Everlight Electronics Co., Ltd. v. Bridgelux, Inc.

Filing 92

ORDER ON DISCOVERY LETTER BRIEFS by Judge Elizabeth D. Laporte: 69 Discovery Letter Brief; 77 Discovery Letter Brief; 81 Discovery Letter Brief. (tlS, COURT STAFF) (Filed on 1/11/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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EVERLIGHT ELECTRONICS CO., LTD.,
Plaintiff,

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United States District Court
Northern District of California

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Case No.17-cv-03363-JSW (EDL)
ORDER ON DISCOVERY LETTER
BRIEFS

v.
BRIDGELUX, INC.,

Re: Dkt. Nos. 69, 77, 81

Defendant.
District Judge White referred this case to the Court for discovery purposes. Pending before

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Court is a letter brief filed by Plaintiff Everlight Electronics Co., Ltd. and Defendant Bridgelux,

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Inc. on December 12, 2017. The parties in this patent infringement case have also filed two letter

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briefs updating the Court on the status of the discovery dispute. On January 4, 2018, the Court

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held a hearing on this matter and ruled on the record as outlined in this order.

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This dispute centers on Defendant’s responsibility to provide Plaintiff with prior art

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references from an earlier case brought by Defendant, BridgeLux, Inc v. Cree, Inc, Docket No.

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9:06-cv-00240 (E.D. Tex. Oct 17, 2006). Although Defendant does not dispute the relevance of

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the requested materials, it has not produced them to Plaintiff based on Defendant’s assertion that it

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had not retained records from that litigation. It committed to seeking the documents from its prior

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litigation counsel, but did not ask its counsel about the Cree prior art files until just before

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Plaintiff’s invalidity contentions were due. See Patent L.R. 3-3. After the due date, Defendant

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informed Plaintiff that its counsel also had not retained them.

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Plaintiff requests an order that Defendant provide Plaintiff with a declaration detailing its

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efforts to search for the Cree records, including any electronic searches it has undertaken of its

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own records. The Court GRANTS that request. Defendant is ordered to produce a declaration to

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Plaintiff by January 11, 2018.

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Plaintiff also requests an order that it may rely on any previously unproduced materials

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from the Cree litigation without having to move to amend its invalidity contentions under Patent

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L.R. 3-6 to avoid that expense. In its most recent letter brief, Plaintiff requested an order that it be

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allowed to rely on a specific prior art reference, the Singer Reference, which is referenced in the

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Cree litigation and whose existence Defendant, despite knowing of, did not disclose to Plaintiff.

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Plaintiff argues that Defendant’s failure to disclose the Singer Reference was in bad faith.

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Defendant opposes the issuance of this order, arguing that Plaintiff should have discovered the

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Singer Reference on its own by the exercise of due diligence because it was publically available

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as listed on the docket in the Cree litigation.

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The Court DECLINES to order Plaintiff’s requested relief at this time. Motions to amend

United States District Court
Northern District of California

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invalidity contentions are addressed to the district judge. Such relief would be an unusual

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discovery sanction and the Court does not have the facts before it to determine whether Defendant

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acted in bad faith or Plaintiff failed to exercise due diligence. The Court recommends that, if

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Plaintiff would like to rely on the Singer Reference, Plaintiff file a motion to amend its invalidity

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contentions before Judge White. If Judge White grants the motion, it may well be appropriate to

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shift the fees incurred in bringing the motion to Defendant. Defendant has no objection to this

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approach.

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IT IS SO ORDERED.
Dated: January 11, 2018

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ELIZABETH D. LAPORTE
United States Magistrate Judge

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