ChriMar Systems Inc. et al v. Cisco Systems Inc. et al

Filing 150

ORDER by Judge Maria-Elena James denying 144 Discovery Letter Brief (mejlc2, COURT STAFF) (Filed on 8/29/2013)

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UNITED STATES DISTRICT COURT

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Northern District of California

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CHRIMAR SYSTEMS INC,

No. C 13-01300 JSW (MEJ)

Plaintiff,

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DISCOVERY ORDER RE AUGUST 12,
2013 JOINT DISCOVERY LETTER
[Dkt. No. 144]

v.
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CISCO SYSTEMS INC, et al.,
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Defendants.
_____________________________________/

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For the Northern District of California

UNITED STATES DISTRICT COURT

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I. INTRODUCTION

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On August 12, 2013, the parties in this patent infringement lawsuit filed a Joint Letter

14 regarding whether the patentee, Chrimar, should be required to provide contentions regarding the
15 damages it seeks from Defendants and whether Defendants should be required to provide contentions
16 on damages sought from Chrimar. Jt. Ltr., Dkt. No. 144. After considering the parties’ arguments,
17 the Court DENIES Defendants’ request for early damages contentions.
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II. BACKGROUND
Plaintiff ChriMar filed a patent infringement suit against Defendants in the United States

20 District Court for the District of Delaware on October 31, 2011, alleging infringement on U.S. Patent
21 No. 7,457,250 (the ‘250 patent), which covers Power Over Ethernet products. Dkt. No. 1.
22 Defendants then filed counterclaims against ChriMar based on alleged fraud and anticompetitive
23 conduct. On November 1, 2011, ChriMar filed suit in the United States International Trade
24 Commission (ITC), also alleging infringement of the ‘250 patent. Jt. Ltr. at 3. The District of
25 Delaware action was stayed during the ITC proceeding. Id. In the ITC proceeding, the parties
26 engaged in written and testimonial discovery and exchanged expert reports. Id. ChriMar
27 subsequently dismissed the ITC action in November 2012. Id. On March 6, 2013, the district court
28 action was transferred to this court and assigned to the Honorable Jeffrey S. White. Dkt. No. 83.

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On June 14, 2013, the parties filed their Joint Case Management Statement, wherein

2 Defendants requested that ChriMar be required to provide contentions regarding damages they sought
3 from Defendants, and Defendants would in turn provide contentions related to the damages they
4 sought in their counterclaims. Dkt. No. 127 at 11-13. Plaintiff opposed the request. Id. at 12-13.
5 Judge White then referred the discovery issue to the undersigned for consideration. Dkt. No. 138.
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III. DISCUSSION
In their joint letter, Defendants argue that Chrimar should be required to provide damage

8 contentions conforming to Exhibit A to the Joint Letter. Jt. Ltr., Ex. A, Dkt. No. 144-1. They argue
9 that Chrimar received sufficient discovery during the ITC proceedings, and requiring them to provide
10 damage contentions based on discovery currently in their possession would help “streamline the

12 with discovery that included license agreements for the patented products in questions, along with
For the Northern District of California

UNITED STATES DISTRICT COURT

11 issues” and “frame subsequent discovery.” Jt. Ltr. at 4. Defendants argue that they provided Chrimar

13 quarterly reports containing sufficient revenue details with which to base their damage calculations
14 from. Id.
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ChriMar opposes early damages contentions. Id. at 6. With respect to discovery produced

16 during the ITC action, ChriMar argues that because monetary damages were not available in that
17 proceeding, it did not seek damages-related discovery and any damages-related information produced
18 by Defendants was incidental to other discovery requests, is incomplete as to the scope of information
19 needed to prepare damages contentions, and has not been the subject of expert reports. Id. ChriMar
20 further argues that Defendants provided “no meaningful information regarding their counterclaim21 based damages despite fully participating in discovery at the ITC.” Id. ChriMar thus asserts that the
22 parties should proceed with the normal discovery protocol set forth in the Federal Rules of Civil
23 Procedure and the Civil Local Rules.
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The Court has considered the parties’ arguments and agrees with Chrimar that requiring the

25 parties to provide damage contentions at this stage would be premature. As Chrimar points out, the
26 ITC proceedings did not involve monetary damages and thus Chrimar did not seek monetary
27 damages-related discovery during the ITC proceedings. Further, requiring the parties’ to assess their
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1 damages before undertaking meaningful discovery on the issues will not save the parties’ time or
2 money if Chrimar will be forced to amend its contentions after receiving further discovery from
3 Defendants. Accordingly, the Court DENIES Defendants’ request to require the parties to complete
4 damages contentions at this stage of the proceedings.
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IT IS SO ORDERED.

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7 Dated: August 29, 2013
_______________________________
Maria-Elena James
United States Magistrate Judge

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For the Northern District of California

UNITED STATES DISTRICT COURT

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