Case 3:14-cv-02235-DMS-BLM Document 279 Filed 02/06/18 PageID.10030 Page 1 of 9
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`APPLE INC.,
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`v.
`WI-LAN INC., et al.,
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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` Case No.: 14cv2235-DMS (BLM)
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`ORDER REGARDING APPLE’S MOTION
`TO COMPEL RESPONSES TO
`INTERROGATORY NOS. 14-16
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`[ECF Nos. 262, 263]
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`Plaintiff,
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`Defendants.
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`On January 16, 2018 the parties called the court regarding a discovery dispute in
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`connection with Wi-LAN’s responses to Apple’s Interrogatory Nos. 14, 15, and 16. The court
`issued a briefing schedule for the parties to file letter briefs regarding their respective positions.
`The parties timely filed their respective letter briefs. ECF Nos. 262, 263.
`Apple argues that Wi-LAN’s responses to Apple’s Interrogatory Nos. 14, 15 and 16 are
`deficient. ECF No. 263 at 1. Apple contends that the three interrogatories at issue “seek Wi-
`LAN’s contentions related to the alleged commercial success of its patents, alleged validity under
`Section 102 and 103, and alleged validity under 112, respectively.” Id. Apple requests that the
`Court order Wi-LAN to provide comprehensive responses to these interrogatories, or order that
`Wi-LAN is prohibited from relying on its undisclosed contentions in expert reports, summary
`judgment, or at trial. Id. Wi-LAN responds that its responses to these interrogatories are
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`sufficiently detailed, and Apple’s request should be denied. ECF No. 262 at 1. The Court has
`carefully reviewed Wi-LAN’s responses and supplemental responses to Interrogatory Nos. 14-16
`and considered all of the briefing. See Apple’s Letter Brief, Exhibit 1 to the Declaration of Sean
`Cunningham (Wi-LAN’s Objections and Responses to Apple’s Third Set of Interrogatories) and
`Exhibit 2 to the Declaration of Sean Cunningham (Wi-LAN’s Supplemental Responses to Apple’s
`Interrogatory Nos. 2, 3, 4, 5, 8, 10, 12, 14, 17). The Court will address each interrogatory
`below.
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`1. Interrogatory No. 14
`Apple’s Interrogatory No. 14 asks Wi-LAN to identify all products made by Wi-LAN or
`Ensemble Communications that allegedly practice the Asserted Patent claims. Ex. 1 at 8. The
`interrogatory also seeks the legal and factual basis for Wi-LAN’s contention that the identified
`products practice the claims. Id. Finally, the interrogatory asks Wi-LAN to provide its response
`in a chart “identifying the structures or functionalities in each prototype or product that
`purportedly meet each limitation of each such asserted claim. . . .” Id. Wi-LAN responded by
`identifying two products and specific patents and claims. Id. at 9. Wi-LAN also listed a large
`number of documents as providing responsive information. Id. at 10, 22-45. Finally, Wi-LAN
`directed Apple to its Local Patent Rule 3.2 disclosures, future expert testimony, and the
`deposition testimony of Kenneth Stanwood. Id. at 10; see also Ex. 2 at 90.
`Apple contends that Wi-LAN’s response is insufficient because it fails to explain why Wi-
`LAN contends its products practice its patents. ECF No. 263 at 1. Apple asserts that the
`requested information is “relevant to Wi-LAN’s validity contention that its allegedly patent-
`practicing products were commercially successful, and targets the threshold issue of whether
`Wi-LAN’s products were actually patent-practicing products.” Id. Apple further objects to Wi-
`LAN’s decision to refer Apple to “nearly 1000 documents that purportedly provide a response”
`instead of properly answering the interrogatory. Id.
`Wi-LAN disagrees and states that its response is sufficient as it identified two products,
`the specific claims, and “24 pages of the documents underlying Wi-LAN’s belief that these
`products may have practiced one or more claims of the Patents-in-Suit.” ECF No. 262 at 1. Wi-
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`LAN asserts that its response complies with FRCP 33(b) because it provides “such information
`as is available to [it].” Id. Wi-LAN also objects to providing element-by-element claim charts
`because it has never conducted any such analysis, and to do so would be unduly burdensome.
`Id. (citing Sonix Tech. Co. Ltd. V. Yoshida, No. 12 CV 380, 2014 WL 11878354, at *3 (S.D. Cal.
`Dec. 5, 2014)). Wi-LAN argues that its response to Interrogatory No. 14 is consistent with Patent
`Local Rule 3.1(g), which Wi-LAN claims only requires it to “identify” for each asserted claim the
`allegedly practicing products, not require a detailed explanation of how the products meet each
`claim element. Finally, Wi-LAN claims that its response is consistent with the Court’s prior rulings
`in this matter, noting that the Court previously denied Wi-LAN’s request to compel Apple to
`provide a more detailed response to Wi-LAN’s Interrogatory No. 3. ECF No. 262, at 2. Notably,
`Wi-LAN does not argue that the information sought in this interrogatory is not relevant. ECF No.
`262.
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`The Court agrees with Apple that Wi-LAN’s response to Interrogatory No. 14 does not
`satisfy Wi-LAN’s discovery obligation. While FRCP 33(d) authorizes a party in limited
`circumstances to respond to an interrogatory by identifying specific documents, Wi-LAN has not
`established the requisite circumstances. Rule 33(d) provides:
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`If an answer to an interrogatory may be determined by examining, auditing,
`compiling, abstracting, or summarizing a party’s business records (including
`electronically stored information), and if the burden of deriving or ascertaining the
`answer will be substantially the same for either party, the responding party may
`answer by:
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`(1) specifying the records that must be reviewed, in sufficient detail to
`enable the interrogating party to locate and identify them as readily as
`the responding party could; and
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`(2) giving the interrogating party a reasonable opportunity to examine and
`audit the records and to make copies, compilations, abstracts or
`summaries.
`Fed. R. Civ. P. 33(d).
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`Here, Wi-LAN has not established that the burden of ascertaining the answer to the
`interrogatory from the identified documents is substantially the same for Apple and Wi-LAN.
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`Interrogatory No. 14 seeks the basis for Wi-LAN’s “contention that the prototype or product
`practices or would have practiced one or more claims of the Asserted Patents.” Ex. 1, at 8.
`Because the interrogatory seeks Wi-LAN’s contentions, the burden of ascertaining that answer
`from the documents is not the same for Apple and Wi-LAN. See, Mancini v. Insurance Corp. of
`New York, No. 07cv1750-L (NLS), 2009 WL 1765295, at *3 (S.D. Cal. June 18, 2009) (granting
`plaintiff’s motion to compel supplemental contention interrogatory responses “because Plaintiffs
`are more familiar with their contentions than [defendant] could be, [so] the burden is not equal
`and the use of Rule 33(d) is inappropriate.”); see also Blast Motion, Inc. v. Zepp Labs, Inc., No.
`15-cv-00700-JLS (NLS), 2016 WL 5107677, at *1, 3-4 (S.D. Cal. Mar. 2, 2016) (granting the
`accused infringer’s motion to compel a more complete answer and rejecting the patentee’s
`reliance on Rule 33(d) because the patentee was in a better position than the accused infringer
`to know how its products worked and what they were made up of). Accordingly, the Court
`grants Apple’s motion and requires Wi-LAN to provide a supplemental response setting forth the
`legal and factual basis for its contention that the identified products practice the Asserted Patent
`claims. Wi-LAN argues that it should not have to provide its response in element-by-element
`claim charts because it has not created such charts and to do so would be unduly burdensome.
`ECF No. 262 at 1 (citing Sonix Tech. Co. Ltd. V. Yoshida, No. 12 CV 380, 2014 WL 1187354, at
`*3 (S.D. Ca. Dec. 5, 2014)). The Court agrees with Wi-LAN that its response does not have to
`be in the chart format requested by Apple but, as set forth above, Wi-LAN must supplement its
`answer to Interrogatory No. 14.
`The Court also disagrees with Wi-LAN’s argument that it does not have to supplement its
`response to Interrogatory No. 14 because the response is consistent with Patent Local Rule
`3.1(g). Wi-LAN argues broadly, without citing relevant legal authority1, that Rule 3.1(g) “only
`requires Wi-LAN to identify for each asserted claim the allegedly practicing products and is
`intended to replace interrogatories such as No. 14 – this rule does not require a detailed
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`1 Wi-LAN’s relies on Presidio Components, Inc. v. Am. Tech. Ceramics Corp., No. 14CV2016-1,
`2015 WL 12843185, at *1 (S.D. Cal. Aug. 26, 2015), only for the dicta about the purpose of
`the local patent rules.
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`explanation of how the products meet each claim element.” ECF No. 262, at 2. Wi-LAN fails to
`cite any authority to support its interpretation that compliance with Patent Local Rule 3.1(g)
`prohibits the contention interrogatory propounded by Apple, and fails to address the contrary
`authority cited by Apple. A district court in the Northern District of California rejected this precise
`argument. See PersonalWeb Techs., LLC v. Google Inc., No. 13-cv-01317-EJD (HRL), 2014 WL
`4088201, at *5 (N.D. Cal. Aug. 19, 2014). In doing so, the court reasoned:
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`[T]he text of Patent L.R. 3-1 is not as limiting as PersonalWeb suggests. Rule 3-
`1(g) provides that a party claiming patent infringement must produce a claim chart
`if the party wishes ‘to rely, for any purpose, on the assertion that its own. . .
`instrumentality practices the claimed invention.’ Moreover, the fact that discovery
`is not explicitly required by the local rules does not mean that a party is excused
`from responding to a discovery request.
`Id. (emphasis in original). The Court agrees with the PersonalWeb Techs. court and finds that
`Rule 3.1(g) does not prohibit additional discovery such as Interrogatory No. 14.
`Finally, Wi-LAN’s argument that its response is consistent with the Court’s prior rulings
`with regard to Apple’s responses to Wi-LAN’s contention interrogatories is unpersuasive. As
`Apple points out in its letter brief [ECF No. 263 at 3], Apple provided more information to Wi-
`LAN in response to Interrogatory No. 3 including specific reasons why certain claim limitations
`in the Asserted Patents were not met. See ECF No. 138-1, at 16-19. The Court has reviewed
`Wi-LAN’s response and supplemental response to Interrogatory No. 14 and finds they are not
`as detailed as Apple’s response and, as set forth above, are insufficient.
`Accordingly, the Court GRANTS Apple’s Motion to Compel a supplemental response to
`Interrogatory No. 14. Wi-LAN is ORDERED to provide “the legal and factual basis for Wi-LAN’s
`contention that the prototype or product practiced or would have practiced one or more claims
`of the Asserted Patents” and “identifying the structures or functionalities in each prototype or
`product that purportedly meet each limitation of each such asserted claim” on or before
`February 16, 2018.2
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`2 The Court notes that Apple did not challenge the adequacy of Wi-LAN’s identification of the
`prototypes/products or specific patent claims.
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`2. Interrogatory Nos. 15 and 16
`Apple’s Interrogatory Nos. 15 and 16 ask Wi-LAN to explain why the Asserted Patents are
`valid under 35 U.S.C. §§ 102 or 103 (No. 15) and 35 U.S.C. § 112 (No. 16). Ex. 1 at 10-12. In
`response to Interrogatory No. 15, Wi-LAN stated that “[t]he patents-in-suit are presumed valid
`and Apple bears the burden of proving invalidity by clear and convincing evidence,” and “Apple’s
`invalidity contentions do not prove that any of the prior art references disclose any claim
`elements of the asserted claims.” Ex. 1 at 10-11. Wi-LAN responded to Interrogatory No. 16
`by asserting that the “patent examiner has determined after thorough reading and evaluation
`of the specification that each asserted claim is valid under 35 U.S.C. § 112” and that “Apple
`bears the burden of proving lack of written description and enablement by clear and convincing
`evidence.” Id. at 13. In both responses, Wi-LAN indicates that it will provide supporting expert
`testimony in accordance with the Court’s rules and schedules. Id. at 11-13.
`Apple states that Wi-LAN’s current responses are “nearly nonexistent” and argues that
`“[i]f Wi-LAN contends that Apple’s invalidity contentions do not establish the asserted claims are
`invalid, Wi-LAN should explain why.” ECF No. 263 at 2. Apple asserts that Wi-LAN’s position
`that it does not need to provide validity contentions is contrary to relevant case law. Id. (citing
`SPH Am., LLC v. Research in Motion, Ltd., No. 13-cv-2320-CAB (KSC), 2016 WL 6305414, at *2
`(S.D. Cal. Aug. 16, 2016); Amgen Inc. v. Sandoz Inc., No. 14-cv-04741-RS (MEJ), 2017 WL
`1352052, at *2 (N.D. Cal. Apr. 13, 2017)). Finally, Apple argues that the requested information
`is relevant and Apple should not have to wait until Wi-LAN serves rebuttal expert reports to
`understand Wi-LAN’s validity positions. Id.
`Wi-LAN opposes Apple’s request and states with respect to Interrogatory No. 15 that it
`directed Apple to the validity expert reports from Vijay Madisetti and Kenneth Stanwood
`produced in the prior case, Wi-Lan USA, Inc. v. Apple Inc., 3:13-cv-00798-DMS (BLM) (S.D.
`Cal.). ECF No. 262 at 2. Wi-LAN explains that five of the six patents in the instant case are
`from the same patent families that were at issue in the prior case and therefore “involve many
`of the same prior art references asserted by Apple in this case” so the prior invalidity reports
`provide significant insight into Wi-LAN’s validity positions. Id. With respect to Interrogatory No.
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`16, Wi-LAN argues that it is Apple’s burden of proving lack of written description or enablement
`by clear and convincing evidence, and Apple has yet to rebut the presumption of invalidity. Id.
`Wi-LAN also contends that additional responses to Interrogatory Nos. 15 and 16 are
`“unnecessary and unduly burdensome.” Id. at 3. (citing Friskit, Inc. v. Real Networks, Inc., No.
`C03-5085, 2006 WL 1305218, at *1-2 (N.D. Cal. May 11, 2006); Presidio, 2015 WL 12843185,
`at *1 n.1)).
`The Court agrees with Apple that it is entitled to discovery regarding Wi-LAN’s validity
`contentions beyond what Wi-LAN has provided in its responses to Apple’s Interrogatory Nos. 15
`and 16. See, e.g., SPH, 2016 WL 6305414, at *2 (granting motion to compel “contention
`interrogatory seek[ing] information concerning the validity of [the asserted] patents” and
`holding that “defendant is not required to establish a prima facie case of invalidity before it is
`entitled to obtain discovery on the validity of the patents”); see also Amgen, 2017 WL 1352052,
`at *2 (compelling response to defendant’s interrogatory seeking “the factual basis for Amgen’s
`[validity] allegations” and rejecting argument that the interrogatory was more “properly within
`the scope of expert discovery”). As the Court explained in SPH,
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`Defendant's contention interrogatory seeks information concerning the validity of
`plaintiff's nine patents. Patents are presumed valid and the party challenging the
`validity of the patent bears the burden of proving invalidity by clear and convincing
`evidence. While the ultimate burden never shifts, 'a patentee may have the burden
`of going forward with rebuttal evidence once a challenger has presented a prima
`facie case of invalidity….' The ultimate burden of invalidity, however, does not
`dictate the scope of discovery. Fed.R.Civ.P. 26(b)(1). Indeed, 'nowhere in the
`Federal Rules of Civil Procedure is it required that a party who carries the ultimate
`burden on an issue at trial must establish a prima facie case before it is entitled to
`discover information the other party may use to rebut the prima facie case.'
`McKesson Info. Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689, 692 (N.D.Ga.
`2007). Here, defendant is entitled to the requested discovery.
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`2016 WL 6305414, at *2. Similarly, in Amgen, the court explained, “[t]he fact that expert reports
`are not due until June 16, 2017 does not excuse Amgen from disclosing responsive information
`regarding the underlying factual bases of its claim.” 2017 WL 1352052, at *2 (internal citation
`and quotation omitted).
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`The Court agrees with the reasoning in SPH and Amgen. Apple is not required to establish
`a prima facie case of invalidity before it can seek discovery on Wi-LAN’s validity contentions.
`Apple also is not required to wait for the required exchange of expert reports to seek Wi-LAN’s
`validity contentions. Accordingly, to the extent that Interrogatory Nos. 15 and 16 seek facts, as
`opposed to expert opinions, Wi-LAN must respond. See, e.g., Amgen, 2017 WL 1352052, at *2.
`With regard to Interrogatory No. 15, the Court finds appropriate Wi-LAN’s reference to the expert
`reports from Wi-Lan USA, Inc. v. Apple Inc., 3:13-cv-00798-DMS (BLM) (S.D. Cal.). If Wi-LAN
`has additional factual validity contentions not set forth in the identified expert reports, it must
`supplement its response to Interrogatory No. 15 to state them. If Wi-LAN is satisfied with the
`validity explanations set forth in the identified expert reports, it is not required to supplement
`Interrogatory No. 15.
`To the extent that Apple seeks supplemental responses to Interrogatory Nos. 15 and 16
`in the form of claim charts, the Court agrees with Wi-LAN that it may be unduly burdensome.
`See, e.g., Friskit, Inc. v. Real Networks, Inc., No. C 03-5085, 2006 WL 1305218, at *1-2
`(declining to compel “in claim chart form, the written description, enablement, and best mode
`support for each of [patentee]’s asserted patent claims”). Wi-LAN contends that Apple requests
`four different types of validity charts (novelty, obviousness, written description, and
`enablement), and notes that this would require Wi-LAN to create claim charts for each of Apple’s
`63 asserted prior art references and for each asserted claim in the six Patents-in-Suit. ECF No.
`262 at 3. The Court in Friskit explained:
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`A reasonable reading of 35 U.S.C. §112 [] and the applicable case law does not
`seem to require that the patent specification contain separate descriptions of the
`invention, the enablement, and the best mode. There are three separate
`requirements but not requirement for three separate sections. Usually, the written
`description describes the invention and in the process reveals how to do it and the
`best mode known to the investor without separating out these descriptions.
`Therefore, [defendant’s] request for separate claim charts is DENIED.
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`2006 WL 1305218, at *1-2.
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`It is not clear to the Court whether Apple seeks supplemental responses to Interrogatory
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`Nos. 15 and 16 in the form of claim charts, or whether Apple merely seeks “comprehensive
`responses” (not necessarily in the form of claim charts). To the extent that Apple seeks “claim
`charts for each of Apple’s 63 asserted prior art references and for each asserted claim in the six
`Patents-in-Suit,” the Court agrees with Wi-LAN that such a production would be unduly
`burdensome. Accordingly, the Court GRANTS in part and DENIES in part Apple’s motion to
`compel Wi-LAN’s validity contentions in response to Interrogatory Nos. 15 and 16. Wi-LAN is
`ORDERED to supplement its responses to Wi-LAN’s Interrogatory Nos. 15 and 16 by providing
`comprehensive responses to these interrogatories including the factual and legal bases for Wi-
`LAN’s validity contentions on or before February 16, 2018.
`IT IS SO ORDERED.
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`Dated: 2/6/2018
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