Rockstar Consortium US LP et al v. Google Inc

Filing 206

ORDER denying 117 Motion to Strike ; denying 122 Motion to Strike ; granting in part and denying in part 126 Motion to Compel; granting in part and denying in part 136 Sealed Motion; granting in part and denying in part 150 Motion for Protective Order; granting in part and denying in part 152 Motion for Protective Order. Signed by Magistrate Judge Roy S. Payne on 10/15/2014. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP, ET
AL.
v.

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GOOGLE, INC.

Case No. 2:13cv-893-JRG-RSP

ORDER
For the reasons set forth in the October 9, 2014 and October 10, 2014 hearings, the Court
ORDERS the following:
(1) Plaintiff’s Motion to Strike Defendant Google Inc.'s Deficient Obviousness Disclosure
Under Patent Rule 3-3(B) (Dkt. No. 117) is DENIED.
(2) Defendant’s Motion to Strike Plaintiffs' Patent Rule 3-1 Infringement Contentions (Dkt.
No. 122) is DENIED.
(3) Plaintiff’s Motion to Compel (Dkt. 126) is GRANTED-IN-PART as follows:
•

Regarding the search and production of relevant ESI documents of the five executives
set forth in the motion (Dkt. No. 126 at 5), the parties are ORDERED to (i) notify the
Court of the parties’ agreed upon search terms or (ii) provide supplemental briefing
with the parties’ respective search term positions by 5:00 p.m. Central Standard Time
on Wednesday, October 15, 2014.

•

Regarding post-litigation document production, Defendant Google is ORDERED to
produce non-public patent applications filed by Defendant Google since the filing of
the instant dispute.

•

As to Plaintiff Rockstar’s request for documents regarding infringement, damages,
and validity of non-accused products as set forth in the briefing, the request is

GRANTED to the extent Defendant Google is ORDERED to produce relevant
documents relating to how Defendant’s non-accused instrumentalities make use of
data generated by the accused products.
•

Regarding the production relating to previous litigation, Defendant Google is
ORDERED to produce the following categories of documents for each of the three
previous litigations (1) I/P Engine, Inc. (2) Function Media, LLC; and (3)
Overture/Yahoo!:1
o All documents produced to the opposing parties by Google;
o All sworn testimony of Google witnesses;
o A list of all trial exhibits; and
o All expert reports.

•

Defendant Google shall reserve the opportunity to raise cost shifting concerns relating
to the production of documents from Overture/Yahoo! Litigation due to the age of the
storage systems.

•

Plaintiff Rockstar’s request for the production of Google’s intra-corporate licenses
(Technology Transfer Agreements) is DENIED.

(4) Defendant Google’s Motion Compel Complete Responses to Interrogatory Nos. 1, 7, 10,
11 and 13 (Dkt. 136) is GRANTED-IN-PART as follows:
•

Regarding Interrogatory 1, Plaintiff Rockstar agreed to supplement Interrogatory 1 to
include “on or about” language regarding its conception date. Rockstar is ORDERED
to further supplement its response to Interrogatory 1 to include details regarding the

1

See Ex. 1 at 16–17, Dkt. No. 126-3 (document requests 93(a), (b), and (g)).

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development of the patented process, to name all persons involved, and to describe
acts of diligence.
•

Regarding Interrogatories 7, 10, and 11, Defendant Google’s request for supplemental
responses is DENIED.

•

Regarding Interrogatory 13, Plaintiff Rockstar shall supplement its infringement
contentions and its response to Interrogatory 13 (including relevant documents
evidencing Plaintiff Rockstar’s infringement positions) no later than November 20,
2014.

(5)

Nortel Networks Inc.’s Motion for Protective Order Regarding Privileged and

Confidential Nortel Documents (Dkt. No. 150) and Nortel Networks Corporation and Nortel
Networks Limited Motion for Protective Order (Dkt. No. 152) are GRANTED-IN-PART as
follows:
•

Plaintiff Rockstar is ORDERED to use its best efforts to cooperate with Nortel
Networks Inc., Nortel Networks Corporation, and Nortel Networks Limited
(collectively, “Nortel”) to devise search terms for the production of transferred data
(which shall be understood to be data relevant to the assigned patents). Plaintiff
Rockstar is further ORDERED to deliver to Defendant Google no later than Monday,
October 27, 2014 all non-privileged, transferred data along with an appropriate
privilege log identifying all documents and data withheld from production.

•

Plaintiff Rockstar is further ORDERED to preserve the computers and all data stored
therein—including all Nortel transferred and non-transferred data—through the
conclusion of the pending litigation.

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.

•

Plaintiff Rockstar and Third Parties Nortel are ORDERED to file supplemental
briefing no later than Monday, October 20, 2014 regarding the issue of privilege
waiver of transferred data. Defendant Google shall file its response no later than
seven (7) days from the filing of the supplemental briefs. The length of the brief and
response shall not exceed ten (10) pages each. The Court holds that the review of
Nortel’s data by Plaintiffs does not constitute a waiver of any privileges attached to

the data.
SIGNED this 3rd day of January, 2012.
SIGNED this 15th day of October, 2014.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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