EON Corp. IP Holdings, LLC v. Apple Inc.

Filing 184

ORDER ON DISCOVERY DISPUTE re 176 Statement. Signed by Judge William H. Orrick on 06/14/2016. (jmdS, COURT STAFF) (Filed on 6/14/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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EON CORP IP HOLDINGS LLC,

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Case No. 14-cv-05511-WHO

Plaintiff,
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v.

ORDER ON DISCOVERY DISPUTE

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Re: Dkt. No. 176

APPLE INC.,

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Defendant.

United States District Court
Northern District of California

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Currently before me is EON’s motion to compel Apple to produce documents responsive

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to EON’s second request for production of documents. As narrowed on this motion, EON seeks

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documents relating to APNs1, iMessage, or FaceTime that were created, filed, or used at trial in

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three prior patent infringement cases where Apple was a party: VirnetX Inc. v. Apple Inc., No.

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6:12-cv-00855-RWS (E.D.Tx.); Unwired Planet, LLC v. Apple Inc., No. 13-cv-04134-VC

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(N.D.Cal); SimpleAir, Inc. v. AWS Convergence Technologies, Inc., et. al., No. 2-09-cv-00289

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(E.D.Tx.).
In this District, “the appropriate standard for determining the relevance of documents from

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those other cases turned on the similarity between the patents in the disputes. To satisfy the

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standard, the other case must involve ‘the patents-in-suit or patents covering the same or similar

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technologies, features, or designs as the patents-in-suits.’ . . . . [T]he starting point of the

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‘technological nexus’ inquiry is the patents at issue, not the products at issue. And so, to ascertain

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the degree to which the technology overlaps, the necessary comparison here is between the patents

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involved in this case and the patents in the earlier disputes.” Apple Inc. v. Samsung Elecs. Co.,

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No. 12-CV-0630-LHK PSG, 2013 WL 3246094, at *20 (N.D. Cal. June 26, 2013). “The failure to

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APNs are Apple Push Notifications.

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meet the technological nexus standard, however, does not preclude discovery from other litigation.

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The party seeking discovery instead must show that each category of documents it seeks is

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relevant under the traditional Rule 26(b) standard.” Id.

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EON contends that the “technological nexus” between the patents at issue in this case and

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the patents at issue in the VirnetX, Unwired Planet, and SimpleAir cases “are methods and systems

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for the establishment and transmission of data to subscriber units over data connections.” Dkt.

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No. 179 at 2. Apple counters that EON’s definition of nexus is far too broad, impermissibly relies

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on the ’101 Patent (which Apple asserts does not mention or accuse APNs, iMessage, or

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FaceTime), and is inconsistent with EON’s prior representations about the scope of the ’491
Patent claims at issue. Apple’s version of the technological nexus is much narrower: “a system

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United States District Court
Northern District of California

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that determines whether Path A is impaired and then transfers communication to Path B as a

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result.” Dkt. No. 180 at 4.

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In my prior Order requiring supplemental briefing on this dispute (Dkt. No. 178), I directed

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EON to show – through citation to specific portions of the dockets in the VirnetX, Unwired Planet,

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and SimpleAir cases – where the claims actually litigated in those cases overlap with the patent

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claims/technology at issue here. Dkt. No. 178. EON failed to do so (other than a citation to the

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Markman Order in the SimpleAir case). However, EON did cite to portions of the dockets in those

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three cases to explain the relevance under the general Rule 26(b) standard, in particular where data

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transmission and the FaceTime and APNs instrumentalities accused in this case were discussed.

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Dkt. No. 179 at 5-7.

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While Apple complains of burden and lack of proportionality, as well as the difficultly of

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handling other parties’ confidential information under the protective orders in those cases, Apple’s

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concerns can be accommodated. I ORDER that:

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1. Apple shall produce from the VirnetX, Unwired Planet, and SimpleAir cases the

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relevant portions of documents discussing APNs, iMessage, and FaceTime contained

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in: (i) expert reports, (ii) deposition transcripts; (iii) trial transcripts; and (iv) trial

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exhibits.

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2. Apple shall not produce information regarding other parties’ products or technology
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that is protected by the protective orders or sealing orders in those cases.
If, after reviewing the production required by this Order, EON has a good faith basis for

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seeking additional categories of information (e.g., pleadings or discovery responses), it may do so,

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but only if supported by specific citations to materials already produced to demonstrate relevance.

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IT IS SO ORDERED.
Dated: June 14, 2016
______________________________________
WILLIAM H. ORRICK
United States District Judge

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United States District Court
Northern District of California

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