Hong Kong uCloudlink Network Technology Limited et al v. SIMO Holdings Inc. et al

Filing 198

Discovery Order by Magistrate Judge Laurel Beeler. In the attached order, the court memorializes it rulings at the hearing and addresses the discovery dispute. (lblc5S, COURT STAFF) (Filed on 11/20/2020)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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San Francisco Division

United States District Court
Northern District of California

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HONG KONG UCLOUDLINK
NETWORK TECHNOLOGY LIMITED, et
al.,

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Plaintiffs,

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DISCOVERY ORDER
Re: ECF No. 189

v.

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Case No. 18-cv-05031-EMC (LB)

SIMO HOLDINGS INC., et al.,
Defendants.

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In the pending discovery letter, the parties dispute SIMO’s entitlement to documents from

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uCloudlink that allegedly relate to SIMO’s affirmative defenses of inequitable conduct (in the

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form of not disclosing prior art to the USPTO) and improper inventorship and uCloudlink’s

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financial information (for the royalty analysis and damages).1 The parties categorize SIMO’s

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requests for production into nineteen categories.2 There are three issues: (1) has uCloudlink fully

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produced all responsive documents that it claims to have produced; (2) when will uCloudlink

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produce the documents it promised to produce; and (3) must uCloudlink produce certain

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Discovery Letter – ECF No. 189. Citations refer to material in the Electronic Case File (“ECF”);
pinpoint citations are to the ECF-generated page numbers at the top of documents.

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uCloudlink Oct. 30, 2020 Letter, Ex. D to Discovery Letter – ECF No. 189-4 at 2–4.

ORDER – No. 18-cv-05031-EMC (LB) 

Documents and communications
180–215,
supporting the basis of authority for the
226–228
“head office” to assign non-uCloudlink
Hong Kong employees to contracts and to
various positions within its “groups” and
“systems”, and to assign protocols binding
on all employees of various uCloudlink
group entities.

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Burdensome and nonproportional.
SIMO may propose a much
narrower production that describes
what it wants and why.

Invoices, bills, and money transfers
between uCloudlink White Label Partners
(Such as DHI) and uCloudlink Hong
Kong

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uCloudlink will produce updated
version of its previously produced
consolidated financial documents by
the end of the month.

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101–128

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Documents sufficient to show sales,
94–96
rentals, leases, revenues, and profits all
generated from uCloudlink products
practicing the Asserted Patent or terminals
that function with the uCloudlink back
end to practice the Asserted Patent that are
sold by third parties

United States District Court
Northern District of California

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uCloudlink will produce updated
version of its previously produced
consolidated financial documents by
the end of the month.

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As the court said at the hearing, discovery is iterative. For example, if after receiving the

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narrower productions here, SIMO identifies further discoverable information from those

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productions, then the court can address the issues when the parties raise them. To the extent SIMO

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asks that “discovery deadlines be extended as necessary,” any request to adjust the case deadlines

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must be raised with the trial judge.5

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IT IS SO ORDERED.

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Dated: November 20, 2020

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______________________________________
LAUREL BEELER
United States Magistrate Judge

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Discovery Letter – ECF No. 189 at 4.

ORDER – No. 18-cv-05031-EMC (LB)

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