Lenovo Inc. v. IPCom GmbH & Co., KG

Background

Lenovo and Motorola Mobility, LLC sued IPCom based on alleged failures to offer licenses to certain declared standard-essential patents on fair, reasonable, and nondiscriminatory terms. IPCom moved to dismiss for lack of personal jurisdiction. Judge Edward J. Davila allowed the parties to conduct discovery only on specific jurisdiction; Lenovo did not claim that general jurisdiction existed.

The parties then asked the court to resolve disputes about Lenovo’s document requests. The court explained that jurisdictional discovery had to focus on IPCom’s relevant contacts with the United States and actual conduct involving the asserted patents, rather than merely planned, promised, or preparatory activity.

Requests the court did not require IPCom to produce

The court agreed with IPCom regarding Lenovo’s request for documents concerning Pio Suh’s statement that IPCom’s licensing revenue was primarily derived from non-U.S. assets. Lenovo had not shown that broad revenue information was relevant to specific jurisdiction, and testing Suh’s credibility was not enough to require production.

The court also declined to require broad production of business plans, strategic plans, investor pitches, and related communications. Documents showing actual efforts to commercialize or enforce the asserted patents in the United States could be relevant, but documents showing only plans for those activities were not. The court found that IPCom had already produced documents showing its actual U.S. activities related to the patents.

The court likewise found IPCom’s existing production sufficient for Lenovo’s request for agreements concerning acquisition, rights to, enforcement, or licensing of the asserted patents. Acquisition and funding efforts were preparatory and did not by themselves show actual U.S. commercialization or enforcement. The court also found the request for all documents concerning consultant Roger Ross’s duties in the United States too broad because it was not limited to activities relevant to specific jurisdiction.

Finally, the court denied Lenovo’s request for production of a Joint Marketing Agreement. It applied the same reasoning: an agreement promising a monetization effort or targeting a market did not establish the actual U.S.-directed conduct relevant to specific jurisdiction.

Production required for Categories 4 and 11

The court required IPCom to produce certain materials involving the ’124 and ’844 patents. IPCom had to produce:

The court did not require documents referring only generally to IPCom’s U.S. patent portfolio or U.S. standard-essential patents. After this production, Lenovo could seek permission for additional communications by showing good cause, after conferring with IPCom and attempting to obtain IPCom’s agreement.

Production required for Category 9

The court required IPCom to produce documents concerning which Lenovo entity or entities IPCom understood or believed it was negotiating with, or intended to negotiate with, during the negotiations described in the complaint. The relevant period was approximately mid-July 2017 through March 1, 2019.

The production had to include communications reflecting discussions by IPCom, its employees, agents, or consultants about which Lenovo entity the negotiators worked for, which entity they represented, the distinction or lack of distinction among Lenovo Group Ltd., Lenovo (United States), and related entities, and whether communications with the negotiators could or should be considered communications with a U.S. entity.

Disposition and significance

The court resolved the discovery disputes without a hearing. It concluded that most requested discovery exceeded the permissible scope of jurisdictional discovery, while requiring production within Categories 4, 9, and 11 as specified in the order. The order addressed the scope of discovery; it did not decide whether IPCom was subject to personal jurisdiction or resolve the underlying antitrust and patent non-infringement claims. Virginia K. Demarchi, United States Magistrate Judge, signed the order.