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Order Granting WiLAN Motion to Compel PCD - 1 IN THE UNITED STATES

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Order Granting WiLAN Motion to Compel PCD - 1 IN THE UNITED STATES Powered By Docstoc
					           Case 2:08-cv-00247-TJW Document 174           Filed 09/22/10 Page 1 of 7




                        IN THE UNITED STATES DISTRICT COURT
                         FOR THE EASTERN DISTRICT OF TEXAS
                                 MARSHALL DIVISION

WI-LAN, INC.,                                   §
                                                §
          Plaintiff,                            §
v.                                              § CASE NO. 2:08-CV-247-TJW
                                                §
RESEARCH IN MOTION CORPORATION,                 §
RESEARCH IN MOTION LTD.,                        §
MOTOROLA, INC., UTSTARCOM, INC.,                §
LG ELECTRONICS MOBILECOMM                       §
U.S.A., AND LG ELECTRONICS, INC.,               §
                                                §
          Defendants.                           §


                                            ORDER

          Pending before the Court is Plaintiff Wi-LAN Inc.’s (“Plaintiff” or “Wi-LAN”) Motion

to Compel Complete Document Production and Interrogatory Responses from Defendant

Personal Communications Devices, LLC (“PCD”) (Dkt. No. 163). In its motion, Wi-LAN

requests that the Court compel PCD to produce documents and respond to Wi-LAN’s Common

Interrogatory Nos. 1-19 and Wi-LAN’s Specific Interrogatory Nos. 1, 2, 3, 5, 7, 8, 11, 12, and

13. For the reasons discussed below, the Court GRANTS Plaintiff’s motion (Dkt. No. 163).

     I.   Documents

          Wi-LAN argues that PCD has produced only 22 documents consisting of phone box

covers and user guides but this production does not include PCD’s licenses and other documents

relating to the calculation of damages for PCD’s infringement of the patents-in-suit, including

sales data for the accused products and PCD’s contracts and communications with manufactures

of the accused products or wireless carriers who ultimately sell the accused products to


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consumers. Wi-LAN also argues that PCD’s 30(b)(6) corporate representative, Neil Levine

(“Levine”), testified during his deposition that numerous additional relevant documents existed

and that many were easily accessible in a drawer in his office.             Based on Plaintiff’s

representation of Levine’s deposition testimony,1 the Court ORDERS PCD to produce any and

all documents related to the categories listed by Wi-LAN in its motion to compel beginning at

the bottom of page 4 and continuing through the top of page 6 within 7 days from the date of this

order.

         Wi-LAN also argues that PCD has refused to produce technical documents related to

accused products it purchases from original equipment manufacturer (“OEM”) HTC Corp.

(“HTC”) because, according to PCD, it does not have possession, custody, or control over these

documents.     PCD argues that these documents are more readily ascertainable from HTC.

However, Levine testified during his deposition that PCD did have access to schematics and data

sheets for the accused products it purchases from HTC. This Court has held that a party’s

“obligation to produce any and all relevant documents in their possession, custody, or control

includes the obligation to produce documents in the possession of third parties if the defendants

have the right of control over those documents.” Sensormatic Electronic Corp. v. W. G. Security

Products, Inc., 2006 WL 5111116, at *1 (E.D. Tex. 2006). Documents are considered to be

under a party’s control for discovery purposes when that party has the right, authority, or

practical ability to obtain the documents from a nonparty to the suit. Kamatani v. BenQ Corp.,

1
  Although Wi-LAN cites to page and line designations of Levine’s deposition testimony relating
to PCD’s possession of various categories of documents on pages 4 through 6 of Wi-LAN’s
motion, neither party has furnished the Court with these relevant portions of Levine’s deposition.
However, PCD did not rebut the accuracy of Wi-LAN characterization of Levine’s testimony
regarding these documents or provide this testimony. Accordingly, the Court will accept Wi-
LAN’s representations regarding Levine’s deposition testimony on these points as true.

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2005 WL 2455825, at *5 (E.D. Tex. 2005). Accordingly, the Court ORDERS that PCD is to

produce the schematics and data sheets for the accused products it purchases from HTC within 7

days of the date of this order.

        PCD argues that many of the categories of documents sought by Wi-LAN are irrelevant

because they seek the production of documents and information related to accused products sold

by PCD that were manufactured by companies that are licensees of the patents-in-suit. PCD’s

position is patently frivolous. Although PCD has asserted a blanket license defense, it has not

filed a motion for summary judgment based on its license defense, nor has the Court ruled on the

validity of its license defense or dismissed the infringement claims against PCD for these

products.     These products are, thus, still accused products for the purpose of discovery.

Accordingly, information regarding these accused products is relevant to the claims and defenses

in this case and must be produced. A defendant may not assert a defense and, based on nothing

more than its own statement of the validity of that defense, refuse to produce documents and

information related to that defense or accused products allegedly subject to that defense. PCD’s

frivolous argument has not only wasted the Plaintiff’s time in bringing this motion, but has also

wasted the Court’s limited time and resources. The Court ORDERS that all documents and

information related to accused products sold by PCD that are allegedly manufactured by

companies that are licensees of the patents-in-suit must be produced within 7 days of the date of

this order.




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 II.    Interrogatories

        In its motion, Wi-LAN also request that the Court compel PCD to supplement its answers

to Wi-LAN’s Common Interrogatory Nos. 1-19 and Wi-LAN’s Specific Interrogatory Nos. 1, 2,

3, 5, 7, 8, 11, 12, and 13.

        Wi-LAN’s Common Interrogatory No. 1 requests that PCD identify all products it sells

that are compliant with the accused standards or that use underlying accused technology. The

interrogatory also requests that PCD identify (1) with which specific standard each product

complies, (2) the product name and number, (3) the dates developed, (4) the first sale date for

each product, and (5) persons with knowledge for each product. PCD responded identifying

products and stating they were either compliant or may contain functionality related to either

IEEE 802.11 or CDMA2000 standards, but did not identify the section of the 802.11 standards

with which these products comply. Accordingly, the Court ORDERS PCD to supplement its

response to Wi-LAN’s Common Interrogatory No. 1 to identify the section of the 802.11

standard with which each product complies within 7 days from the date of this order.

        Wi-LAN’s Common Interrogatory No. 2 requests identification of the components

involved in or responsible for the product’s ability to transmit and receive wireless data. The

interrogatory also requests that PCD identify (1) the manufacturer and product number of these

components, (2) the person or persons who are most knowledgeable regarding the design,

development, testing, structure, and operation of the components, and (3) the documents that

describe or explain the component’s ability to transmit and receive wireless data.        PCD

responded by identifying the handset and chipset manufacturer for each product, but did not

identify the specific product number of each chipset incorporated into the accused devices it


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sells. The Court, therefore, ORDERS PCD to supplement its response to Wi-LAN’s Common

Interrogatory No. 2 to identify the specific product number of the each chipset incorporated into

each accused devise made, used, sold, or offered for sale by PCD within 7 days from the date of

this order.

        PCD never responded or objected to Wi-LAN’s Common Interrogatory Nos. 3-19.

Accordingly, the Court ORDERS that PCD serve complete responses to these interrogatories

within 7 days from the date of this order.

        Wi-LAN’s Specific Interrogatory Nos. 1, 3, 5, 7, 8, and 11 seek a wide range of

information, including identification of PCD’s top 1000 customers, testing information,

advantages or disadvantages of the accused technology to customers, reasons for the design or

development of the accused products, and identification of all contracts, training, technical

support, and/or consulting services provided relating to the use of the wireless communications

capabilities of the accused products or the interoperability of the accused products with other

systems.      PCD’s response to each of these interrogatories cites to Federal Rule of Civil

Procedure 33(d) and then states that the answer can be found by reviewing PCD’s entire

production of documents.       Although PCD has produced an admittedly small number of

documents, referencing their entire production of documents in response to such wide ranging

interrogatories does not comply with Federal Rule of Civil Procedure 33(d).          The Court,

therefore, ORDERS PCD to fully respond to Wi-LAN’s Specific Interrogatory Nos. 1, 3, 5, 7, 8,

and 11, including identification of specific documents in PCD’s current or supplemental

production in which the requested information can be ascertained.




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       Wi-LAN’s Specific Interrogatory No. 2 asks for PCD to identify its top 100 investors and

shareholders and communications with them regarding the accused products. PCD’s response

states that PCD is a wholly owned subsidiary of Personal Communications Devices Holdings,

LLC but does not identify any communications related to the design, development, use,

structure, operation, configuration, modification, advantages, disadvantages, and projections for

related markets of the accused products. PCD’s response also fails to identify any documents

related to these communications. The Court ORDERS PCD to fully respond to Wi-LAN’s

Specific Interrogatory No. 2 within 7 days of the date of this order.

       Wi-LAN’s Specific Interrogatory No. 12 requests a description of all means or methods

used to distribute, license, sell, or offer to sell the accused products and the legal and factual

basis for any contention that these means or methods limits Wi-LAN’s damages.                  PCD’s

response simply states that it sells four non-licensed models but fails to identify the means or

methods it uses to distribute, license, sell, or offer to sell the or how these sales and/or licensing

methods may limit PCD’s damages for infringement. PCD also fails to provide information

related to any models its sells that are subject to its license defense or identify any documents

related to this interrogatory. As discussed above, information regarding the accused products

subject to PCD’s license defense is relevant and discoverable. PCD may not, therefore, withhold

information regarding these accused products based on its asserted license defense. The Court

ORDERS PCD to supplement and fully respond to Wi-LAN’s Specific Interrogatory No. 12

within 7 days from the date of this order.

       Finally, Wi-LAN’s Specific Interrogatory No. 13 seeks identification of any non parties

to the litigation that PCD has contacted or attempted to contract regarding any claim, defense,


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counterclaim, issue, or fact related to the litigation. PCD responded that its attorneys have been

in contact with counsel for HTC but failed to identify when each communication took place, the

subject matter discussed, and a description of each discussion. PCD also failed to identify or

produce any documents relevant to these communications.              The Court ORDERS PCD to

supplement and fully respond to Wi-LAN’s Specific Interrogatory No. 13, including any claims

of privilege related to its response, within 7 days from the date of this order.

       IT IS SO ORDERED.

        SIGNED this 22nd day of September, 2010.



                                               __________________________________________
                                               T. JOHN WARD
                                               UNITED STATES DISTRICT JUDGE




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