,197 (‘197 Patent), which it contends encompasses a combination of three

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distinct tiers of software: applications, middleware, and databases. Jt. Ltr. at 1. Thought

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maintains that it accused such combinations in its infringement contentions, and RFP Nos. 48 and

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49 seek financial documents relating to Oracle’s products accused of infringement. Id. & Exs. A,

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B. Thought contends that Oracle has unreasonably limited its production to a small subset of its

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middleware sales. Id. at 1.

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In response, Oracle states that Thought’s claimed inventions are directed to technology that
appears only in Oracle’s middleware, not in its databases or applications. Id. at 3. According to

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Oracle, Thought’s patents relate to a software technique called object relational mapping

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(“ORM”). Id. ORM is performed by middleware that converts object-oriented programming data

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(“object data”) into a format that can be stored in a relational database (“relational data”) or vice

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versa. Id. Oracle contends that Thought’s patent claims do not concern the operation of front-end

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applications that generate object data nor the back-end databases that store the relational data. Id.

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Instead, the applications and databases are merely the media upon which Thought’s ORM

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technology acts; there is no invention in the patents regarding how applications and databases

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perform their functions. Id. Thus, Oracle argues that there is no basis to conduct discovery—

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financial or otherwise—on its database and application products that merely interface with the

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middleware. Id. at 4.
Thought argues that Oracle’s rationale fails based on the express terms of Thought’s

United States District Court
Northern District of California

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claims:
Claim 7 of the ‘197 Patent (relevant portions below) expressly
recites in the body of the claim (see rectangle) steps performed by
software in three different layers: application software (underlined),
middleware (italics), and database software (bold small caps):
A method for accessing AT LEAST ONE DATA STORE HAVING A
DATA STORE CONTENT AND A DATA STORE SCHEMA as at least
one object from at least one object application comprising the steps
of:
… communicating a request including an object comprising
object attributes and an object name from the object
application to an adapter abstraction layer …
extracting the object attributes and the object name from the
object;
packing the object attributes and the object name as data…
EXECUTING AT LEAST ONE SUCH COMMAND; … .

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Id. at 2. Thought argues that there is no legally recognizable or protected “essential” element, gist,

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or heart of the invention in a combination patent; rather, the invention is defined by the claims,

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and discovery should be provided for all claimed elements. Id. It contends that Oracle’s

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middleware products cannot alone perform all the steps in the body of claim 7, because only an

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application can perform the underlined portion above, and only a database can perform the portion
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shown in bold small caps. Id. In lieu of the underlying documents, Thought has agreed to accept

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spreadsheets showing the requested information. Id. at 1.
LEGAL STANDARD

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Under Federal Rule of Civil Procedure 26(b), “[p]arties may obtain discovery regarding

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any nonprivileged matter that is relevant to any party’s claim or defense.” Fed. R. Civ. P. 26(b).

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“Relevant information need not be admissible at the trial if the discovery appears reasonably

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calculated to lead to the discovery of admissible evidence.” Id. “Relevancy, for the purposes of

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discovery, is defined broadly, although it is not without ultimate and necessary boundaries.”

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Gonzales v. Google, Inc., 234 F.R.D. 674, 679-80 (N.D. Cal. 2006). “[T]he party opposing
discovery has the burden of showing that discovery should not be allowed, and also has the burden

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United States District Court
Northern District of California

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of clarifying, explaining and supporting its objections with competent evidence.” La. Pac. Corp.

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v. Money Mkt. 1 Institutional Inv. Dealer, 285 F.R.D. 481, 485 (N.D. Cal. 2012).
DISCUSSION

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The Court finds that Thought has failed to show why discovery into Oracle’s non-

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middleware products is necessary. There is no dispute that middleware products can communicate

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object data to and from applications and can access a database for the storage of relational data.

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Dkt. No. 109 (previous joint letter) at 6. However, while Thought’s patent claims concern

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middleware’s ORM process, it has not shown that its patent claims concern the operation of front-

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end applications that generate object data or the back-end databases that store the relational data.

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The applications and databases are the media upon which Thought’s ORM technology acts; there

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appears to be no invention in the patents regarding how applications and databases perform their

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functions.

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Even if the asserted claims do not recite an application or database layer, Thought argues

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the requested information is still discoverable because such sales qualify as “convoyed” or

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“bundled” sales. Jt. Ltr. at 2. It asserts that Oracle’s database and application software is licensed

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to Oracle middleware customers and assembled into fully infringing systems. Id. Therefore,

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Thought Argues that such database and application licenses should be considered by a damages

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expert in the proper quantification of both the reasonable royalty base and rate. Id. In support of
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its position, Thought cites to Positive Technologies Inc. v. Sony Electronics, Inc., 2013 WL

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707914, at * 4-6 (N.D. Cal. Feb. 26, 2013), a case in which the court permitted discovery into

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financial information related to non-accused “content and accessories” sold with accused e-

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readers. In that case, the invention was a matrix display on Amazon’s Kindle and Barnes &

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Noble’s Nook e-readers. Id. at *1. Although the court permitted financial discovery into e-reader

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content sold by Amazon and Barnes & Noble, the relevance of the information resulted from the

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fact that the content sold by Amazon operated only on the Kindle, and the same was true with

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respect to content sold by Barnes and Noble and the Nook. Id. at *4. Thus, the Court found that

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“[t]he money that Defendants make on both content and accessories sold with their E-Readers is
probative of the value of Defendant’s use of the display controller scheme, as well as the

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United States District Court
Northern District of California

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commercial success and popularity of the EReaders.” Id.

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While the e-reader device and the content displayed on it were coupled, that is not true for

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Oracle’s middleware; here, all applications and databases work with Oracle middleware, whether

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or not they are manufactured by Oracle. Jt. Ltr. at 4-5.

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middleware is to be a neutral bridge that decouples applications and databases, allowing customers

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to choose each component independently.” Jt. Ltr. at 5 n.10. Thus, the Court finds that Oracle has

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met its burden of showing that the discovery should not be allowed.
CONCLUSION

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As Oracle states, “[t]he very purpose of

Based on this analysis, the Court DENIES Thought’s request to compel production of
documents responsive to its Requests for Production Nos. 48 and 49.
IT IS SO ORDERED.

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Dated: April 9, 2015
______________________________________
MARIA-ELENA JAMES
United States Magistrate Judge

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