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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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 EVERLIGHT ELECTRONICS CO., LTD., Plaintiff, 8 9 10 United States District Court Northern District of California 11 12 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 13 Court is a letter brief filed by Plaintiff Everlight Electronics Co., Ltd. and Defendant Bridgelux, 14 Inc. on December 12, 2017. The parties in this patent infringement case have also filed two letter 15 briefs updating the Court on the status of the discovery dispute. On January 4, 2018, the Court 16 held a hearing on this matter and ruled on the record as outlined in this order. 17 This dispute centers on Defendant’s responsibility to provide Plaintiff with prior art 18 references from an earlier case brought by Defendant, BridgeLux, Inc v. Cree, Inc, Docket No. 19 9:06-cv-00240 (E.D. Tex. Oct 17, 2006). Although Defendant does not dispute the relevance of 20 the requested materials, it has not produced them to Plaintiff based on Defendant’s assertion that it 21 had not retained records from that litigation. It committed to seeking the documents from its prior 22 litigation counsel, but did not ask its counsel about the Cree prior art files until just before 23 Plaintiff’s invalidity contentions were due. See Patent L.R. 3-3. After the due date, Defendant 24 informed Plaintiff that its counsel also had not retained them. 25 Plaintiff requests an order that Defendant provide Plaintiff with a declaration detailing its 26 efforts to search for the Cree records, including any electronic searches it has undertaken of its 27 own records. The Court GRANTS that request. Defendant is ordered to produce a declaration to 28 Plaintiff by January 11, 2018. 1 Plaintiff also requests an order that it may rely on any previously unproduced materials 2 from the Cree litigation without having to move to amend its invalidity contentions under Patent 3 L.R. 3-6 to avoid that expense. In its most recent letter brief, Plaintiff requested an order that it be 4 allowed to rely on a specific prior art reference, the Singer Reference, which is referenced in the 5 Cree litigation and whose existence Defendant, despite knowing of, did not disclose to Plaintiff. 6 Plaintiff argues that Defendant’s failure to disclose the Singer Reference was in bad faith. 7 Defendant opposes the issuance of this order, arguing that Plaintiff should have discovered the 8 Singer Reference on its own by the exercise of due diligence because it was publically available 9 as listed on the docket in the Cree litigation. 10 The Court DECLINES to order Plaintiff’s requested relief at this time. Motions to amend United States District Court Northern District of California 11 invalidity contentions are addressed to the district judge. Such relief would be an unusual 12 discovery sanction and the Court does not have the facts before it to determine whether Defendant 13 acted in bad faith or Plaintiff failed to exercise due diligence. The Court recommends that, if 14 Plaintiff would like to rely on the Singer Reference, Plaintiff file a motion to amend its invalidity 15 contentions before Judge White. If Judge White grants the motion, it may well be appropriate to 16 shift the fees incurred in bringing the motion to Defendant. Defendant has no objection to this 17 approach. 18 19 IT IS SO ORDERED. Dated: January 11, 2018 20 21 ELIZABETH D. LAPORTE United States Magistrate Judge 22 23 24 25 26 27 28 2

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