Apple Inc. v. Samsung Electronics Co., Ltd. et al

Filing 202

ORDER by Judge Paul S. Grewal GRANTING-IN-PART #146 SAMSUNG'S MOTION TO COMPEL (psglc2, COURT STAFF) (Filed on 6/5/2012)

1
2
3
4
5
6
7
8
9
United States District Court
For the Northern District of California

10
11

UNITED STATES DISTRICT COURT

12

NORTHERN DISTRICT OF CALIFORNIA

13

SAN JOSE DIVISION

14
15
16
17
18
19
20
21
22

APPLE INC., a California Corporation,

)
)
Plaintiff,
)
)
v.
)
)
SAMSUNG ELECTRONICS CO., LTD, a
)
Korean corporation; SAMSUNG
)
ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
)
TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
)
)
Defendants.
)
)

Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART
SAMSUNG’S MOTION TO COMPEL
(Re: Docket No. 146)

In this patent infringement suit, Defendants Samsung Electronics Co., LTD., Samsung

23

Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively

24

“Samsung”) moves to compel Plaintiff Apple Inc. (“Apple”) to supplement its response to one of

25

Samsung’s interrogatory requests relating to Apple’s pending motion for a preliminary injunction.

26

Earlier today, the court heard oral argument on Samsung’s motion. Having considered the

27

arguments and evidence presented, the court GRANTS-IN-PART Samsung’s motion.

28

1
Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL

1

I.

2

BACKGROUND

Samsung moves this court to order Apple to supplement its response to Interrogatory
Request No. 4. This interrogatory requests that Apple identify all persons to whom Apple has

4

licensed, offered to license, or received a request to license, the four patents upon which Apple

5

seeks a preliminary injunction (the “preliminary injunction patents”), as well as the current status

6

of any of these licensing discussions. 1 Samsung argues that the information is relevant to Apple’s

7

assertion that it would be irreparably harmed in the absence of an injunction. 2 Samsung also

8

specifically argues that Apple should be obliged to supplement its response to identify all requests

9

for licenses of any of the four preliminary injunction patents, even if the request did not reference

10
United States District Court
For the Northern District of California

3

one of them specifically—for example, any requests to license an Apple patent portfolio that might

11

include one of the four preliminary injunction patents. 3

12

Apple responds that its interrogatory response as it currently stands is adequate because the

13

supplemental information that Samsung requests is irrelevant to the preliminary injunction motion,

14

and supplementing its response would place an undue burden on Apple.

15

II.

16

LEGAL STANDARDS

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any

17

party's claim or defense. Relevant information need not be admissible at trial if the discovery

18

appears reasonably calculated to lead to the discovery of admissible evidence. The court must limit

19

the frequency or extent of discovery if it is unreasonably cumulative or duplicative, or can be

20

obtained from some other source that is more convenient, or the burden or expense of the proposed

21

discovery outweighs its likely benefit. 4 Upon a showing of good cause, “the court may order

22

discovery of any matter relevant to the subject matter involved in the action.” 5

23
1

See Docket No. 146 (Defs.’ Mot. to Compel Further Resp.).

2

See id.

3

See id.

4

See generally Fed. R. Civ. P. 26.

5

Fed. R. Civ. P. 26(b)(1).

24
25
26
27
28

2
Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL

1

III.

2

DISCUSSION

It is clear that, in the absence of any burden to Apple, the supplemental information

3

Samsung has requested is at least reasonably calculated to lead to the discovery of admissible

4

evidence. The frequency and substance of any license requests, even if ultimately declined or

5

ignored by Apple, sheds light both on how those outside of Apple value the preliminary injunction

6

patents, as well as how Apple itself values them. This is more than conceptually pertinent to

7

Apple’s willingness to license the patents, 6 because even a well-resourced party like Apple is

8

subject to the microeconomic maxim that supply tends to increase as does price.

9

Of course, the initial premise of this discussion, that Apple has no burden in complying

United States District Court
For the Northern District of California

10

with Samsung’s request, is false. Apple very much confronts a substantial burden in collecting and

11

reviewing data from every possible source within its corporate structure. Fortunately, at oral

12

argument, counsel for Samsung suggested that any order compelling supplementation apply only to

13

the two Apple licensing department employees that Apple previously disclosed to Samsung under

14

Rule 26(a). The court agrees that this strikes the appropriate balance between the competing

15

concerns of the parties.

16

V.

17

CONCLUSION

The court GRANTS-IN-PART Samsung’s motion to compel production from Apple. Apple

18

shall supplement its response to Interrogatory No. 4 in accordance with the foregoing. Apple may

19

limit its response to information supplied to the two licensing department employees identified in

20

Apple’s Rule 26(a) disclosure. Samsung shall comply with this order no later than June 7 at noon,

21

so that Judge Koh will have access to this information before ruling on Apple’s motion.

22
23
24
6

25
26
27
28

See Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008) (“While the fact that a
patentee has previously chosen to license the patent may indicate that a reasonable royalty does
compensate for an infringement, that is but one factor for the district court to consider.”); High
Tech Med. Instr., Inc. v. New Image Inds., Inc., 49 F.3d 1551, 1557 (Fed. Cir. 1995) (finding that a
patentee’s offer of a license “suggests that any injury suffered by HTMI [the patentee] would be
compensable in damages assessed as part of the final judgment in the case”).
3
Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL

1

IT IS SO ORDERED.

2

Dated: 6/5/2012

3

_________________________________
PAUL S. GREWAL
United States Magistrate Judge

4
5
6
7
8
9
United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

4
Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL