The opinion
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8 UNITED STATES DISTRICT COURT
9 SOUTHERN DISTRICT OF CALIFORNIA
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11 IMPACT ENGINE, INC., Case No.: 19-cv-01301-CAB-BGS
12 Plaintiff,
ORDER ON DISPUTED
13 v. INTERROGATORIES NOS. 1 & 12
14 GOOGLE LLC,
[ECF NO. 66]
15 Defendant.
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17 On April 22, 2020 the parties indicated there were disputes regarding four of
18 Google’s interrogatories. (ECF No. 64.) The Court allowed the parties to file a Joint
19 Statement in which both sides were to “specify the exact issues in dispute” and explain
20 their positions. Id. Thereafter, the parties filed their Joint Statement regarding Google’s
21 Interrogatory Nos. 1 and 12, while indicating that they had resolved the other two
22 interrogatories in dispute. (ECF No. 66 at 2.)
23 I. Dispute Regarding Google’s Interrogatory No. 1
24 Google specifies the information it is requesting in Interrogatory No. 1 (“ROG
25 #1”) as follows: “Interrogatory No. 1 asks Plaintiff to describe, in detail, on an element
26 by element basis, all facts relating to conception and reduction to practice of the asserted
27 claims, including all acts it contends represent diligence between conception and
28 reduction to practice; the persons involved in the conception and reduction to practice;
1 where the invention was first reduced to practice; when, where, and to whom it was first
2 disclosed; and each person who worked on the development of the alleged inventions.”
3 (ECF No. 66-1 at 2.)
4 There are two issues presented to the Court in this dispute. The first regards the
5 overbreadth and burden of ROG #1 on Impact. Impact’s principle objection to ROG #1
6 is the “element by element” component. (See ECF No. 66-2 at 2–3.) Impact argues that
7 seeking all details relating to conception and reduction to practice on an element by
8 element basis for all 41 asserted claims is burdensome and disproportionate to the needs
9 of the case. Id. at 2. Further, Impact asserts that Google has cited no legal authority that
10 supports this “element by element” request. Id. at 3.
11 Google contends that ROG #1 is relevant to Google’s invalidity defenses. (ECF
12 No. 66-1 at 2.) Specifically, Google argues that ROG #1 is relevant to its contention that
13 the priority date for each asserted claim is not “novel.” Id. Google also argues that ROG
14 #1 is relevant to issues as to whether the Plaintiff named the proper inventors of the
15 alleged invention. Id.
16 Conception and reduction to practice dates are relevant to a party’s defenses in
17 patent cases because they are related to the priority date, which a defendant “must beat to
18 show that the claims are invalid over the prior art.” Digital Reg. of Texas, LLC v. Adobe
19 Sys. Inc., 2013 WL 5442269, at *4 (N.D. Cal. 2013); Fresenius Med. Care Holding Inc.
20 v. Baxter Int’l, Inc., 224 F.R.D. 644, 650 (N.D. Cal. 2004). Impact responded to ROG #1
21 stating the conception and reduction to practice was “at least as early as” the filing of the
22 patent application. (ECF No. 66-1 at 3.) The Court finds this response to be incomplete.
23 See West v. Ultimate Metals Co., No. 13CV03651WHOMEJ, 2014 WL 466795, at *1
24 (N.D. Cal. 2014) (granting Defendant’s request for a further response after finding that
25 Plaintiff’s response that it was relying on his initial filing date for conception and
26 reduction to practice was inadequate).
27 However, the Court narrows ROG #1 to eliminate the “element by element”
28 portion. Google does not address specifically how an “element by element” analysis is
1 relevant to its invalidity defenses. Further, Google’s own relevancy arguments in support
2 of ROG #1 limit novelty to each asserted claim, not each element. (ECF No. 66-1 at 2)
3 (“Novelty is evaluated based on the “priority date” of each asserted claim.”); see N.D.
4 Cal. Model Patent Jury Instruction 4.3a1 (stating that a patent claim is invalid if the
5 claimed invention is not new, meaning “all the requirements must have existed in a single
6 device or method that predates the claimed invention”); Williams Advanced Materials,
7 Inc. v. Target Tech. Co., LLC, No. 03-CV-276-A, 2004 WL 1811397, at *8 (W.D.N.Y.
8 2004), aff'd, 140 F. App'x 268 (Fed. Cir. 2005) (reasoning that anticipation occurs when
9 the referenced prior art “expressly describes or inherently contains each element of a
10 claimed invention.”); Carman Indus., Inc. v. Wahl, 724 F.2d 932, 938 (Fed. Cir. 1983)
11 (reasoning that the invention was not anticipated where the prior art did not disclose all of
12 the elements of the invention).
13 Google’s other argument for relevancy is whether Impact named the proper
14 inventors of the alleged invention. (ECF No. 66-1 at 2.) Google, as to this defense, does
15 not offer how an element by element analysis is relevant. In fact, Model Patent Jury
16 Instructions for the Federal Circuit Bar Association defines inventor to be one who makes
17 a significant contribution to the conception of one or more claims of the patent. Fed. Cir.
18 B. Ass’n Model Patent Jury Instruction 4.3d; see Quintel Tech. Ltd. v. Huawei Techs.,
19 Inc., No. 4:15CV307, 2017 WL 9250312, at *24 (E.D. Tex. 2017) (stating that
20 inventorship is determined on a “claim by claim basis”).
21 The point is that both invalidity defenses for which Google seeks this discovery
22 require Google to prove that the asserted claims are either not novel and/or there were
23 earlier inventors of the asserted claim(s), i.e. inventions. The Court finds that by
24 requiring Impact to comply with an “element by element” analysis is unduly burdensome
25 and not proportional to the needs of the case. See e.g. Sol IP, LLC v. AT&T Mobility
26 LLC, No. 218CV00526RWSRSP, 2020 WL 60140, at *1–*2 (E.D. Tex. 2020)
27 (concluding that an element by element response requirement was not proportional to the
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1 needs of the case). Therefore, Impact is required to provide a further response to ROG #1
2 as narrowed by the Court and as summarized by Google.
3 The second issue presented in this dispute is the timing of Impact’s complete
4 response to ROG #1. Google wants the complete response by May 15th, while Impact
5 argues it is burdensome to require Impact to supplement its response by May 15th when
6 Google’s invalidity contentions were due May 8th.1 (ECF Nos. 66-1 at 2–3; 66-2 at 2–3.)
7 The Court concurs with the approach taken in West v. Ultimate Metals Co., wherein the
8 Court required, “If [Plaintiff] believes in good faith that he is unable to state a specific
9 date or dates, he shall state with clarity the approximate date or dates of conception he
10 intends to claim in this action.” West, 2014 WL 466795, at *1–*2 (citing Boston
11 Scientific Corp. v. Micrus Corp., 2007 WL 174475, at *1 (N.D. Cal. Jan. 22, 2007)).
12 In Boston Scientific, the Defendant sought the dates of conception and reduction to
13 practice. 2007 WL 174475, at *1. The Plaintiff argued it would be premature to require
14 it to take a firm position as to either date. Id. The Court held that Plaintiff did not need
15 to state specific dates if it in good faith believed it cannot do so, but ordered Plaintiff to
16 serve a further response stating with clarity the approximate date(s) of conception and of
17 actual reduction to practice the Plaintiff intends to claim in the action. Id. at *1–*2.
18 Accordingly, if Impact believes in good faith that at this point in the litigation it
19 cannot complete its response to ROG #1 as narrowed, then it is to give approximate
20 date(s) of conception and reduction to practice it intends to claim in this action. Such
21 response is due June 2, 2020, where Impact will either provide specific or approximate
22 dates of conception and reduction to practice. Further, the parties are to meet and confer
23 to try to resolve when Impact will be able to fully supplement ROG #1. If parties are
24 unable to decide when Impact will fully supplement ROG #1, they are to contact the
25 Court by June 10, 2020. The parties are to follow the Court’s procedures for bringing
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28 1 According to Impact, other than the uncertain date of conception and reduction to practice, it has identified the
1 discovery disputes if the parties are unable to decide when Impact will fully supplement
2 ROG #1. If parties do not contact the Court by that time, the Court will deem the issue to
3 be resolved.
4 II. Dispute Regarding Google’s Interrogatory No. 12
5 In Interrogatory No. 12 (“ROG #12”), Google seeks Impact “to identify in claim
6 chart form, for each limitation of an asserted claim, the portion of the specification
7 Plaintiff contends provides written description support and enabling disclosure.” (ECF
8 No. 66-1 at 3.) Google contends that this information is relevant to its affirmative
9 defense of invalidity for lack of written description and enablement, citing 35 U.S.C. §
10 112(a).2 Id. at 3–4. Google requests this information prior to claim construction and 21
11 days after it serves its invalidity contentions. Id. at 4. Google contends it needs this
12 information before claim construction because there may be claim construction disputes
13 based on Impact’s positions. Id.
14 Impact’s main objection to this ROG is the requirement to provide its response in a
15 chart form. It argues such is unduly burdensome, citing Finjan, Inc. v. ESET, LLC and
16 Friskit, Inc. v. Real Networks, Inc. in support of its position. (ECF No. 66-2 at 4); see
17 also Finjan, Inc. v. ESET, LLC, No. 17CV183-CAB-BGS, 2018 WL 4772124 (S.D. Cal.
18 Oct. 2018), review denied, 2018 WL 6075797 (S.D. Cal. Nov. 2018); Friskit, Inc. v. Real
19 Networks, Inc., No.C03-5085-WWS-MEJ, 2006 WL 1305218 (N.D. Cal. 2006). Impact
20 also argues that even if a more detailed response is required, a response in advance of
21 claim construction is premature. (ECF No. 66-2 at 4.)
22 This dispute concerns two issues: whether the requested information in chart form
23 is unduly burdensome and what is the proper timing of any response this Court orders.
24 The Court addresses each topic in turn.
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2 35 U.S.C. § 112(a) (applicable to applications filed on or after September 16, 2012) provides: (a) IN
27 GENERAL.—The specification shall contain a written description of the invention, and of the manner and
process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
28 art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth
1 In Apple Inc. v. Wi-LAN Inc., Apple argued that information regarding Wi-LAN’s
2 validity contentions was relevant and should not have to wait until rebuttal expert reports
3 to understand Wi-LAN’s position. No. 14CV2235-DMS-BLM, 2018 WL 733740, at *4
4 (S.D. Cal. 2018). Wi-LAN objected to providing such information, arguing that the
5 patents at issue are from the same “patent families” that were at issue in a prior case, so
6 that the prior invalidity reports in the previous case gave insight into Wi-LAN’s validity
7 positions. Id. Wi-LAN argued that it was not required to respond to the interrogatory
8 since it was Apple’s “burden of proving lack of written description or enablement by
9 clear and convincing evidence,” and Apple “had yet to rebut the presumption of
10 invalidity.” Id. at *4. Wi-LAN also argued that additional responses to the
11 interrogatories were “unnecessary and unduly burdensome.” Id. at *4.
12 The Court in Apple Inc. held, in pertinent part, that Apple was entitled to discovery
13 regarding Wi-LAN’s validity contentions beyond what Wi-LAN had provided in its
14 responses to Apple’s interrogatories. Id. at *5. However, to the extent that Apple sought
15 supplemental responses to the interrogatories in the form of claim charts, the Court
16 agreed with Wi-LAN that it may be unduly burdensome. Id. (citing Friskit, Inc., 2006
17 WL 1305218, at *1-2 (holding that a claim chart form for the written description,
18 enablement, and best mode support of each of the patentee’s asserted patent claims was
19 not required)).
20 The Court agrees that a detailed chart as requested by Google is unduly
21 burdensome. See e.g. Finjan, Inc., 2018 WL 4772124 at *2–*4 (S.D. Cal. Oct. 2018).
22 But Impact is required to supplement its response. The information requested by Google
23 is relevant, and Google is not required to establish a prima facie case of invalidity before
24 it can seek discovery on the validity of the patents.3 Apple Inc., 2018 WL 733740, at *4.
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3 Impact cited Friskit, Inc., 2006 WL 1305218 (N.D. Cal. 2006), wherein the Court denied Defendant’s motion to
compel a response because the burden was on the defendant to show invalidity for lack of written description.
28 (ECF No. 66-2 at 4.) To the extent Impact is making this argument, the Court as indicated disagrees with Friskit,
1 Although Impact’s overall objection is that responding to ROG #12 would be unduly
2 burdensome, Google has lightened this burden by agreeing to require a response as to
3 only those claims that it asserts lack written description or enablement. (ECF No. 66-1 at
4 4); see e.g. Sol IP, LLC, 2020 WL 60140, at *1–*2 (denying Defendants’ motion to
5 compel a similar interrogatory due to Defendants’ failure to limit the interrogatory to
6 only claims for which it reasonably asserted § 112 support was lacking).
7 The second issue in dispute regards when Impact is required to provide its
8 supplemental response to ROG #12. Google argues that Impact should respond by May
9 29th, 21 days after Google is scheduled to provide its invalidity contentions. (ECF No.
10 66-1 at 4.) Impact objected to responding by May 29th, arguing that a “response in
11 advance of claim construction is premature.”4 (ECF No. 66-2 at 4.)
12 The Court has discretion in ordering a party not to “answer a contention
13 interrogatory until designated discovery is complete or at some other time.” Fed. R. Civ.
14 P. 33(a)(2); In re eBay Seller Antitrust Litig., No. C 07-1882 JF (RS), 2008 WL 5212170,
15 at *1 (N.D. Cal. Dec. 2008). But when using this discretion, Courts generally disfavor
16 contention interrogatories before substantial discovery has taken place. See In re eBay
17 Seller Antitrust Litig., 2008 WL 5212170, at *1. Contention interrogatories are
18 premature if “the propounding party cannot present plausible grounds showing that early
19 answers to contention questions will efficiently advance litigation, or if the defendant
20 does not have adequate information to assert its position.” Facedouble, Inc. v. Face.com,
21 Inc., No. 12CV1584-DMS-MDD, 2014 WL 585868, at *2 (S.D. Cal. Feb. 2014). Courts
22 have also applied guidelines for when contention interrogatories are appropriate during
23 the early phases of discovery, if answering them would “‘contribute meaningfully’ to: (1)
24 clarifying the issues in the case; (2) narrowing the scope of the dispute; (3) setting up
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4 Neither party provided reasons for their individual positions on why the response was needed by the time
indicated in the Joint Statement, other than Google claiming that it needs this information before claim
28 construction because there may be claim construction disputes regarding Plaintiff’s positions. (See ECF No. 66-1
1 early settlement discussion; or (4) providing a substantial basis for a motion under Rule
2 11 or Rule 56.” Facedouble, Inc., 2014 WL 585868, at *2; In re Convergent Techs. Sec.
3 Litig., 108 F.R.D. 328, 339 (N.D. Cal. 1985). These guidelines provide a useful starting
4 point in examining whether the timing of submitted contention interrogatories is
5 appropriate. In re eBay Seller Antitrust Litig., 2008 WL 5212170, at *2.
6 The Court in University of Virginia Patent Foundation v. General Electric
7 Company used these guidelines in deciding whether plaintiff had to respond to
8 defendant’s interrogatories or if a response at that time would be premature. See No.
9 3:14CV51, 2015 WL 4878880 (W.D. Va. Aug. 2015). The court held that the motion to
10 compel a similar interrogatory was premature and plaintiff did not need to answer until
11 “additional discovery is complete,” reasoning that the parties were still moving through
12 the “beginning stages of discovery” when the defendant still had not served its invalidity
13 contentions. See id. at *4. The Court stated that even though the interrogatories were not
14 improper, the plaintiff did not need to answer the interrogatories until additional
15 discovery had been completed due to the status of litigation in that case. Id. at 5
16 (requiring substantive responses at some time after the claim construction order).
17 However, in Blast Motion, Inc. v. Zepp Labs, Inc., the Court required the plaintiff
18 to answer defendant’s interrogatory because its case was “further along in the discovery
19 process.” See No. 315CV00700-JLS-NLS, 2016 WL 5107677 at *3 (S.D. Cal. Mar.
20 2016). Distinguishing itself from University of Virginia Patent Foundation, the Court
21 reasoned that it was not premature to have the plaintiff respond to the defendant’s
22 interrogatory when infringement and invalidity contentions had already been served and
23 the claim construction hearing was “less than two months” away.5 Id.
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5 Blast Motion reasoned that its case was similar to another case from the Southern District of California, Odyssey
Wireless v. Apple, No. 15cv1735-H-RBB, where it stated that the Southern District of California is a “lay all the
28 cards on the table” district and that having the plaintiff respond would allow for parties to properly evaluate the
1 In the current case, invalidity contentions were scheduled to be served on May 8th,
2 || the claim construction discovery deadline is coming up in three months, and the claim
3 || construction hearing is five months away. (See ECF No. 50.) The Court is not in a
4 || position to arbitrarily pick a date for which Impact is to respond to ROG #12. Neither
5 || party adequately addressed the guidelines detailed above to support their prescriptive
6 ||dates. Therefore, the parties are to meet and confer as to the date by which Impact will
7 || provide its supplemental response to ROG #12, which response should occur between
8 || Google’s requested date, May 29, 2020, and the claim construction discovery deadline,
9 || August 14, 2020. If parties are unable to decide when Impact will provide its
10 || supplemental response to ROG #12, they are to contact the Court by June 10, 2020. The
11 || parties are to follow the Court’s procedures for bringing discovery disputes if the parties
12 || are unable to decide when Impact will provide its supplemental response to ROG #12. If
13 || parties do not contact the Court by that time, the Court will deem the issue to be resolved.
14 IT IS SO ORDERED.
15 Dated: May 26, 2020 7 2 p / /
16 on. Bernard G. Skomal
17 United States Magistrate Judge
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