Avago Technologies Fiber IP (Singapore) PTE. Ltd. v. IPtronics Inc. et al

Filing 290

ORDER RE: DEFENDANTS' FIRST AND SECOND MOTIONS TO COMPEL by Judge Paul S. Grewal granting in part and denying in part 232 Administrative Motion to File Under Seal; granting 248 Motion to Compel (psglc1, COURT STAFF) (Filed on 10/19/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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AVAGO TECHNOLOGIES FIBER IP
(SINGAPORE) PTE LTD.,
Plaintiff,

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v.
IPTRONICS, INC., ET AL.,

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Defendants.

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Case No.: C 10-02863 EJD (PSG)
ORDER RE: DEFENDANTS’ FIRST
AND SECOND MOTIONS TO
COMPEL
(Re: Docket Nos. 232, 248)

In this patent infringement suit, Defendants IPtronics, Inc. and IPtronics A/S (collectively,

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“IPtronics”) bring two motions to compel further discovery. In the first motion to compel, IPtronics

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moves to compel further responses to its first set of interrogatories and its second set of document

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requests. In the second motion to compel, IPtronics moves to compel all of the discovery that

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Plaintiff Avago Technologies Fiber IP (Singapore) PTE Ltd (“Avago”) previously agreed to

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produce as well as electronic copies of documents and materials from Avago’s prior litigation

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against Emcore Corporation (“Emcore”) before the International Trade Commission. Avago

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opposes both motions. On September 18, 2012, the parties appeared for hearing. Having reviewed

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the papers and considered the arguments of counsel,

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IT IS HEREBY ORDERED that IPtronics’s first motion to compel is GRANTED-INPART.

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Case No.: C 10-02863 EJD (PSG)
ORDER

Although discovery has been pending for more than two years, 1 IPtronics contends that

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Avago has refused to provide IPtronics with interrogatory responses regarding the following: (1)

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contentions that specifically point out where each limitation of each asserted claim is found within

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each of the ten IPtronics products accused of infringing the patents-in-suit (interrogatory no. 6); (2)

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an accounting of the damages sought by Avago (interrogatory nos. 8 and 14); (3) secondary

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considerations of non-obviousness to rebut IPtronics’ assertion that the patents are invalid as

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obvious in view of the references listed in IPtronics’ January 4, 2011 invalidity contentions

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(interrogatory no. 11); and (4) explanations as to how each of the 113 individual Avago products

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alleged to practice one of the claimed inventions actually does so (interrogatory no. 6). Avago also

United States District Court
For the Northern District of California

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is alleged to have refused to produce: (1) license agreements to the patents-in-suit and any

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communications related to the negotiation of those agreements, which are directly relevant to

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damages in the instant case (document request no. 62); and (2) documents related to

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representations made by Avago or its predecessors in interest to various standard setting

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organizations (“SSO’s”) concerning standards that are practiced by products embodying the

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claimed inventions, which are relevant to issues of infringement and enforceability of the patents-

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in-suit (document request nos. 47, 48, 50, 54, 55, 57, 58, 59, 60 and 61). IPtronics complains that

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Avago either objects that the discovery sought is irrelevant or that it merely promises to produce

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the discovery “when necessary.”

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Avago responds that even though IPtronics has waited more than 16-18 months to bring this

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motion, Avago previously agreed to produce to IPtronics most of the discovery sought. According

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to Avago, IPtronics brought this motion only after: (1) IPtronics failed to invalidate the patents-in-

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suit through reexamination and the PTO issued reexamination certifications for both patents-in-

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suit; (2) the parties presented technical tutorials and claim construction arguments that may result

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in an order favoring Avago’s infringement positions; and (3) Avago filed a flawed administrative

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motion to de-designate or modify the protective order. In other words, Avago claims that IPtronics

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has manufactured an urgency to its motion that does not exist and is otherwise unwarranted. Avago

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See Docket No. 263. At the parties’ request, the presiding judge modified the scheduling order to
permit discovery to close on May 3, 2013.
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Case No.: C 10-02863 EJD (PSG)
ORDER

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nevertheless joins in IPtronics’ motion to the extent it is allowed to supplement its Pat. L.R. 3-1

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infringement contentions. Avago continues to object, however, to document requests seeking

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information regarding (1) Avago’s participation in standard setting organizations; and (2)

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negotiations and discussions leading up to any agreement. Avago continues to dispute that either of

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these two categories of documents sought is relevant.

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As an initial matter, Avago may supplement its Pat. L.R. 3-1 infringement contentions. In

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light of the additional discovery produced and the parties’ agreement that amendment is warranted,

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the court is satisfied that good cause has been shown to grant this request. And because Avago has

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agreed to supplement all of its interrogatory responses, the court will focus on the document

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For the Northern District of California

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requests involving the two document categories to which Avago objects. Avago’s supplemental

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infringement contentions and interrogatory responses that Avago previously agreed to produce

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shall be produced no later than October 31, 2012.

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Turning to the disputed document categories, IPtronics argues that documents related to

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Avago’s participation in various SSO’s promulgating specifications related to the technologies at

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issue is relevant to its defenses. In prior litigation before the International Trade Commission,

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Avago alleged that the ‘447 Patent is not essential or necessary for compliance with certain

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multisource agreements or standards in which Avago and its predecessors were involved because

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there are ways by which the standards can be practiced without infringing the ‘447 Patent. Indeed,

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Judge Essex has found that the ‘447 Patent is not essential or necessary for compliance because the

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‘447 patent requires a VCSEL with an aperture greater than eight microns, whereas the evidence

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presented indicated a VCSEL with an aperture smaller than eight microns would comply with the

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industry standard. IPtronics therefore argues that representations made by Avago and its

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predecessors to any SSO of which it was a part bears directly on what constitutes non-infringing

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uses of IPtronics’ accused devices.

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Avago responds that IPtronics has not pleaded any of the defenses of estoppel, implied

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license, waiver or patent unenforceability and therefore the discovery now sought is not relevant.

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Avago also notes that it informed IPtronics that the patents-in-suit have never been required to be

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identified by the terms of any SSO nor has Avago identified either of the patents in response to any
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Case No.: C 10-02863 EJD (PSG)
ORDER

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SSO’s call for patents. Both the industry standards and the patents-in-suit are publicly available yet

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IPtronics has not identified any standards from which the patents-in-suit were improperly withheld.

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Avago also notes that IPtronics’ mischaracterizes Judge Essex’s finding. While Judge Essex did

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hold that the ‘447 Patent was not essential or necessary for compliance with any multisource

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agreement that Avago participates in, the ruling was made not because the ‘447 Patent requires a

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VCSEL with an aperture greater than eight microns, but rather it was based on the conclusion that

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industry standards do not specify an aperture size. Avago argues that because the decision about

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whether the ‘447 Patent is necessary to practice an industry standard does not turn on the size of

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the VCSEL aperture, IPtronics’ argument is false and has no bearing on Avago’s doctrine of

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For the Northern District of California

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equivalents infringement theory.

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Here, the presiding judge recently granted Avago’s motion for leave to file an amended

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complaint and IPtronics confirmed at oral argument that it will plead the additional defenses when

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it files its answer. 2 Whatever the ultimate merits of the parties’ respective position, because these

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defenses put the issue of Avago’s SSO representations squarely within the broad sweep of relevant

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infringement-related information, discovery concerning these representations is plainly appropriate.

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As for the license agreements for the patents-in-suit, Avago does not dispute that they are

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generally discoverable. Avago does dispute, however, that negotiations and discussions in advance

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of those agreements are subject to additional protections against discovery.

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The court agrees with IPtronics. The Federal Circuit has thrown open discovery of all

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licenses to the patents-in-suit. 3 As for the negotiations and discovery of discussions leading up to

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any agreement, this court has held that such discovery is appropriate. 4 While their admissibility

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might ultimately be rejected by the presiding judge at trial, 5 the court cannot discern from any of

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See Docket No. 259.

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See ResQNet v. Lansa, 594 F.3d 860, 871-872 (Fed. Cir. 2010).

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See Phoenix Solutions, Inc. v. Wells Fargo Bank, 254 F.R.D. 568, 583 (N.D. Cal. 2008) (“at a
minimum, discovery of licensing/settlement negotiations is reasonably calculated to lead to
relevant admissible evidence”).

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See id.
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Case No.: C 10-02863 EJD (PSG)
ORDER

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the relevant case law presented by Avago any mediation-based exception to discovery of these

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materials.

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IT IS FURTHER ORDERED that IPtronics’s second motion to compel is GRANTED.

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Despite Avago’s promises to do so, IPtronics contends that Avago has failed to produce the

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following discovery: (1) the supplemental interrogatory responses addressed above; (2) additional

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documents from custodians identified in IPtronics May 21, 2012 letter; (3) documents responsive

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to document request nos. 51, 53 and 56; (4) documents evidencing Avago’s royalty stream

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generated by licensing the patents-in-suit; and (5) electronic copies of documents related to the

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Emcore action which Avago has made available for inspection at its offices in hard copy form.

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For the Northern District of California

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Avago responds that the second motion to compel is moot. It already has produced more

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than 500,000 pages of responsive documents to IPtronics. And as for the 44 boxes of documents

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from the Emcore ITC action, Avago made these available to IPtronics for inspection and copying

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more than a year ago. IPtronics chose not to review them. Avago even undertook additional

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expense by retrieving these same documents from a warehouse for a second time in May 2012.

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While there is no requirement that Avago convert documents into a different format, Avago did

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download publicly available documents from the ITC and produced them to IPtronics. Like

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IPtronics, Avago too, is burdened by using paper copies but should not have to bear the expense of

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converting them to electronic format unless it chooses to do so. If IPtronics wants the documents in

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electronic format, it should undertake that expense itself.

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In light of the representations made by Avago, to the extent Avago’s production remains

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deficient in any category that it promised to produce discovery, it should do so no later than

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October 31, 2012. In addition, by this same order, if Avago has any documents from the Emcore

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ITC action in electronic form, Avago shall produce them.

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All other relief requested by either motion is DENIED.

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Case No.: C 10-02863 EJD (PSG)
ORDER

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IT IS SO ORDERED.

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Dated:

10/19/2012

_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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United States District Court
For the Northern District of California

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Case No.: C 10-02863 EJD (PSG)
ORDER