Synopsys, Inc. v. Siemens Industry Software Inc.

Background

This was a discovery order addressing three disputes. Fact discovery had closed on August 31, 2023, but the parties raised these disputes within the period allowed by the Northern District of California’s local rules. The court decided the disputes without oral argument.

Siemens’s accused software product was Aprisa. Siemens’s sixteenth interrogatory sought communications in which Synopsys alleged or suggested that Aprisa infringed a Synopsys patent or copyright, or referred to this lawsuit or the earlier ATopTech lawsuit, in which Synopsys alleged that ATopTech infringed certain Synopsys rights.

Siemens’s Sixteenth Interrogatory

The court declined to require Synopsys to search for oral or other non-email communications because that search would be overly burdensome, including because it would require interviewing many sales representatives. The court also determined that the interrogatory was logically answered through document production. Synopsys represented that, after a reasonable search, it had provided all relevant, nonprivileged information of which it was aware. If Siemens’s proposed search terms had not captured the full subject matter and Synopsys had not otherwise conducted a complete search, Synopsys was required to complete the remaining search, excluding the communications addressed separately below. The court preserved the issue for any further dispute.

Synopsys did not have to produce communications about patents and copyrights involved in the ATopTech lawsuit but not in this case. The court limited the relevant communications to those concerning the patents asserted in this case, including for damages issues.

The court also held that Synopsys had not waived privilege by referring to a previously produced document by its identification number. The court reasoned that the reference was not an independent disclosure of the document, Synopsys promptly corrected the error, and Siemens had not carried its burden under the federal rule governing inadvertent disclosure of privileged information.

Synopsys’s Document Productions

The court stated that it had already resolved whether Synopsys waived privilege by referring to a document’s identification number in an interrogatory response.

Siemens sought documents related to Synopsys’s acquisition of Extreme DA Corp., arguing that they were relevant to damages because they concerned the valuation of technology in the same field as the asserted patents. The court denied the motion to compel those documents based on the existing briefing, but allowed supplemental briefing. If Siemens wished to continue pursuing the issue, it could submit a seven-page brief within seven days, followed by a seven-page opposition from Synopsys seven days later.

For documents concerning Magma Automation’s valuation of its intellectual property before Synopsys acquired Magma, the court adopted Synopsys’s proposed search. Synopsys was to search for Magma documents created by or for Magma before the acquisition that concerned whether Magma had its own valuation of its intellectual property. The court noted that one asserted patent originally belonged to Magma and that Synopsys had mostly already provided these documents.

The court ordered production of the documents Siemens identified from Synopsys’s earlier Magma litigation because they were relevant for the same reason as Magma’s technology-valuation documents. The court found the relevance of documents from Synopsys’s earlier Extreme DA litigation unclear on the existing briefing. Siemens could continue to pursue that issue through the supplemental briefing process.

Regarding Synopsys’s financial records, the court adopted Synopsys’s proposal to provide a final supplement to its financial spreadsheet that included the ship-to location for each customer.

Siemens’s Document Productions and Disposition

The court found Siemens’s document-production dispute premature. The parties had discussed alleged deficiencies in Siemens’s production on the seventh day after fact discovery closed, and Siemens stated that it had already produced, or would produce, the requested materials. The court deemed the issue preserved, allowing the parties to raise any continuing dispute.

The order resolved ECF Nos. 265-2, 269, and 270. Magistrate Judge Laurel Beeler ordered the stated searches and productions, denied the request for Extreme DA acquisition documents based on the current briefing, and preserved the remaining issues as described in the order.