Uniloc USA, Inc. v. Apple Inc.
- Edward Davila
- 5:19-cv-01692
- U.S. District Court · Northern District of California
- 7
In Uniloc USA v. Apple, Judge Demarch ordered narrowed production of patent-valuation and damages documents for Apple’s defense.
Uniloc USA, Inc., Uniloc Luxembourg S.A., and Uniloc 2017 LLC were required to produce documents to Apple Inc. in response to Requests Nos. 103–106, subject to the court’s limits and the August 31, 2020 deadline.
What happened
Uniloc USA, Inc. v. Apple Inc. concerns Apple’s requests for documents about the value of patents associated with the patent involved in the case. Apple argued the information was relevant to challenging Uniloc’s requested royalty damages; Uniloc argued that information about other patents was too far removed from the dispute.
The court ordered Uniloc to produce responsive documents for Requests 103 through 106, but narrowed each request. The production covers patent valuations, transaction terms, certain damages materials from related patent litigation, and related documents. Uniloc was not required at this time to search for every document merely referring to those subjects or to produce several broad categories of materials.
The documents must be produced by August 31, 2020. The order was signed by Magistrate Judge Virginia K. Demarch, who found the narrowed discovery relevant and not disproportionate to the needs of the case.
The detailed version
- Uniloc USA, Inc. v. Apple Inc. · No. 5:19-cv-01692
- Edward Davila
- July 30, 2020
Background
The case concerns U.S. Patent No. 7,587,207, which Uniloc asserts against Apple. The patent had previously been part of transactions involving Philips, IPG Electronics 503, Pendrell Technologies LLC, and Uniloc. Apple sought documents about the value of other patents in the Philips-IPG patent portfolio through Requests Nos. 103–106. Uniloc objected to discovery concerning patents other than the patent involved in this case, although it agreed that documents reflecting the value of that patent were relevant and represented that it had produced or would produce those documents.
Legal standard and analysis
Under Federal Rule of Civil Procedure 26(b)(1), discovery may cover information relevant to a claim or defense and proportional to the needs of the case. The court concluded that information about the relative value of patents in the portfolio could be relevant to Apple’s defense against Uniloc’s demand for a reasonable royalty. The court also found that Uniloc had not shown that the requests, apart from their overbreadth, were disproportionate. The court noted that Uniloc’s general objections did not meet the requirement to state specific grounds for objecting to document requests.
The court found Request No. 103 relevant because it sought valuations by Uniloc of patents other than the patent involved in this case, while noting Uniloc’s position that it had performed no such valuations. Request No. 104 was narrowed to documents, including communications, that constitute or reflect the terms of prospective or completed licenses, assignments, sales, or transfers involving rights in the Philips-IPG patents; Uniloc did not have to search for every document that merely referred or related to those transactions. Request No. 105 required documents reflecting values assigned to one or more Philips-IPG patents, including valuations, appraisals, allocations, or financial reporting, but not every document that merely referred or related to those materials.
For Request No. 106, the court required Uniloc to produce its damages contentions concerning infringement of one or more patents in the portfolio, damages expert reports served by Uniloc concerning such infringement, and deposition transcripts of Uniloc damages experts expected to testify about such damages. Uniloc did not have to produce all of its damages-related interrogatory responses, opposing experts’ reports or deposition transcripts, or all exhibits used in depositions of its damages experts in other matters. Exhibits were required only when the expert’s testimony could not be understood without them.
Disposition
The court ordered Uniloc to produce documents responsive to Requests Nos. 103–106 as narrowed. For Request No. 103, if no responsive documents existed, Uniloc had to supplement or amend its response to say so; if all responsive documents had already been produced, no amendment was required. The court encouraged the parties to discuss keyword searches for electronically stored information, particularly for Requests Nos. 104 and 105. Production was due by August 31, 2020. Magistrate Judge Virginia K. Demarch signed the order.
Read the full 7-page opinion on CourtListener, the free public archive maintained by the Free Law Project.