United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE
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.
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
INTERROGATORY NO. 2
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).
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.
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
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.
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.