Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 1 of 5 PageID #: 4392
`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 1 of 5 PageID #: 4392
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`CA. No. 16-290-MN
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`JURY TRIAL DEMANDED
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`PUBLIC VERSION
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`GODO KAISHA IP BRIDGE 1,
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`Plaintiff,
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`V.
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`OMNIVISION TECHNOLOGIES, INC,
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`Defendant.
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`LETTER TO THE HONORABLE MARYELLEN NOREIKA
`
`FROM DAVID E. MOOREI ESQUIRE
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984—6000
`dmoore
`otteranderson.com
`b ala ura
`otteranderson.eom
`
`sobyrne@potteranderson.corn
`
`Attorneys for Defendant Omni Vision
`Technologies, Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel: (650) 493-93 00
`
`Edward G. Poplawski
`Erik J. Carlson
`
`Lisa D. Zang
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel: (323) 210-2900
`
`Jose C. Villarreal
`
`Henry Pan
`Diyang Liu
`WILSON SONSINI GOODRICH & ROSATI
`
`900 S. Capital of Texas Highway
`Las Cimas IV, 5th Floor
`Austin, TX 78746
`Tel: (512) 338-5400
`
`Dated: November 29, 2018
`6015101/43303
`
`Public Version Dated: December 5, 2018
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`

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`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 2 of 5 PageID #: 4393
`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 2 of 5 PageID #: 4393
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`,
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`3: POfier
`
`Anderson
`COFFOOD LLP
`
`
`1313 North Market Street
`PO. Box 951
`Wilmington, DE 1989940951
`302 984 6000
`WWW.potteranderson.coni
`
`David E. Moore
`Partner
`Attorney at Low
`dmoroe@potteronderson.com
`302 9846147 Direct Phone
`302 658—1 192 Firm Fox
`
`VIA ELECTRONIC FILING
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`November 29, 2018
`Public Versron Dated: December 5, 2018
`
`The Honorable Maryellen Noreika
`U.S. District Court for the District of Delaware
`J. Caleb Boggs Federal Building
`844 North King Street
`Wilmington, DE 19801
`
`PUBLIC VERSION
`
`Re:
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`Godo Kaisha IP Bridge 1 V. Omni Vision Technologies, Inc.
`CA. No. 16-290-MN (D. Del.)
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`Dear Judge Noreika:
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`Defendant OmniVision Technologies, Inc. (“OmniVision”) respectfully submits this
`letter brief in response to Plaintiff Godo Kaisha 1P Bridge 1’s (“Godo”) opening letter (D1. 129).
`Godo served 97 RFP’S at the tail-end of fact discovery and now seeks to mischaracterize
`OmniVision’s responses by incorporating them without its prefacing objections. Exs. F-G, N—
`W.1
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`Godo ’s Demand for Foreign Sales and Profits Should be Denied — First, Godo is not
`entitled to foreign sales discovery under a direct infringement theory because OmniVision’s
`activities outside the U.S. do not constitute “sales” within the U.S. Under U.S. patent law, no
`infringement occurs when an accused product is made and sold in another country. Microsoft
`Corp. v. AT&T Corp, 550 U.S. 437, 441 (2007); Carnegie Mellon Univ. v. Marvell Tech. Grp.,
`Ltd, 807 F.3d 1283, 1306 (Fed. Cir. 2015). A court has previously granted summary judgment
`of no infringement for foreign sales by OmniVision based on their similarity to sales in Halo
`under this reasoning. Ziptronix, Inc. v. Omni Vision Techs., Inc, No. C 10—05525—SBA, slip op.
`at 13-14 (N.D. Cal. Mar. 2, 2015) (“Ziptronix Order,” Ex. A); Halo Elecs., Inc. v. Pulse Elecs.,
`Inc, 769 F.3d 1371, 1378—81 (Fed. Cir. 2014) (concluding defendant had not sold or offered to
`sell within the U.S. accused products manufactured, shipped, and delivered abroad). There can
`be no damages relating to OmniVision image sensors made and sold abroad as these sales fall
`outside the jurisdiction of U.S. patent law. See generally Ziptronix Order; Carnegie Mellon, 807
`F.3d at 1306. Godo also has not provided any evidence that OmniVision’s image sensors sold
`overseas are imported into the US. Thus, OmniVision’s foreign sales may not be taken into
`account in any reasonable royalty determination and are not relevant to the case.
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`Second, Godo is not entitled to foreign sales discovery under an indirect infringement
`theory because it has provided no support for these claims in its pleadings or after over a year of
`discovery. To establish indirect infringement and entitlement to foreign sales discovery, Godo
`must first prove that “there is a third-party direct infringement for which [OmniVision] is
`indirectly responsible” and that OmniVision had the requisite intent and/or knowledge. Power
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc, 711 F.3d 1348, 1371 (Fed. Cir. 2013);
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`1 All Exhibits referenced herein are attached to the accompanying Declaration of Lisa Zang.
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`

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`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 3 of 5 PageID #: 4394
`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 3 of 5 PageID #: 4394
`The Honorable Maryellen Noreika
`Page 2
`November 29, 2018
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`Kyocera Wireless Corp. v. Int’l Trade Comm ’n, 545 F.3d 1340, 1353—54 (Fed. Cir. 2008). But,
`even with the benefit of extensive discovery, Godo has not been able to identif an third- art
`direct infrin ement that OmniVision is indirectl
`res onsible for. See e.
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`Godo has not identified a
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`single customer OmniVision knows of that incorporates the accused image sensors into products
`that are subsequently sold in or imported into the US, any OmniVision acts that alle edl
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`contribute to or induce third- art
`infrin ement in the US.
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`, or any
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`evidence that the accused sensors eventually make their way back into the US. Nor can it~—
`OmniVision does not track its customers’ subsequent handling of the accused sensors or whether
`those sensors eventually enter the U.S. This is a fishing expedition that should not be indulged.
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`Third, Godo’s demand for purchase, supply, manufacture, pricing, and rebate agreements
`should be denied because, as adjudicated in this District, such agreements do not constitute
`“sales.” Collabo Innovations, Inc. v. Omni Vision Techs., Inc., CA. No. 16—197-JFB—SRF, D.I.
`214, slip 0p. at 8, afi’d, D.I. 254 (D. Del. June 4, 2018) (Ex. C) (denying-in-part motion to
`compel foreign sales discovery, including “documents reflecting ‘design wins’ from US.
`customers, as well as supply or framework agreements, forecasts, quotations, estimates, general
`business agreements, and price negotiations” because they “are not equivalent to a sale or offer
`to sell, and do not result in a binding agreement to buy or sell a product. .
`. these documents do
`not contain the essential, binding terms of a buy/sell agreement”) (internal citations omitted);
`Collabo, D.I. 254, slip op. at 4 (D. Del. Aug. 8, 2018) (Ex. D) (affirming report and
`recommendation and noting that “the ‘design win’ does not constitute a sale or an offer to sell”).
`The agreements are therefore not relevant to the issues in this case.
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`Fourth, Godo’s claims of relevance to commercial success should be dismissed because
`Godo fails to satisfy the threshold requirement of identifying a nexus between the asserted
`patents’ claimed inventions and OmniVision’s foreign sales. See Afros S.P.A. v. Krauss—Maflei
`Corp, 671 F. Supp. 1402, 1419 (D. Del. 1987) (produced “sales data does not, standing alone,
`establish commercial success because it lacks the requisite nexus to the claimed invention”); Am.
`Standard, Inc. v. PfizerInc., 722 F. Supp. 86, 140 (D. Del. 1989) (“gross sales figures .
`.
`. are
`insufficient evidence by themselves to show commercial success of the claimed invention
`without demonstrating that a nexus exists between the sales and the merits of the claimed
`invention”); Flow/Rider Surf Ltd. v. Pac. SurfDesigns, Inc., No. 15—CV—l879, 2016 US Dist.
`LEXIS 153560, at *11 (SD. Cal. Nov. 3, 2016).
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`In sum, the foreign sales discovery that Godo seeks is not “relevant to any party’s claim
`or defense,” as required by Rule 26(b)(l). Godo’s demand for discovery into OmniVision’s
`foreign activities should be denied. See FlowRider, 2016 US. Dist. LEXIS 153560, at *19-20
`(denying motion to compel discovery regarding defendant’s foreign sales and offers to sell that
`result in foreign sales); Finjan, Inc. v. Blue Coat Sys, No. 5:13—cv—03999—BLF, 2014 US. Dist.
`LEXIS 148438, at *5-6 (N.D. Cal. Oct. 17, 2014) (“To be clear, by precluding discovery on
`foreign sales, the court is relying on the fact that [defendant] cannot be held liable under United
`States patent law for extraterritorial activity”) (emphasis added); Calif. Inst. of Tech. v.
`Broadcom Ltd, No. 2:16-cv—03714, slip op. at 6 (CD. Cal. Oct. 6, 2017) (EX. E) (denying
`motion to compel defendants to produce worldwide revenue for sales of accused chips where
`defendants manufactured and delivered the accused chips abroad, despite defendants’ marketing
`presentations and activities in the US); Univ. ofFlorida Research Found, Inc. v. Rapid Mobile
`Techs., Inc., No. 13-cv-61120, slip 0p. at 78 (SD. Fla. Dec. 23, 2013) (“For now, discovery of
`sales data pertaining to Defendant’s cellular phones is limited to its domestic sales figures. .
`. .”).
`
`

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`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 4 of 5 PageID #: 4395
`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 4 of 5 PageID #: 4395
`The Honorable Maryellen Noreika
`Page 3
`November 29, 2018
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`Finally, the burdensome nature of Godo’s request far exceeds any potential relevance or
`need. For example, Interrogatory No. seeks 18 categories of information for every sale that
`OmniVision has made since 2008, and RFP Nos. 48-52, served approximately a month before
`fact discovery closed, seek all agreements concerning any actual or contemplated purchase, price,
`supply, rebate, and manufacture of OmniVision’s sensors. Ex. V; Ex. H. Godo has known since
`at least March 2018 that OmniVision would not be providing foreign sales discovery. Ex. H at 7.
`Godo’s choice to wait until now to raise this issue should not be rewarded.
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`Godo ’s Demand for Identification of End Customers Should be Denied - OmniVision
`cannot produce What it does not possess. While some OmniVision customers may subsequently
`import and sell products incorporating OmniVision’s image sensors in the U.S., OmniVision has
`no specific knowledge or control over any such importations or sales. Nor does OmniVision
`track its customers’ subsequent handlin of the accused ima e sensors or whether those sensors
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`eventuall enter the US. See, 6.
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`.
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`Godo distorts Apeldyn Corp. v. A U Optronics Corp, which ordered the defendant to produce
`sales and technical documents for the accused products—not the end customer data that it did not
`possess. No. 08-568—SLR, 2010 WL 11470585, at*1 (D. Del. Apr. 12, 2010).
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`Godo ’s Demand for “Sales and SuQQort Interactions with Customers” Should be
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`Denied — Godo’s discovery requests do not merely seek “sales and support interactions with
`customers.” Rather, Interrogatory No. 12 seeks the identification of six individuals for each of
`ten subject matter areas, while RFP Nos. 53-70 seek all of Ray Cisneros, John Li, and Vincent
`Chew’s documents and communications concerning the purchase, price, supply, rebate, or
`manufacture of any accused products over 12 years. These discovery requests, some served less
`than a month before close of fact discovery, are unduly burdensome and not proportional to the
`needs of the case. D1 .128 at 117:5—11 (“To the extent that there are document issues that still
`exist, .
`.
`. I expect you to have met and conferred and to deal with them and to ask something that
`is reasonable given where we are in this case and the need to move things along”). Given time
`frame in which to provide its responses, OmniVision has reasonably cited its initial disclosures,
`which identify several individuals, in response to Interrogatory No. 12. EX. J, K. Godo has yet
`to identify the specific “highly relevant” Messrs. Li and Chew documents that it supposedly
`needs, both in its opening letter and during the parties’ meet and confers, despite multiple
`requests by OmniVision that it so elucidate. Ex.L at 2.
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`OVT Did Not Assert the Mori Patent Family in its Collabo Invalidifl Contentions —
`OmniVision has repeatedly represented that it did not assert the Mori Patent Family as prior art
`in the Collabo case, both during the Parties’ meet and confers and in its Responses to Godo’s
`First Set of RFAS. Zang Decl. at 11112, 26-27; Exs. L, M. Also, Godo has no evidence of
`“copying” the asserted patents as there is no mention of any patent in Godo’s cited documents,
`nor evidence of any relationship between the cited publications and any claims of an asserted
`patent. Godo’s motion to compel related to RFP’s 13—40 should be denied.
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`Godo’s Requests (from the ND. Cal. Litigation is Overbroad —G0do’s RFP’S 45-47
`sought all documents produced by OmniVision, all depositions and their exhibits, and all
`documents cited in OmniVision’s responsive damages contentions in the ND. Cal. Action and
`thus its overbroad demands should be denied. This overbreadth is mirrored in Godo’s First Set of
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`RFP’s requesting all documents from the Collabo and Ziptronix litigations. OmniVision has
`requested a narrowed set of requests on the Parties’ meet and confer and Godo has refused.
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`

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`Case 1:16-cv-00290-MN Document 144 Filed 12/05/18 Page 5 of 5 PageID #: 4396
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`November 29, 2018
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`Respectfully,
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`/S/ David E. Moore
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`David E. Moore
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`DEMinmt/6015101/43303
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`cc:
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`Clerk of the Court (Via hand delivery)
`Counsel of Records (Via electronic mail)
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`