Gamevice, Inc. v. Nintendo Co., Ltd. et al

Filing 80

Discovery Order re: joint discovery letters #66 and #67 . Signed by Judge Thomas S. Hixson on 7/2/2019. (cdnS, COURT STAFF) (Filed on 7/2/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GAMEVICE, INC.,
Plaintiff,

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v.

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NINTENDO CO., LTD., et al.,
Defendants.

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United States District Court
Northern District of California

Case No. 18-cv-01942-RS (TSH)
ORDER GRANTING IN PART AND
DENYING IN PART GAMEVICE’S
MOTIONS TO COMPEL
Re: Dkt. Nos. 66, 67

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Plaintiff and Counterclaim Defendant Gamevice, Inc. (“Gamevice”) and Defendant and

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Counterclaimant Nintendo of America, Inc. (“Nintendo”) have filed two joint discovery letter

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briefs. ECF Nos. 66, 67. The Court held a telephonic hearing on June 27, 2019 and now issues

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this order.

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A.

ECF No. 66

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1.

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This interrogatory states: “Further to Your disclosure pursuant to Patent Local Rule 3-1(g),

Gamevice’s Interrogatory No. 1

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provide a claim chart for: (a) the Gameboy Micro, Identifying any and all features and elements

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of the Gameboy Micro that You contend are covered by each limitation and feature found in

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claims 1, 4, 8, and 11 of the ‘165 patent; (b) all prototypes and/or mock-ups of the ‘Wii U zapper’

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that You contend ‘generally correspond with Figs. 15-20 of the ‘514 patent,’ Identifying any and

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all features and elements of such prototypes and/or mock-ups that You contend are covered by

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each limitation and feature found in one or more asserted claims of the ‘514 Patent; and (c) any

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other product, prototype and/or mock-up developed, made, and/or sold by You, if any, that You

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contend are covered by each limitation and feature found in one or more claims of the

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Counterclaim Patents.”

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Gamevice argues that given its understanding of how Nintendo is reading its claims, it

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appears that the Wii U Gamepad (without the Wii U zapper mock-up), Nintendo 3DS and

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Nintendo Switch practice claim 10 of the ‘514 patent. In the joint letter brief, Nintendo clearly

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states that Nintendo does not contend that the Nintendo 3DS or the Nintendo Switch practice any

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of the asserted patents. That’s a perfectly acceptable response. Interrogatory 1 is, after all, a

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contention interrogatory that asks Nintendo what it contends. And Nintendo gets to decide what it

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contends. If Nintendo does not contend that the Nintendo 3DS and Nintendo Switch practice the

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patents, then information about them is not responsive to this interrogatory and nothing is missing.

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With respect to the Wii U Gamepad, however, Nintendo’s response is too cagey. Nintendo
does not state one way or the other whether it contends that the Wii U Gamepad practices any of

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these patents. Nintendo adds that “the parties have a claim-construction dispute over critical

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limitations that will determine whether or not Nintendo ‘contends’ that product practices any of

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the asserted patents.”

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At the hearing, Nintendo clarified its position. Under Nintendo’s own view of what its

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claims mean, it does believe that the Wii U Gamepad practices the ‘514 patent. But Nintendo

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views that more as an acknowledgment or an admission, not really a contention that it is making to

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advance its case. However, Nintendo is interpreting the word “contend” with overly formalistic

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literalness. Gamevice’s interrogatory is asking Nintendo to apply law to fact, and asking Nintendo

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what it contends is just another way of asking Nintendo what it thinks or believes. The

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interrogatory is not limited to asking Nintendo only for information that Nintendo thinks is helpful

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to its case, leaving out information that Nintendo grudgingly admits is true. It is asking for both.

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Because Nintendo does contend – in this broader sense of the word “contend” – that the Wii U

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Gamepad practices the ‘514 patent, the Court ORDERS Nintendo to amend its response to this

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interrogatory to include the responsive information. The Court acknowledges that Judge

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Seeborg’s upcoming claim construction ruling might cause Nintendo to change its views on which

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of its products practice which patents, but that does not relieve Nintendo of the obligation to

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answer this interrogatory in the meantime.

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Gamevice’s Interrogatory No. 4

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2.

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In this interrogatory, Gamevice asks: “Separately for each claim of the Counterclaim

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Patents that NOA contends Gamevice has infringed or is infringing, Identify and Describe in detail

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all facts and circumstances relating to the earliest making, using, selling, offering for sale, or

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disclosure of the alleged inventions recited in such asserted claim, including without limitation the

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first manufacture of the claimed invention, the first use of the claimed invention in the United

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States, the first public use of the claimed invention in the United States, the first offer for sale of

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the claimed invention in the United States, the sale of the claimed invention in the United States,

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the first public disclosure of the claimed invention, and the first disclosure of the claimed
invention by a Named Inventor to any other Person. Your response to this Interrogatory should

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include without limitation the Date on which each such event occurred, the location where each

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such event occurred, the identity of each Person with knowledge of any of the foregoing, the price

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of any such offers for sale or sales, and the identities of all Documents (by Bates numbers) relating

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to any of the foregoing.” Nintendo’s response contains objections, five sentences of narrative that

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provide some of the requested information, and a Rule 33(d) reference to documents. The

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referenced documents were produced by Nintendo Co., Ltd., Nintendo’s Japanese parent company

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(“Nintendo Japan”). There are more than 400 pages of them, and more than 300 of the pages are

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in Japanese. The issue the parties raise is what to do with a Rule 33(d) reference to documents in

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a foreign language.

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Rule 33(d) allows a reference to documents “if the burden of deriving or ascertaining the

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answer will be substantially the same for either party,” and the responding party “specif[ies] the

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records that must be reviewed, in sufficient detail to enable the interrogating party to locate and

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identify them as readily as the responding party could.” Fed. R. Civ. P. 33(d)(1). There is not

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much case law on this specific foreign language issue, but the few courts that have addressed it

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have easily concluded that a Rule 33(d) reference to foreign language documents does not satisfy

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the requirements of the Rule. See, e.g., Sungjin Fo-Ma, Inc. v. Chainworks, Inc., 2009 WL

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2022308, at *4-5 (E.D. Mich. July 8, 2009). The burden of deriving or ascertaining the answer is

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not the same for Gamevice and Nintendo. Nintendo has its parent company to help it derive the
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answer from the Japanese language documents, and indeed the parent company was the source of

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them, whereas Gamevice states it is not able to read them.

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There is another issue, though. This interrogatory is, for the most part, asking for the

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application of law to fact. Some of what it asks, such as questions about facts and circumstances,

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prices, locations and identities of people, is factual. But the primary thrust of this interrogatory is

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about the earliest dates of sale, offer for sale and disclosure on a claim-by-claim basis. This is

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better known as a contention interrogatory. There is no way Gamevice can look through a stack of

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documents and discover Nintendo’s contentions. Nintendo has to make them.

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To remedy the foreign language problem, courts have come up with two solutions. One, of
course, is to order the documents translated. See Nature’s Plus Nordic A/S v. Natural Organics,

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Northern District of California

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Inc., 274 F.R.D. 437, 441 (E.D.N.Y. 2011) (ordering translation and ordering the parties to split

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the cost); E&J Gallo Winery v. Cantine Rallo, S.p.A., 2006 WL 3251830, at *5 (E.D. Cal. Nov. 8,

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2006) (same, but capping the fraction of the cost borne by the party that served the interrogatory).

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But another option is to say that the Rule 33(d) reference simply failed – the burden of

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ascertaining the answer somewhere in the documents is not the same for both sides – so the

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responding party must answer the interrogatory in the regular narrative fashion. The Court did

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that in Sungjin, 2009 WL 2022038, at *4-5, where the problem was more than just the foreign

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language. It was also that the plaintiff simply knew more about its own documents. Even if they

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were all translated into English, it was too hard for the defendant to figure out which documents

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related to which subparts of the interrogatories.

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The Court faces an analogous situation here. Even if the documents were all translated

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into English, how could Gamevice determine from them, for example, whether claim 7 in the ‘806

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patent had a different date of first sale from claim 18? That is a legal position, not a factual

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question. Because of the twin problems that the documents are mostly in Japanese and that this

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interrogatory seeks the application of law to fact, the Court finds that Nintendo’s Rule 33(d)

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reference fails. Accordingly, the Court ORDERS Nintendo to provide a narrative answer to

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interrogatory 4 without relying on a Rule 33(d) reference.1
Gamevice’s Interrogatory No. 13

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This interrogatory requests: “For each prototype, or mock-up that You provide a claim

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chart for in response to Interrogatory No. 1, Describe its design, development, and marketing;

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Identify all Persons involved in its design, development or marketing; Identify all conferences,

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trade shows, industry groups or meetings, government events, or any gatherings attended by You

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to promote it; Identify the revenues generated by or attributable to it, in whole or in part; and

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Describe Your attempts to mark it with the numbers of any of the Counterclaim Patents.”

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Nintendo’s response is the same as to interrogatory 4. That is, it has a few responsive sentences,

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then does a Rule 33(d) reference to the same body of documents, most of which are in Japanese.

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Because these documents are mostly in Japanese, this Rule 33(d) reference is defective for

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the same foreign language reasons discussed above in connection with interrogatory 4. However,

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this Rule 33(d) reference does not have the additional problem of telling Gamevice to try to guess

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what Nintendo’s contentions are because this interrogatory is not asking for the application of law

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to fact. If the Japanese language documents were translated into English, and if they contain the

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relevant information, it is probably just as easy for Gamevice to ascertain the answer as it is for

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Nintendo. Accordingly, the Court ORDERS that Nintendo either (1) amend its response so that it

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is a narrative without relying on a Rule 33(d) reference, or (2) translate the Japanese language

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documents into English and produce the translations. If Nintendo does the latter, the parties shall

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split the cost of the translation except that Gamevice’s share shall not exceed $5,000. See E&J

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Gallo, 2006 WL 3251830, at *5 (ordering split of translation costs for documents in a Rule 33(d)

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response but capping the interrogating party’s share of the expense).

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B.

ECF No. 67
Gamevice’s Interrogatory No. 2

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1.

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This interrogatory asks Nintendo to “[i]dentify all licenses and agreements relating to the

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The only issue teed up for the Court’s decision with respect to this interrogatory is the Rule 33(d)
reference. This is a broadly written interrogatory, and the Court has not ruled on Nintendo’s
overbreadth objection.
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Counterclaim Patents, including without limitation portfolio licenses, covenants not to sue,

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indemnity agreements, and other agreements relating to intellectual property rights; Describe the

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terms of each such license or agreement, including without limitation the parties thereto, the

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duration thereof, the intellectual property rights covered thereunder, and the consideration

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provided in return for such intellectual property rights; and Identify any Documents (by Bates

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number) constituting or relating to each such license or agreement.” Nintendo’s response is to

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refer to a number of documents pursuant to Federal Rule of Civil Procedure 33(d). One of them is

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an October 13, 2017 assignment by Nintendo Japan to Nintendo of all right, title and interest in the

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patents. The assignment states that is was made “for good and valuable consideration, the receipt

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and sufficien[cy] of which is hereby acknowledged,” but it does not state what that consideration

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was, and Gamevice moves to compel that information.

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This information is unquestionably responsive to Gamevice’s interrogatory. The

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consideration that Nintendo paid for the patents is relevant to damages, and if for some reason the

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consideration were inadequate or defective, Gamevice might be able to challenge Nintendo’s

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ability to sue at all. At the telephonic hearing, however, it became clear that this dispute is less

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than meets the eye. Nintendo says that the consideration it paid is in the assignment agreement.

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In other words, Nintendo says that it and Nintendo Japan gave things to each other in the

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assignment agreement, and there was no other consideration. If that is true, then the Rule 33(d)

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reference in the interrogatory response means that the response did not completely answer the

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interrogatory because Nintendo should also have said that there was no consideration paid for the

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patents other than what is stated in the assignment agreement. Accordingly, the Court ORDERS

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Nintendo to answer this interrogatory, including to state whether or not there was any

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consideration paid for the patents beyond what is stated in the referenced assignment agreement.
Gamevice’s Interrogatory No. 3

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2.

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This interrogatory asks Nintendo to: “Describe in detail all facts relevant to the conception

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and reduction to practice of each claim of the Counterclaim Patents that NOA contends Gamevice

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has infringed or is infringing. Your response to the Interrogatory should include without

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limitation the Date of conception; the name of each Person who contributed to the conception and
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the specific contribution made by each such Person to the claimed invention; how these Persons

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arrived at their claimed invention; the identities of all Persons with knowledge of the conception;

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the Date of the first reduction to practice; the name of each Person who contributed to such

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reduction to practice and the nature of each such Person’s contribution; all facts and circumstances

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relating to any alleged diligence between the asserted Dates of conception and first reduction to

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practice; the identities of all Persons with knowledge of such diligence; the nature of each such

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Person’s participation in, involvement in, and contribution to the alleged diligence toward

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reduction to practice; and the identities of all Documents (by Bates number) relating to such

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conception, reduction to practice, or diligence.”

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Gamevice now moves to compel Nintendo to identify the name of each person who

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contributed to the conception and reduction to practice of each alleged claim, the nature of the

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contribution made by that person to each specific claim, and the identities of all persons with

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knowledge of the conception and reduction to practice of each asserted claim. Gamevice states

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that it wants to explore the alleged inventorship of each claimed invention and that there are

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unanswered questions at least concerning the ‘806 patent. Nintendo responds that providing this

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information would be a burdensome fishing expedition into irrelevant details. It states there are a

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total of 20 inventors listed on the patents at issue, who all live in Japan, and that tracking them

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down and interviewing them in detail about their contributions on a claim by claim basis for all 35

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claims would be a significant and unjustified amount of work.

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The Court has significant concerns with the breadth of this interrogatory. Judge Seeborg’s

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Case Management Scheduling Order states that each side may have 35 interrogatories, including

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all discrete subparts. ECF No. 42. Depending on how subparts are counted, this interrogatory

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could easily be all 35, which means it actually exceeds the limit of 35 because it comes after

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interrogatories 1 and 2, which are not lacking in subparts either.

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Nonetheless, as Gamevice is moving to compel only as to some of the information

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requested, and Nintendo’s opposition does not stand on the interrogatory limit, the Court evaluates

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this motion to determine whether the requested information is relevant and proportional to the

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needs of the case. Fed. R. Civ. P. 26(b)(1). Let’s break the current request into two parts. The
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first is Gamevice’s request that Nintendo identify the name of each person who contributed to the

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conception and reduction to practice of each alleged claim, and the nature of the contribution made

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by that person to each specific claim. At the hearing, Gamevice clarified that it wants this

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information for all three patents. More importantly, it also clarified why it wants this information.

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There are 20 listed inventors for the three patents, and Gamevice wants to know whom to depose.

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Some claims are more important in this case than others, but Gamevice does not know which

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inventors contributed to which claims. The patents just list all of the inventors for the patent,

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leaving Gamevice in the dark. Also, even for undeposed witnesses, Gamevice wants this

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information for trial preparation, so it can prepare for cross-examination. These are legitimate

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objects of fact discovery.
Nintendo responds that providing this information is burdensome. It notes that there are 20

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listed inventors, and they all live in Japan. Nintendo would have to interview them about their

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specific contributions to each claim in order to provide the requested information. Also, some of

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them might not be employees of Nintendo Japan anymore, so it might be difficult or impossible to

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track them down, or they might not want to talk.

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As to potential former employees who might be hard to find or might be uncooperative,

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Nintendo has a fair point. The Court’s order obligates Nintendo to make a reasonable effort to

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find these inventors to interview them. However, if any of them are former employees, and if after

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reasonable efforts Nintendo cannot find them, or they decline to talk, then Nintendo has exhausted

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its discovery obligations as to these witnesses.

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But for any of the inventors who are still Nintendo Japan employees, or who are no longer

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employees but who can be tracked down and are willing to talk, it is proportional to require

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Nintendo to interview them to provide the requested information. In its initial disclosures,

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Nintendo listed all 20 of these inventors as witnesses “likely to have discoverable information that

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NOA may use to support its claims against Gamevice . . .” ECF No. 79. Indeed, only nine of the

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witnesses listed in Nintendo’s initial disclosures are not the inventors, meaning that slightly more

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than two-thirds of Nintendo’s disclosed witnesses are the inventors. Having put Gamevice on

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notice that these witnesses have discoverable information and that they are most of the witnesses
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in support of Nintendo’s claims, requiring Nintendo to actually talk to these people and disclose to

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Gamevice their contributions with respect to each claim is eminently reasonable. Also, Nintendo

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is presumably intending to talk with at least several of these inventors before trial to determine

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whether to call them as trial witnesses. So, the issue is less about whether Nintendo will have to

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incur this burden and more about when.

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Let’s move to the next issue. In the letter brief, Gamevice stated that it wants the identities

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of all persons with knowledge of the conception and reduction to practice of each asserted claim.

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At the hearing, however, Gamevice clarified that this request relates only to the ‘165 patent for

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which Nintendo is claiming a conception date that is different from the claimed priority date in the
Japanese patent. In response to the Court’s question about burden, Nintendo stated that there are

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only two such people (the inventors), so there is no burden to producing this relevant information.

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Accordingly, the Court ORDERS Nintendo to identify the name of each person who

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contributed to the conception and reduction to practice of each alleged claim, and the nature of the

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contribution made by that person to each specific claim, and – for the ‘165 patent only – the

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identities of all persons with knowledge of the conception and reduction to practice of each

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asserted claim.
Gamevice’s Interrogatory No. 10

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3.

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This interrogatory asks Nintendo to “Separately for each Asserted Claim, Describe any

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secondary considerations or objective evidence of non-obviousness (e.g., commercial success,

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long-felt need, expressions of skepticism or disbelief, copying, etc.) that You contend support the

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purported non-obviousness of such claim, for each such alleged secondary consideration Describe

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in detail the facts underlying the alleged secondary consideration, and Identify each Document (by

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Bates number) supporting such contention and each Person with knowledge of the facts relating to

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that contention.”

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The parties seem to agree that this interrogatory is relevant and proportional. The Court

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thinks it is too. Although obviousness is an affirmative defense that Gamevice has the burden to

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prove, it is certainly entitled to take discovery into Nintendo’s contentions about the merits of that

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defense. Instead, two issues divide the parties. The first is whether Nintendo has answered this
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interrogatory. Gamevice says Nintendo has not answered adequately, whereas Nintendo says that

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it has. The attachment to the joint letter brief states that Nintendo’s most recent response is dated

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March 22, 2019. It makes some objections, has a brief narrative paragraph, and then states:

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“Pursuant to Fed. R. Civ. P. 33(d), NOA has produced and/or will produce additional documentary

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evidence regarding secondary considerations of non-obviousness with respect to the Counterclaim

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Patents.”

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That response is inadequate. A Rule 33(d) reference must “specify[] the records that must

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be reviewed, in sufficient detail to enable the interrogating party to locate and identify them as

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readily as the responding party could.” Fed. R. Civ. P. 33(d)(1). Nintendo’s current response
effectively says, “Go look through our document production and maybe you’ll find something.”

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That does not comply with the Rule. The Court ORDERS Nintendo to amend its response to

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interrogatory 10 to identify the referenced documents by Bates number.

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The second issue that divides the parties is whether Nintendo’s experts can rely on

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documents not listed in Nintendo’s response to interrogatory 10. The Court expresses no view on

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that issue. It isn’t ripe. Also, depending on how that issue gets raised (e.g., if it is part of a

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Daubert motion), it might not be for the undersigned to decide.

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IT IS SO ORDERED.

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Dated: July 2, 2019

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THOMAS S. HIXSON
United States Magistrate Judge

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