Helferich Patent Licensing, LLC. v. New York Times Co.

Filing 227

WRITTEN Opinion entered by the Honorable Jeffrey T. Gilbert on 3/8/2013: Hearing held on Defendants' Unopposed-In-Part Motion To Compel Production of Third-Party Licenses & Limited Access Exception For Licensing Documents [DE# 204 ]. For the re asons stated on the record, the Motion is granted in part, denied in part, and withdrawn in part. Hearing held on Motion By Objector Nokia Corporation To Intervene [DE# 216 ]. The Motion is granted and Nokia is allowed to intervene in this case for t he limited purpose of objecting to Defendants' Motion to Compel [DE# 204 ]. Objectors PGA Tour, Inc. and Kyocera Corporation also are granted leave to intervene in this case for the same limited purpose. See Statement for further details. Mailed notice(mr, )

Order Form (01/2005)

United States District Court, Northern District of Illinois
Name of Assigned Judge
or Magistrate Judge

John W. Darrah

CASE NUMBER

10 C 4387

CASE
TITLE

Sitting Judge if Other
than Assigned Judge

DATE

Jeffrey Gilbert
3/8/2013

Helferich Patent Licensing, LLC. Vs. New York Times Co.

DOCKET ENTRY TEXT

Hearing held on Defendants’ Unopposed-In-Part Motion To Compel Production of Third-Party Licenses &
Limited Access Exception For Licensing Documents [DE#204]. For the reasons stated on the record, the Motion
is granted in part, denied in part, and withdrawn in part. Hearing held on Motion By Objector Nokia Corporation
To Intervene [DE#216]. The Motion is granted and Nokia is allowed to intervene in this case for the limited
purpose of objecting to Defendants’ Motion to Compel [DE#204]. Objectors PGA Tour, Inc. and Kyocera
Corporation also are granted leave to intervene in this case for the same limited purpose. See Statement below
for further details.
O[ For further details see Statement below.]

Notices mailed by Judicial staff.

01:30

STATEMENT
After extended colloquy during this morning’s hearing, Defendants withdrew without prejudice large portions
of their Motion to Compel except to the extent that Defendants sought a court order that would allow Defendants’
inside counsel to see the actual license terms in Plaintiff’s license agreements with handset providers that have
been produced as Highly Confidential documents in this case and, further, except as to the production of the
license agreements and licensing-related documents pertaining to certain companies with whom Plaintiff has
entered into either handset or content licenses but as to whom Plaintiff has not yet produced such documents,
including PGA, Nokia, Kyocera and three other companies that have chosen to remain anonymous.
For the reasons discussed on the record, the Court (1) denies without prejudice Defendant’s Motion, even as
limited as discussed above, because it is not convinced that Defendant has met its burden of showing that not
providing inside counsel with access to these documents, as to which the Highly Confidential designation remains
in effect and has not been challenged generally, would unduly prejudice Defendants in their upcoming briefing
of the patent exhaustion issue, which briefing was the primary impetus Defendants filed or joined in the Motion
to Compel; and (2) grants Defendant’s Motion in part with respect to the as yet unproduced license agreements
Plaintiff entered into with PGA, Nokia, Kyocera and the anonymous licensees.
Although the Court denies Defendant’s Motion without prejudice, it strongly encourages the parties to meet and
confer, and reach agreement, on the production of an exemplar set of redacted handset license agreements along
the lines suggested by Plaintiff at the end of its Response Brief [DE#212] at 14. That is, to agree upon a set of
three, five or seven (or somewhat more or less than that if it makes sense) redacted handset license agreements,
without any identifying names, financial, royalty or licensee fee information particular to individual licensees,
that can be disclosed to inside counsel and will allow inside counsel to see the actual terms of the licenses
Plaintiff has entered into with handset providers without identifying by name which handset providers agreed
to particular license terms. As the Court stated on the record, this procedure makes sense in this case, even
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STATEMENT
without regard to Defendant’s Motion, because, absent such an agreement, all of the briefing and the District
Judge’s ultimate decision on the exhaustion issue will have to be conducted under seal in accordance with the
terms of the Protective Order since the license agreements are designated as Highly Confidential. At the same
time, this procedure largely accomplishes Defendants’ stated core goal in filing or joining in the Motion to
Compel – which is to permit outside and inside counsel to discuss strategy and briefing of the exhaustion issue
with reference to the actual language in the handset licenses that is central to Defendants’ exhaustion affirmative
defense. If the parties cannot reach agreement on such a procedure in short order, the Court requests that they
contact the Court’s courtroom deputy to set a date to come back and put this issue to bed so that it does not delay
the exhaustion briefing.
The Court also heard argument from PGA, Nokia and Kyocera concerning their particular objections to
Defendant’s Motion to Compel. For the reasons discussed on the record, the Court grants in part and denies in
part, again without prejudice, Defendants’ Motion as to these companies in that:
(a)

Plaintiff shall produce under the Highly Confidential designation the PGA and Nokia license agreements
redacting financial information including sales, revenue, royalty, fee and like information;

(b) Plaintiff is not required at this time to produce the related licensing files containing pre- and post-license
communications between Plaintiff and these companies, without prejudice to Defendants’ right to seek
this information in the future and solely because (I) the Court is not fully informed as to the contents of
those files and the asserted relevance of the information contained in those files to the claims or defenses
in this case, and (ii) that information is not critical to the upcoming exhaustion briefing that is the
immediate impetus for Defendants’ Motion to Compel; and
(c) Plaintiff is not required to produce the five financial documents referenced in Kyocera’s Objection
[DE#225]. The Court understands that Plaintiff already has produced its license agreement with Kyocera
and the related licensing file with the exception of there five financial documents. [DE#225] at 2.
Finally, the Court received in camera a letter from counsel for a consumer products company pursuant to the
schedule set in its order of 2/27/13 [DE#208]. That company is one of the companies Plaintiff indicated during
the hearing on 2/26/13 wishes to remain anonymous. For the reasons discussed on the record, Plaintiff shall
produce an unredacted version of its license agreement with this company (previously produced with redactions)
in accordance with the agreement reached between this company and Defendants including the term of their
agreement that restricts public disclosure of the name of the company or the unredacted license agreement. That
license agreement also shall not be disclosed to Defendants’ inside counsel at this time. Plaintiff also shall
produce to Defendants unredacted versions of the license agreements it entered into with the two other
anonymous companies that previously were produced with redactions. Neither of these two companies submitted
an objection to production of their license agreements without redaction in accordance with the procedure
outlined in the Court’s order of 2/27/13. The Court denies without prejudice at this time, and for the same
reasons discussed above with respect to Nokia and PGA, Defendants’ request for the related licensing file
documents for these three companies to the extent those documents have not already been produced.
The immediately preceding paragraph summarizes the Court’s ruling at the end of this morning’s hearing with
respect to the license agreements Plaintiff entered into with the three companies that want to remain anonymous.
The Court, however, reviewed the audio recording from this morning’s hearing after the hearing concluded
because it was unsure whether the licensing files or financial information for these companies already has been
produced by Plaintiff without redaction other than the companies’ names. Plaintiff appears to have stated at the
hearing that it already has produced the license agreements for these three companies and the related licensing
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STATEMENT
files redacting only the name of the company that entered into the license agreement.
Therefore, for the avoidance of doubt and to clarify the Court’s ruling this morning, if Plaintiff already has
produced the license agreements it entered into with these three companies that want to remain anonymous,
without redacting financial, royalty or license fee information from those documents, then nothing in this order
is intended to change that result or allow Plaintiff now to redact information from those documents that already
was produced without redaction. The same holds true for the related licensing files for these three companies
if those files already have been produced.
It is so ordered.

10C4387 Helferich Patent Licensing, LLC. Vs. New York Times Co.

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