GoPro, Inc. v. 360Heros, Inc.

Filing 47

ORDER RE: DISCOVERY (Illston, Susan) (Filed on 3/23/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GOPRO, INC.,
Plaintiff,

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ORDER RE: DISCOVERY

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v.

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360HEROS, INC.,

Re: Dkt. No. 41
Defendant.

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United States District Court
Northern District of California

Case No. 16-cv-01944-SI

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The Court is in receipt of the parties’ joint discovery letter. Dkt. No. 41. The parties

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dispute: (i) the sufficiency of GoPro’s document productions in response to 360Heros’ requests for

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production; and (ii) the sufficiency of GoPro’s answers to interrogatories 3, 4, 6, 7, 10, and 11.

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The Court addresses these disputes in turn.

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I.

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Document Productions
360Heros served its First Request for Production of Documents on October 27, 2016. See
GoPro served objections to 360Heros’ request on

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Joint Statement (Dkt. No. 41), Ex. A.

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November 29, 2016. Id., Ex. B. The parties met and conferred; GoPro served its first document

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production on February 1, 2017 and its second production on February 17, 2017. Joint Statement

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at 2.

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360Heros argues that GoPro has not yet produced documents responsive to many of its

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requests, and that the productions GoPro has made do not sufficiently identify the extent of those

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productions or state whether GoPro is withholding responsive documents. 360Heros asks the

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Court to order GoPro to produce, “within ten days[,] all documents responsive to 360Heroes’

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Requests for Production and indicate in the Responses the extent of GoPro’s production and

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whether GoPro has withheld documents . . . .” Joint Statement at 2.

360Heros states that GoPro has failed to produce documents pursuant to Requests 4, 5, 6-

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13, 19-20, 22, and “many other[s] . . . including” Requests 30-38, 41-42, 45-55, 57-61, and 69.

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GoPro contends that submitting this dispute to the Court is premature because the parties have not

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attempted to resolve their disagreements informally and in good faith, and because “360Heros

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itself has insisted on delaying discovery of Electronically Stored Information (‘ESI’).” Joint

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Statement at 3, 5.

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complaints, it explained to 360Heros that: (i) GoPro had produced all responsive non-ESI

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documents for Requests 19-20, 22, 45, and 57-61; (ii) GoPro was unaware of any documents

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responsive to Requests 6-13 and 52; (iii) GoPro had already produced, or 360Heros could obtain

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without significant effort, responsive non-ESI documents for Requests 30-34, 38, and 69; (iv) by

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United States District Court
Northern District of California

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March 8, 2017, GoPro would produce additional responsive non-ESI documents for Requests 32,

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35-38, 41-42, 46-48, 51, and 53-55; and (v) by March 22, 2017, GoPro would produce additional

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responsive non-ESI documents for Requests 30-31 and 33-34.

GoPro further argues that, in a March 3, 2017 response to 360Heros’

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Based on the parties’ joint statement, the Court cannot determine the status of GoPro’s

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productions to date. It appears that since February 2017, GoPro has worked in earnest to provide

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responsive documents on a rolling basis; GoPro has responded to many, but not all, of 360Heros’

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requests for production.

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productions of ESI, the Court agrees with GoPro that disputes related to ESI are premature. To

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the extent it has not already done so in its responses, GoPro is hereby ORDERED to clearly

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indicate the extent of its productions, any objections, and whether it “has withheld documents

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responsive to any portions of” 360Heros’ requests.1 Loop AI Labs Inc. v. Gatti, No. 15-0798-HSG

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(DMR), 2016 U.S. Dist. Lexis 58820, at *10-11 (N.D. Cal. May 3, 2016); Fed. R. Civ. P.

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34(b)(2)(B)-(C).

And until the parties have found a way forward with respect to

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The Court suspects that the parties will have resolved many of these issues by the date of

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this order. If, in another 30 days, 360Heros is not satisfied with GoPro’s responses to its first set

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of requests for production, the parties may file an updated joint letter that specifically describes

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This applies to both past and future document productions.
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what remains outstanding, and articulates why GoPro should be ordered to respond. In the

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meantime, the Court hereby ORDERS the parties to meet and confer in good faith regarding

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360Heros’ requests for production.

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II.

Answers to Interrogatories

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360Heros served its First Set of Interrogatories on October 28, 2016. See Joint Statement,

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Ex. C. GoPro responded on November 30, 2016 without verification, and served amended

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responses with verification on January 13, 2017. Id., Exs. D, E. 360Heros seeks an order

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compelling GoPro’s responses to interrogatories 3, 4, 6, 7, 10 and 11.

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United States District Court
Northern District of California

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A.

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Interrogatory 3 asks for GoPro to state

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Interrogatories 3, 4, 6, and 7

GoPro’s computation of money damages under the Lanham Act as
alleged in the FIRST CLAIM in the Complaint, including (a) any
lost profits GoPro seeks including the amount of the alleged lost
profits, (b) all revenue, income, and costs associated with the
manufacture, sales and offers for sale of any product GoPro
contends is the subject of GoPro’s FIRST CLAIM in the Complaint,
(c) identify all DOCUMENTS on which GoPro relies to support
GoPro’s computation of monetary damages under the Lanham Act
as alleged in the FIRST CLAIM, and (d) identify all PERSONS with
knowledge of GoPro’s alleged monetary damages as alleged in the
FIRST CLAIM.

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Ex. C, First Set of Interrogatories, at 5.

Interrogatories 4, 6, and 7 ask GoPro for similar

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information with respect to GoPro’s second, third, and fourth causes of action. See id. at 5-7.

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GoPro objected to all four interrogatories on the basis that they were premature, overbroad, vague

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and ambiguous, and based on discovery that had yet to occur. See Ex. E, Amended Responses to

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Interrogatories, at 6-10. In the parties’ joint statement, GoPro states that on March 3, 2017, it

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promised to serve its amended responses to these interrogatories by March 22, 2017. Joint

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Statement at 5. To the extent GoPro has done so, 360Heros’ request for an order compelling

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amended responses is moot. To the extent GoPro has not served these amended responses, GoPro

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is hereby ORDERED to answer these interrogatories within ten days of the date of this order.

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B.

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Interrogatory 10 asks GoPro to “[s]tate the basis for GoPro’s Fourth Affirmative Defense

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that ‘The equitable doctrine of unclean hands bars 360Heros’ claim for damages or other relief’

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and identify all DOCUMENTS on which GoPro relies to support its Fourth Affirmative Defense.

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Ex. C, First Set of Interrogatories, at 7. GoPro appears to have meaningfully responded in its

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amended responses to interrogatories. See Ex. E, Amended Responses to Interrogatories, at 11-13.

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360Heros states that the response is inadequate because it “reflects that [GoPro’s] pleaded unclean

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hands defense lacks factual support.” Whether that argument proves to be true at a later point, the

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Court does not see why GoPro should be compelled to amend its current response. 360Heros’

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Interrogatory 10

request to compel an amended response to Interrogatory 10 is DENIED.

United States District Court
Northern District of California

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C.

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Interrogatory 11 asks GoPro to

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State the date GoPro first obtained actual notice of the published
patent application for the ’019 patent and identify all DOCUMENTS
CONCERNING the date GoPro first obtained actual notice of the
published patent application for the ’019 patent. For purposes of this
Interrogatory, the term actual notice is defined pursuant to 35 USC
§ 154(d).

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Interrogatory 11

Exhibit C, First Set of Interrogatories, at 7. GoPro’s response identifies when it had actual notice

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of the patent itself, not the application. Ex. E, Amended Responses to Interrogatories, at 14.
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GoPro claims notice of the patent application is irrelevant for purposes of 35 U.S.C. § 154(d).
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Section 154(d) provides, in relevant part, that a patentee may “obtain a reasonable royalty
from any person who,” “makes, uses, offers for sale, or sells in the United States the invention as
claimed in [a] published patent application,” and “had actual notice of the published patent
application,” “during the period beginning on the date of publication of the application for such
patent.”

35 U.S.C. § 154(d)(1).

This right “to obtain a reasonable royalty shall not be

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available . . . unless the invention as claimed in the patent is substantially identical to the invention
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as claimed in the published patent application.” Id. § 154(d)(2). GoPro argues that because “the
issued claims of the ’019 patent are not ‘substantially identical to the invention as claimed in the

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published patent application,’” the date that GoPro received notice of the published application is

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irrelevant. Joint Statement at 3. Whether that argument proves to be true at a later point, at this

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point the Court orders to identify when it first had notice of the published application for the ’019

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Patent. Accordingly, GoPro is hereby ORDERED to amend its interrogatory response to provide

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this information within ten days of the date of this order.

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Going forward, the parties are reminded to make every effort to resolve these disputes

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informally by meet and confer. If the parties bring future discovery disputes to this Court, they

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must clearly delineate what is in dispute and their respective positions on each point.

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This order resolves Dkt. No. 41.

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United States District Court
Northern District of California

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IT IS SO ORDERED.

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Dated: March 23, 2017
______________________________________
SUSAN ILLSTON
United States District Judge

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