Synopsys, Inc. v. Avatar Integrated Systems, Inc.

Filing 291

Discovery order by Judge Laurel Beeler resolving [265-2] 269 270 the parties' discovery disputes. (lblc1, COURT STAFF) (Filed on 9/22/2023)

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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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SYNOPSYS, INC.,

Plaintiff,

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Case No. 20-cv-04151-WHO (LB)

DISCOVERY ORDER

v.
SIEMENS INDUSTRY SOFTWARE INC.,

Re: ECF Nos. 265-2, 269, 270

Defendant.

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The parties have three discovery disputes. Fact discovery closed on August 31, 2023, but the

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disputes were raised within seven days of that date. See N.D. Cal. Civ. L.R. 37-3. The court can

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decide the disputes without oral argument. N.D. Cal. Civ. L.R. 7-1(b).

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1. Siemens’ Sixteenth Interrogatory
Siemens contends that Synopsys should respond further to Siemens’ sixteenth interrogatory.

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That interrogatory requests “communications with any third party, including Synopsys customers

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or potential customers, in which [Synopsys] alleged or suggested that Aprisa infringed any

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Synopsys patent or copyright, or referred to this Action or the ATopTech Action.” Aprisa is

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Siemens’ accused software product in this case, and the “ATopTech Action” was a lawsuit by

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Synopsys alleging that ATopTech (which at the time owned Aprisa) infringed certain Synopsys

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patents and copyrights. Synopsys provided responses to interrogatory sixteen on July 24 and 31,
ORDER – No. 20-cv-04151-WHO (LB)

United States District Court
Northern District of California

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2023. Synopsys partly objected, though, and the parties now dispute whether Synopsys must

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produce (1) oral or other non-email communications about interrogatory sixteen’s subject matter,

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(2) communications about patents and copyrights at issue in the ATopTech case but not this case,

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and (3) certain emails as to which Synopsys allegedly waived its privilege. 1

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First, the non-email communications would be overly burdensome because, as Synopsys

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points out, it would have to interview many individual sales representatives. 2 Fed. R. Civ. P.

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26(b)(1).

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Relatedly, the interrogatory asks for communications, so it is logically answered in the form of

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document productions, given the difficulty of determining whether oral communications occurred.

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See Fed. R. Civ. P. 33(d). Under the parties’ ESI protocol, “Siemens was able to choose specific

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Synopsys custodians and propose search terms,” and Synopsys then produced communications

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responsive to interrogatory sixteen. Synopsys now represents that it has “provided all relevant,

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non-privileged information of which it is aware after a reasonable search.” 3 That said, to the extent

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Siemens’ proposed search terms did not capture all of interrogatory sixteen’s subject matter and

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Synopsys did not otherwise perform a full search for responsive documents, then Synopsys must

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perform the remainder of the search. (That remainder excludes the communications discussed in

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the next paragraph.) The issue is preserved and the parties may raise any further disputes with the

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court.
Second, Synopsys need not produce communications related to patents and copyrights at issue

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in the ATopTech case but not this case. It is communications about the asserted patents that are

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relevant here (including with respect to damages issues). See Phoenix Sols. Inc. v. Wells Fargo

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Bank, N.A., 254 F.R.D. 568, 582 (N.D. Cal. 2008).

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Joint Disc. Letter Br. – ECF No. 267-4; Am. Compl. – ECF No. 199 at 3 (¶ 5) (describing ATopTech
and Aprisa). 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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Joint Disc. Letter Br. – ECF No. 267-4 at 4.

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Id. at 2–3.

ORDER – No. 20-cv-04151-WHO (LB)

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Third, Synopsys did not waive its privilege when it referenced a previously produced

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document by bates number (a document that, six days later, Synopsys clawed back).
Under Fed. R. Evid. 502(b), the disclosure of a privileged document in a federal proceeding

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“does not operate as a waiver” if: “(1) the disclosure is inadvertent; (2) the holder of the privilege

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or protection took reasonable steps to prevent disclosure; and (3) the holder promptly took

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reasonable steps to rectify the error, including (if applicable) following Federal Rule of Civil

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Procedure 26(b)(5)(B).” Fed. R. Civ. P. 502(b). Siemens asserts inadvertent disclosure and thus

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has the burden of proving these elements. Weil v. Inv./Indicators, Research & Mgmt., Inc., 647

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F.2d 18, 25 (9th Cir. 1981).
Synopsys’s privilege was not waived because referencing the bates number is not an

United States District Court
Northern District of California

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independent disclosure of the actual document, the error was promptly rectified, and in any case

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Siemens did not carry its burden.

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2. Synopsys’s Document Productions

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The parties also raise various disputes about Synopsys’s document productions. 4

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First, the court already resolved the issue of whether Synopsys waived its privilege over a

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document by referencing its bates number in an interrogatory response.
Second, Siemens contends that it is entitled to documents related to Synopsys’s acquisition of

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Extreme DA Corp. According to Siemens, those documents “are relevant to damages in this action

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because they relate to the valuation of technology in the same field as the patents asserted in this

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litigation.”5 But the valuation of “technology in the same field” is a very broad conception of what

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is relevant to patent-infringement damages. See N.D. Cal. Patent L.R. 3-8(a). A reasonable-royalty

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analysis, for example, would be more closely tailored to the asserted patents (or analogous

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inventions). Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.

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1970). Also, documents “related to” an acquisition could be unrelated to technology valuation. On

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Joint Disc. Letter Br. – ECF No. 268-5.

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Id. at 2.

ORDER – No. 20-cv-04151-WHO (LB)

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this briefing, the court denies the motion to compel these documents — but as explained below,

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the court will allow supplemental briefing.
Third, the result is different for documents related to Magma Automation’s valuation of its

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intellectual property before Synopsys acquired Magma, because one of the asserted patents was

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originally a Magma patent. That said, Synopsys has mostly already provided these documents.

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The court adopts Synopsys’s proposal: it will search for “Magma’s documents that were created

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by or for Magma, preceding Synopsys’[s] acquisition, that concern whether Magma had its own

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valuation of its intellectual property.” 6
Fourth, Siemens seeks damages documents, such as expert reports, from Synopsys’s litigations

United States District Court
Northern District of California

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against Extreme DA and Magma before it acquired those companies. Siemens contends that these

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documents are relevant at least to the apportionment aspect of damages in this case. Finjan, Inc. v.

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Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 4272870, at *4 (N.D. Cal. July 14, 2015)

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(apportionment refers to distinguishing between an accused product’s patented and unpatented

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features). Synopsys counters essentially that Siemens did not carry its burden of explaining any

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further.7

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As for the Magma litigation, the documents are relevant for the same reason that Magma’s

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own technology valuations are relevant, so the court orders production of the documents listed by

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Siemens.8
As for the Extreme DA litigation, the relevance is unclear from the current briefing. Siemens

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mentions apportionment, but apportionment focuses on the accused product, which here is

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Siemens’ own product Aprisa. The task of valuing Aprisa’s patented and unpatented features may

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not be helped by any valuations from the Extreme DA litigation, given that unlike the Magma

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litigation, the Extreme DA litigation did not involve any of the asserted patents here (that the court

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is aware of). Synopsys distinguishes between Extreme DA’s technology and the routing

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Id. at 4.

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Id. at 2, 4–5.

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Id. at 2.

ORDER – No. 20-cv-04151-WHO (LB)

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functionalities at issue in this case. 9 Another consideration is that if damages documents from the

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Extreme DA litigation have relevance, then any technology-valuation documents from Synopsys’s

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acquisition of Extreme DA could be relevant too.
The existing letter brief does not resolve these questions, but of course space was limited. So if

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Siemens wants to press the point, it may submit a seven-page brief within seven days. If Siemens

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does so, Synopsys may submit a seven-page opposition seven days later.
Fifth, regarding Synopsys’s financial records, the court adopts Synopsys’s proposal: it will

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“provid[e] a final supplement of its financials spreadsheet to include ‘ship-to-location’ for each

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customer.”10

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United States District Court
Northern District of California

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3. Siemens’ Document Productions

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The parties’ third dispute appears to be premature. The parties discussed alleged deficiencies

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in Siemens’ document productions on the seventh day after the close of fact discovery. In the letter

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brief, Siemens said it “has already, or will be[,] producing the requested materials.” 11 The court

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deems the issue preserved and the parties may raise any continuing dispute.

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This resolves ECF Nos. 265-2, 269, and 270.

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IT IS SO ORDERED.

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Dated: September 22, 2023

_____________________
LAUREL BEELER
United States Magistrate Judge

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Id. at 3–4.

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Id. at 5.

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Joint Disc. Letter Br. – ECF No. 265-2.

ORDER – No. 20-cv-04151-WHO (LB)

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