Software Rights Archive, LLC v. Facebook, Inc.

Filing 41

Order by Hon. Ronald M. Whyte re 40 Discovery Dispute Joint Report #1(rmwlc1, COURT STAFF) (Filed on 2/15/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SOFTWARE RIGHTS ARCHIVE, LLC,

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Plaintiff,

FACEBOOK, INC.,

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SOFTWARE RIGHTS ARCHIVE, LLC,

Case No. 12-CV-3971-RMW

Plaintiff,
v.
LINKEDIN CORPORATION,

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[Re: Docket No. 40]

Defendant,

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ORDER REGARDING DISCOVERY
DISPUTE JOINT REPORT # 1

v.

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Case No. 12-CV-3970 RMW

Defendant,
SOFTWARE RIGHTS ARCHIVE, LLC,

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Case No. 12-CV-3972-RMW

Plaintiff,

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v.

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TWITTER, INC.,

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Defendant.

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ORDER REGARDING
DISCOVERY DISPUTE JOINT REPORT #1
C12-3970, C12-3971, C12-3972-RMW

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Defendants Facebook, Inc., LinkedIn Corporation, and Twitter, Inc. (collectively,

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"defendants") seek an order requiring plaintiff Software Rights Archive, LLC ("SRA") to reduce

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the total number of claims asserted in this action from 74 1 to 30 claims total in advance of the

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March 29, 2013 deadline for service of invalidity contentions. Defendants argue that requiring

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SRA to reduce the claims as such "will promote judicial economy and efficiency and streamline

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this case," while at the same time "giving SRA a sufficient number and diversity of claims to

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pursue." Disc. Dispute Joint Rep. 2-3 (Dkt. No. 40). Defendants contend that limiting the

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asserted claims at this stage does not violate SRA's Due Process rights because SRA is permitted

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to "seek leave to add additional claims upon a showing that the additional claims present unique

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issues." Id. at 3 (citing In re Katz Call Processing Litigation, 639 F.3d 1303, 1312 (Fed. Cir.

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2011).

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SRA argues that requiring it to select 30 claims at this stage is premature and violates its

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Due Process rights because, according to SRA, it "has not been provided sufficient discovery as

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to the accused backend systems of [d]efendants to review issues of infringement and damages."

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Id. 5. SRI alleges that such an order would be akin to requiring SRA to "blindly guess at which

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claims present unique infringement and validity issues." Id. at 6. SRA proposes that it is willing

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to limit is claims to 30 by August 16, 2013, the court ordered deadline for SRA to serve updated

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infringement contentions, which SRA alleges will allow for sufficient "technical discovery." Id.

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at 5-6. SRI conditions this proposal on the court ordering defendants "to limit [their] invalidity

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contentions to four anticipatory and four obviousness combinations." Id. at 8.

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The court is not persuaded that requiring SRI to limit its asserted claims to 30 at this stage

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presents any Due Process issue. The Case Management Scheduling Order provides SRI the

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opportunity to amend its infringement contentions on August 16, 2013, upon a showing of good

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cause. Dkt. No. 39. To the extent that RSI's technical discovery does give rise to additional

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In this number, defendants include claim 5 of the '571 Patent ("claim 4" appeared twice in RSI's
chart, but the second instance of "claim 4" quoted the language of claim 5); claim 28 of the '494
Patent (listed in the pleadings but not charted by SRA); and two claims against Facebook and one
against LinkedIn that are dependent on claims cancelled during reexam that were not rewritten in
independent form.
ORDER REGARDING
DISCOVERY DISPUTE JOINT REPORT #1
C12-3970, C12-3971, C12-3972-RMW

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claims presenting unique questions of validity, RSI can amend its asserted claims at that time to

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include those additional claims. However, at this stage, the court believes judicial efficiency and

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economy is best served by limiting the number of claims asserted before defendants spend time

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and resources preparing invalidity contentions.

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The court also notes that, to the extent many of the same claims were asserted in SRI's

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litigation against Google, Inc. (SRI argues that defendants already "have in their possession

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extensive invalidity contentions from the previous case for 43 of the 74 asserted claims," Disc.

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Dispute Joint Rep. 7), the fact that the defendant in that case apparently did not seek to limit the

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number of claims asserted should not prejudice defendants from doing so here. Since SRI's

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action against Google, many of the claims have emerged from reexamination with amendments or

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altered scope.

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Accordingly, the court ORDERS SRI to limit its asserted claims to 30 on or before March

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8, 2013, which gives defendants sufficient time (three weeks) to prepare invalidity contentions

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with respect to those 30 claims.

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The court further ORDERS each defendant to limit its invalidity contentions to four

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anticipatory references and four obviousness combinations, as the court sees no legitimate basis

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for asserting more references in this case.

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IT IS SO ORDERED

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February 15, 2013
Dated: ___________________
_______________________________
Honorable Ronald M. Whyte
United States District Judge

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ORDER REGARDING
DISCOVERY DISPUTE JOINT REPORT #1
C12-3970, C12-3971, C12-3972-RMW

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