Case 1:15-cv-00311-RGA Document 82 Filed 02/17/16 Page 1 of 4 PageID #: 1989
`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`JACK B. BLUMENFELD
`(302) 351-9291
`(302) 425-3012 FAX
`jblumenfeld@mnat.com
`
`
`February 11, 2016
`
`VIA ELECTRONIC FILING
`
`
`
`The Honorable Richard G. Andrews
`United States District Court
` For the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`Acceleration Bay LLC–C.A. Nos. 15-228 (RGA); 15-282 (RGA); and 15-311 (RGA)
`Re:
`Dear Judge Andrews:
`A.
`Technical depositions should occur after parties have the benefit of Plaintiff’s
`infringement contentions
`Defendants propose an orderly and reasonable approach to discovery that follows the
`spirit of the Default Standard provisions for “Initial Discovery in Patent Litigation,” and standing
`orders and practices of other Judges in this District: depositions should follow—and be guided
`by—infringement contentions, which define the scope of the case, and document discovery.
`Plaintiff mischaracterizes its discovery demands. It claims it merely asked for a witness
`from each defendant on 14 topics for each accused game (Topics 3-6, 8-11, and 14-19 (D.I. 83,
`at 1)), suggesting an easy task. But Plaintiff ignores its own email confirmation that it intends to
`proceed with all other topics. See DX10. Topics 1 and 4 demand a witness on every feature of
`every accused game and every computer system, regardless of their relation to any claimed
`function.1 After weeks of meeting and conferring, Plaintiff refused to narrow its unduly
`burdensome topics or articulate any relevance.
`Contrary to Plaintiff’s assertions, Defendants have provided extensive discovery
`regarding the structure and operation of the network architecture for multiplayer modes of the
`Accused Products, including—as Plaintiff points out—
`
`
`
`
`Moreover, Defendants served Interrogatory No. 7 requesting clarification of Plaintiff’s
`infringement allegations to help guide discovery. Instead of answering, Plaintiff stated that it
`“will provide disclosures related to the subject matter of this Interrogatory pursuant to the
`scheduling order in this action.” DX12 at 18. Plaintiff should apply the same restraint to
`deposition scheduling. Defendants require knowledge of Plaintiff’s infringement contentions to
`adequately prepare witnesses to address these deposition topics.
`
`
`Defendants objected to the Topics and asked Plaintiff to narrow their scope. DX11 (“As
`1
`we discussed during our conference on Friday, it is impossible to prepare witnesses in
`this case without infringement contentions on such overly broad topics.”).
`
`

`
`Case 1:15-cv-00311-RGA Document 82 Filed 02/17/16 Page 2 of 4 PageID #: 1990
`The Honorable Richard G. Andrews
`February 11, 2016
`Page 2
`
`Finally, Defendants did not delay. Defendants are willing to provide witnesses if Plaintiff
`describes with “reasonable particularity” the matters for examination (DX11) and refrains from
`duplicative discovery. But Plaintiff declined. And Defendants informed Plaintiff of their
`objections repeatedly, in meet and confers, and by email.
`B.
`Plaintiff does not need all of Take-Two’s source code
`
`
`
`
`
`
`
`
`
`
`
`
`
` Plaintiff declined, declared an impasse, and brought this motion instead.
`
` Yet Plaintiff offers no declaration from either consultant explaining what is
`
`missing.
`
`
`
` Refusing to explain how the discovery it seeks is proportional to the needs of the case,
`Plaintiff cannot show “the importance of the discovery in resolving the issues” or “the burden or
`expense of the proposed discovery outweighs its likely benefit.” FED.R.CIV.P. 26(b)(1).
`Courts have repeatedly rejected in patent cases motions to compel production of source
`code that is not relevant to specific issues in dispute. See, e.g., Kelora Sys., LLC v. Target Corp.,
`2011 WL 6000759, at *3 (N.D. Cal. Aug. 29, 2011) (denying production of source code that was
`“completely unrelated to the accused functionality”); Microsoft Corp. v. Multi-Tech Sys., Inc.,
`2001 U.S. Dist. LEXIS 23155, at *25-26 (D. Minn. Dec. 14, 2001) (“Multi-Tech is not entitled
`to the whole universe of source code for the products at issue because, as Microsoft explains,
`there are many functions within the relevant products which have no bearing on this case.”).
`Plaintiff argues that courts generally require a defendant in a software patent case to
`produce its entire source code, but its cases do not support such a sweeping proposition. Fleming
`v. Escort, Inc., 2010 WL 3833995, at *2 (D. Idaho Sept. 24, 2010), related to redactions of
`information within a file. In contrast, Take-Two has produced source code files without
`redactions. In Forterra Sys., Inc. v. Avatar Factory, 2006 WL 2458804, at *1-2 (N.D. Cal. Aug
`22, 2006), infringement contentions were served prior to the production of source code, from
`which the court was able to determine the entire source code’s relevance to the infringement
`theory. Finally, the issue in InTouch Techs., 2012 WL 7783405, at *1 (C.D. Cal. Apr. 23, 2012),
`was whether to compel production of source code that was “several hundred thousand lines
`
`
`
`

`
`Case 1:15-cv-00311-RGA Document 82 Filed 02/17/16 Page 3 of 4 PageID #: 1991
`The Honorable Richard G. Andrews
`February 11, 2016
`Page 3
`long.” DX16 at 8.
`
`
`
`C.
`
`Activision has provided discovery from
`
`
`
`
`
`
`Plaintiff refuses to say what relevant information is missing. Instead, Plaintiff asserts it is
`entitled to unbridled discovery from
` without having to articulate relevance. And
`Plaintiff’s claim that Activision’s core technical discovery was “extremely limited” is both
`wrong and self-contradicting.
`
`
`
`D.
`The law does not require Defendants to produce foreign sales information
`Plaintiff has not made out a case for foreign sales. Foreign use of method claims is not
`
`infringing activity. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir.
`2005) (“a process cannot be used ‘within’ the United States as required by section 271(a) unless
`each of the steps is performed within this country.”). Here, the vast majority of the claims of the
`asserted patents are directed to methods and systems,2 rather than physical devices. To the
`extent the claimed broadcast methods and network entry/departure methods are used abroad,
`they are not infringed and cannot be used to bloat the infringing royalty base.
`
`Further, Plaintiff’s cases are distinguishable. This is a software case, where the
`
`functionality of the executed software is at issue; the software itself is not an infringing article
`and making a copy of the software in the U.S. does not constitute an instance of infringement as
`would a physical article’s “manufacture.” A functioning hardware entity does not come into
`being until the software copy is loaded by the foreign user abroad. By contrast, Induction
`Innovations, GE Healthcare, and Carnegie Mellon involved patents that included apparatus
`claims and/or accused products that were hardware items or self-contained, discrete hardware
`systems (i.e., devices). Without infringement contentions that implicate foreign activity,
`manufacture, use, sales or importing into the U.S. of the foreign-made software copies,
`Plaintiff’s reliance on Carnegie Mellon cuts the other way. Id. at 1306.
`
`
`
`
`
`
`The ’069 patent contains method claims only. The ’147 patents contains claims to a
`2
`“medium” in addition to method claims. The ’496 patent contains claims to a
`“component” in addition to method claims. The ’344 patent claims “[a] computer
`network” and “[a] distributed game system.” The ’966 patent claims “[a] computer
`network” and “[a]n information delivery service.” Defendants are software developers
`and do not manufacture or sell computer networks, distributed game systems, or
`information delivery services, nor export them for use abroad.
`
`
`
`

`
`Case 1:15-cv-00311-RGA Document 82 Filed 02/17/16 Page 4 of 4 PageID #: 1992
`The Honorable Richard G. Andrews
`February 11, 2016
`Page 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully,
`
`
`JBB/dlw
`Enclosures
`cc:
`Clerk of Court (Via Hand Delivery; w/ encl.)
`
`All Counsel of Record (Via Electronic Mail; w/ encl.)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Jack B. Blumenfeld
`
`
`
`
`
`
`
`
`
`
`
`Jack B. Blumenfeld (#1014)