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Sol IP, LLC v. AT&T Mobility LLC

United States District Court, E.D. Texas, Marshall Division

January 5, 2020

SOL IP, LLC, Plaintiff,
v.
AT&T MOBILITY LLC, Defendant, ERICSSON INC. and NOKIA OF AMERICA CORPORATION, Intervenors. SPRINT COMMUNICATIONS COMPANY L.P., SPRINT SOLUTIONS, INC., and SPRINT SPECTRUM L.P., Defendants, ERICSSON INC. and NOKIA OF AMERICA CORPORATION, Intervenors. VERIZON COMMUNICATIONS INC. and CELLCO PARTNERSHIP d/b/a VERIZON WIRELESS, Defendants, ERICSSON INC. and NOKIA OF AMERICA CORPORATION, Intervenors.

          MEMORANDUM OPINION AND ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE

         Before the Court is Motion to Compel Plaintiff Sol IP, LLC to Respond to Interrogatories (“Motion to Compel”), which was filed by Defendants AT&T Mobility LLC, Sprint Communications Co. L.P., Sprint Solutions, Inc., Sprint Spectrum, L.P., Cellco Partnership d/b/a Verizon Wireless, and Defendant-Intervenor Ericsson Inc. (collectively “Defendants”). Dkt. No. 213. This Motion to Compel seeks to compel further responses to Defendants' Common Interrogatory Nos. 2, 9, and 12. Id. Interrogatory No. 2 requests information related to Plaintiff Sol IP, LLC's (“Plaintiff”) claimed priority dates, Interrogatory No. 9 relates to Plaintiff's prior licensing negotiations for the patents-in-suit, and Interrogatory No. 12 requests that Plaintiff identify which ETRI contributions correspond to each of the asserted patents. Id. at 1-2.

         After consideration, Defendants' Motion to Compel is GRANTED-IN-PART. The Motion is DENIED with respect to Interrogatory No. 2 and Interrogatory No. 12. For Interrogatory No. 9, Defendants' Motion to Compel is DENIED for requested information on negotiations that have not resulted in a license, but the Motion is GRANTED for requested information on negotiations that have resulted in a license.

         I. INTERROGATORY NO. 2

         Interrogatory No. 2 requests the following information:

For any patent that claims priority to an earlier application (as contended in the cover pleading to Plaintiff Sol IP's Disclosures Pursuant to Local Patent Rules 3-1 and 3-2 (Mar. 11, 2019) and any amendments thereto), identify for each element of each Asserted Claim, by column, line, and/or figure number of each earlier application, all disclosure You contend provides written description and enablement support required by 35 U.S.C. § 112.

Dkt. No. 213 at 2-3 (emphasis added).

         Defendants argue that, “[t]o support its claim to priority, [Plaintiff] must show that each and every claim limitation is supported by written description in the cited applications.” Id. at 5 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Defendants assert that Plaintiff only provides “large ranges of text” to support its claim to priority without identifying the portions of the cited applications that support Plaintiff's claims to priority. Id. Defendants argue that Plaintiff's failure to specifically identify the relevant portions of the applications prevents Defendants from having a chance to reasonably evaluate Plaintiff's priority claims, and Defendants also argue that they will be significantly prejudiced if Plaintiff fails to provide this identification before Defendants are forced to make a prior art reduction. Id.

         In response, Plaintiff argues that Defendants' interrogatories exceed the requirements of the local rules. Dkt. No. 227 at 2 (citing L.P.R. 3-1(e) (“Separately for each opposing party, the ‘Disclosure of Asserted Claims and Infringement Contentions' shall contain the following information: . . . (e) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled. . . .”)). Plaintiff states that it “prepared and provided a chart that identified (by date) any applicable priority application for each of its asserted claims and provided citations to the pages and figures of those applications that support those priority dates.” Id. Plaintiff contends that this chart provided “ample information from which defendants can evaluate how the earlier applications support plaintiff's claimed priority dates.” Id. Plaintiff argues that requiring a response on an element-by-element basis is unreasonably burdensome and exceeds the scope of discovery. Id. at 2-3. To support this contention, Plaintiff cites to Finjan, Inc. v. ESET, LLC, in which the Southern District of California found similar requests to be unreasonably burdensome. Id. (citing Finjan, No. 3:17-CV-00183-CAB-BGS, 2018 WL 4772124, at *5 (S.D. Cal. Oct. 3, 2018), adopted by, No. 3:17-CV-00183-CAB-BGS, 2018 WL 6075797 (S.D. Cal. Nov. 21, 2018)). The Finjan court stated that

Although this interrogatory is framed in terms of claim-by-claim priority dates, the request for mapping claim elements to particular portions of specifications, albeit to justify the associated priority dates, seems to make it more like some sort of written description contentions. And, although the Court does not find parties are absolutely precluded from seeking discovery in a chart format unless specified in the Patent Local Rules as Finjan seems to argue, the Court recognizes that demanding this level of specificity in a claim chart, particularly the mapping it demands, is a significant burden. It, as with Interrogatory No. 4, is the type of “scorched earth, ” “no stone unturned” (potentially numerous times) approach to discovery the changes to Rule 26 were intended to curb. Given the other avenues for discovering this information already provided and the burden imposed in responding to it, the Court finds no further response to the interrogatory is required.

Finjan, 2018 WL 4772124, at *5. Plaintiff also argues that “Defendants' interrogatory is also overbroad and disproportionate to the needs of the case because it is not limited to only those claims and elements that they contend are missing in the priority application or are the subject of an invalidity contention that turns on the earlier priority date.” Dkt. No. 227 at 3.

         The Court concludes that the information sought by this interrogatory is not proportional to the needs of this case. The local rules do not require this level of specificity that Defendants seek in their interrogatory. Instead, the local patent rules only require that priority must be provided on a claim-by-claim basis. L.P.R. 3-1(e) (“Separately for each opposing party, the ‘Disclosure of Asserted Claims and Infringement Contentions' shall contain the following information: . . . (e) For any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled. . . .”) (emphasis added). Further, Defendants do not limit this interrogatory to only claims for which Defendants reasonably assert that § 112 support is lacking - Defendants instead seek these contentions for every element of every asserted claim. The information sought within the contentions may also be obtained through other means such as by deposition. Due to the availability of alternative means for discovering this information and the burden that would be imposed if such detailed responses were required, the Court finds the reasoning of Finjan to be persuasive. Accordingly, the Court DENIES this Motion to Compel with respect to Interrogatory No. 2.

         II. ...


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