Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 1 of 74 PageID #: 5079
`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 1 of 74 PageID #: 5079
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`EXHIBIT A
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 1 of 74 PageID #: 5079
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`EXHIBIT A
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 2 of 74 PageID #: 5080
`1
`
` IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF DELAWARE
`
`01:12:40
`
`GODO KAISHA IP BRIDGE 1, )
`
` )
` Plaintiff, )
` ) C.A. No. 16-290(MN)
`v.
` )
` )
`OMNIVISION TECHNOLOGIES, INC.,)
` )
` Defendant. )
`
`
`
`Friday, December 7, 2018
`11:06 a.m.
`Teleconference
`
`844 King Street
`Wilmington, Delaware
`
`BEFORE: THE HONORABLE MARYELLEN NOREIKA
` United States District Court Judge
`
`APPEARANCES:
`
`STAMOULIS & WEINBLATT, LLC
`BY: STAMATIOS STAMOULIS, ESQ.
` -and-
`
` SHORE CHAN DePUMPO
` BY: CHIJIOKE OFFOR, ESQ.
` BY: SAMUEL E. JOYNER, ESQ.
`
`
`
`Counsel for the Plaintiff
`
`
`
`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 3 of 74 PageID #: 5081
`2
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`APPEARANCES CONTINUED:
`
`
`
`POTTER ANDERSON & CORROON, LLP
`BY: DAVID ELLIS MOORE, ESQ.
`-and-
` WILSON SONSINI GOODRICH & ROSATI
`
`BY: LISA D. ZANG, ESQ.
` BY: ERIK J. CARLSON, ESQ.
` BY: JOSE VILLARREAL, ESQ.
`Counsel for the Defendant
`
` - oOo -
`P R O C E E D I N G S
` (Proceedings commenced at 11:06 a.m., and the
`following occurred in chambers:)
`
`THE COURT: Good morning, counsel. Who is
`there, please?
`MR. STAMOULIS: Good morning, Your Honor. This
`is Stam Stamoulis on behalf of plaintiffs. And I also want
`to apologize, I had some technical difficulties with the
`bridge today, so I apologize for dialing in late.
`With me on the line from the Shore Chan firm
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`3
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`first is Samuel Joyner and Chijioke Offor.
`THE COURT: Okay. Welcome. And for OmniVision.
`MR. MOORE: Good morning, Your Honor. David
`Moore from Potter Anderson. With me today from Wilson
`Sonsini are Jose Villarreal as well as Erik Carlson and Lisa
`Zang. And Mr. Carlson and Ms. Zang are associates with
`Wilson Sonsini and they will be presenting today.
`THE COURT: Thank you for that. And I
`appreciate the apology on the delay. It certainly happens
`and I understand that. I do only have about an hour today,
`or I had about an hour today, and you have a lot of issues.
`So what I wanted to do to try and streamline things is there
`are a number of issues that I would like to hear argument
`about and there are a number of things that I think I can
`address at the beginning of the call. And so I want to do
`that.
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`I'm looking at Mr. Moore's November 28th letter
`first with respect to the request that OmniVision has made.
`I would like to hear, or I have some questions with respect
`to what's been numbered as one and two.
`With respect to request number three, I'm going
`to deny the request for the interrogatory that ask for
`supplemental interrogatory on the identification of Godo and
`all of its affiliates.
`With respect to number four, I know that there
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`4
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`is an issue as to whether or not this has been met and
`conferred on, but I will say that I expect both parties to
`cooperate with respect to third parties. I think that you
`should exchange any information that you have about what
`subpoenas have been issued and the parties need to work
`together to schedule them.
`And then with respect to number five for
`translations, I will say that my general practice is that if
`a party is relying on a document in interrogatories, in
`expert reports, if it's on the exhibit list, then you must
`produce translations of the documents. If Godo is saying
`that they have removed certain documents and they're not
`relying on them, I will not require them to produce a
`translation, but I don't want to hear about those documents
`ever again and have you say now we're relying on them and we
`can give a translation at some point in the future. So I'll
`leave it up to you to make a determination, but any
`documents that are currently in Japanese that have been
`relied on in the interrogatories, a translation should be
`produced. If you have removed certain references and you
`don't want to produce a translation, that's fine, but then
`you are not going to be able to affirmatively rely on those
`documents.
`
`So those are my preliminary rulings. And as I
`said, I'll hear argument on the other two issues.
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 6 of 74 PageID #: 5084
`5
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`With respect to the request in Godo's letter
`which I'm referring to Mr. Stamoulis' November 28th letter,
`Docket Item 129, I want to hear I think argument on most of
`these issues. The one that I can rule on now, though, is
`the final one about the damages, contentions, testimony and
`documents from the pending litigation in California.
`With respect to that, I will say that the
`request for everything that's produced including all
`documents and all deposition transcripts seems overly broad.
`I agree with OmniVision on that point and I would instruct
`Godo to provide a narrowed response, a narrowed request to
`OmniVision by Monday.
`So those are my rulings on those issues. But
`with respect to the other issues, as I said, I have until
`noon to hear them so we can go from side-to-side and you can
`prioritize them in whatever way you choose.
`So we'll start with plaintiff.
`MR. OFFOR: Good morning, Your Honor. This
`Chijioke Offor for Godo on behalf of plaintiffs. And I'll
`start with our first issue on global sales. And I just want
`to first state, we believe we're entitled to damages on
`global sales here. This is an inducement case.
`THE COURT: Could I interrupt for one moment. I
`can barely hear you and I have the phone up to max. Could
`you move closer maybe to the phone.
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 7 of 74 PageID #: 5085
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`MR. OFFOR: Yes, Your Honor. Can you hear me
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`now?
`
`THE COURT: That's much better. Thank you.
`MR. OFFOR: Okay. So this is Chijioke Offor on
`behalf of the plaintiffs. We believe we are entitled to
`global sales. And this is our first issue because this is
`an inducement case. We are attempting to prove inducement.
`And I would specifically say with respect to this motion,
`three of the patents that we are asserting, you have heard
`about them, those are assigned to Mitsuyoshi Mori. Those
`relate to sensors that are using the transistor sharing
`architecture, sharing transistors between pixels for
`photodiodes.
`The accused products in this case, they use that
`design and that's what we are in the process of proving.
`And we have evidence that OmniVision since as early as 2005
`when our inventors described their invention at IEEE
`conferences, that OmniVision actually copied the designs,
`incorporated them into their products and have continued to
`use them.
`
`So overall what we're asking for this global
`sales information, we are trying it to -- we are trying to
`prove information that is related to our inducement claim.
`And again, inducement requires intent, specific intent to
`induce direct infringement. Inducement requires knowledge
`
`
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 8 of 74 PageID #: 5086
`7
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`of the patents, or willful blindness due to the fact that
`they may be infringing, and as well as direct infringement.
`And so global -- the global sales information
`goes directly to this information, we need to be able to
`identify direct infringers. We need to be able to identify
`the accused products. And we -- let me say that again. We
`need to be able to identify the accused products that are
`placed into the stream of commerce. We need to be able to
`identify the direct infringers. And we need to be able to
`determine if OmniVision's contractual relationships with
`those -- with direct infringers and their communications,
`their sales with those direct infringers establish knowledge
`and intent of inducement.
`And so we set forth several cases that pretty
`plainly state, and including the Apeldyn case, that global
`sales information is directly relevant to induce -- to
`proving induced infringement.
`And in this case, this is a case where
`OmniVision tells us that they don't know the -- they are
`unaware of the direct infringement. That they don't know
`any user customer that incorporates image sensors,
`OmniVision image sensors into their products in the United
`States. And we don't -- we do not believe that that is
`true, but to the extent that is true, this Court has made
`clear, including in the Apeldyn case, that continually in
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 9 of 74 PageID #: 5087
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`this case when a defendant alleges that they do not have any
`idea where their products go after they're sold, that's
`exactly the type of case where global sales information is
`necessary so that the plaintiff has an opportunity to look
`at the individuals who are buying the products and determine
`for themselves and try to figure out for themselves who --
`which of the customers are committing direct infringement.
`THE COURT: In the text of your letter when you
`include what you're asking for, you are asking for end user
`name and customer address. What do you mean there by end
`user, who are you talking about?
`MR. OFFOR: So, Your Honor, we are talking about
`companies -- to answer the question directly, we were
`talking about companies just as Apple, companies such as
`Motorola.
`
`THE COURT: But I'm trying to understand where
`they are in the chain. Are you saying you want the names of
`the people that OmniVision sells to or the names of the
`people that ultimately get a product that may contain the
`sensors?
`
`MR. OFFOR: I apologize. We are looking for the
`names of the people that OmniVision sells to. And the names
`of the people that OmniVision provides customer support to.
`So those are the companies that -- so our understanding is
`that OmniVision largely sells to camera module manufacturers
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 10 of 74 PageID #: 5088
`9
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`and those camera module manufacturers will then incorporate
`those camera modules into end market products and those
`products being cell phones, surveillance cameras,
`automobiles, other things like that.
`So we're looking for the names of the
`manufacturers of the modules as well as the names of the
`middle intermediaries that assemble the camera modules that
`go into the end user products.
`And I don't mean to say end user products, I
`mean end market products. These are, again, the names of
`customers like Motorola.
`THE COURT: Okay. Could I hear from defendant?
`MS. ZANG: Good morning, Your Honor, this is
`Lisa Zang will Wilson Sonsini on behalf of the defendant,
`OmniVision. I would like to respond to a couple of points
`Mr. Offor made just now.
`At a base level the issue is the relevance of
`the discovery that Godo is seeking. The foreign sales
`discovery that they're seeking, they say it's relevant to
`this case for various reasons including direct infringement,
`indirect infringement, reasonable royalty damages,
`commercial success and under a design theory as they termed
`it. The court in this district has already denied discovery
`over foreign sales in a patent case and that was the Collabo
`case that we cited despite the plaintiff's claim there that
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 11 of 74 PageID #: 5089
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`foreign sales were relevant to these exact same five areas.
`In addition, with regard to Mr. Offor's argument
`that global sales are relevant to proving indirect
`infringement, at this stage the plaintiff has still failed
`to show that that discovery is relevant. All they really
`said is they need it to identify products in the stream of
`commerce, identify direct infringers, so on, but there is
`still no showing of relevance here especially in light of
`the case law that we have cited where other courts have
`denied discovered of foreign sales. And also an earlier
`decision by a court that OmniVision foreign sales don't
`infringe under U.S. patent law.
`With regard to the indirect infringement claims
`that Godo says it needs this discovery for, I would like to
`note that Godo has still provided no support for any of
`these claims, either in pleadings after over a year of
`discovery, there has been no showing of any underlying
`third-party direct infringement, no showing of intent or
`knowledge by OmniVision, and no showing of any acts by
`OmniVision that could allegedly contribute to induce
`third-party infringement in the U.S.
`And along these lines, earlier, I believe it was
`a week or two ago, there was a third-party deposition of
`John Li that was taken, and the witness in that deposition
`testified on behalf of John Li that OmniVision provides no
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`technical support and has no communication with John Li.
`Even after third party discovery there has been no showing
`of relevance or any evidence of any such acts by OmniVision.
`The argument about OmniVision's copying, I
`believe Mr. Offor had mentioned that they had some evidence
`about some kind of copying. Again, that's not really a
`showing of relevance here for this information.
`And along these lines, Godo, they haven't filled
`any gaps to show that they're entitled to this discovery.
`It's been shown by -- adjudicated by a court that the entire
`sales transaction cycle for those foreign sales occurred
`outside of the U.S., and beyond the reach of U.S. patent law
`and Godo hadn't identified any evidence of overseas
`importing into the United States or identified any acts by
`OmniVision that would allegedly contribute or induce
`third-party infringement.
`And in addition, I think it's important to note
`that even if the Court does find that this discovery is
`relevant, which we believe it's not, Godo's claim should be
`denied because it's extremely burdensome and they don't
`exercise diligence in seeking this discovery. That is quite
`at odds with Your Honor's instruction at the Markman hearing
`earlier this year that the parties only ask for something
`that's reasonable given where we are in case and we need to
`move things along. I note here, Godo's interrogatory,
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 13 of 74 PageID #: 5091
`12
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`number 13, seeks 18 categories of information for sales of
`each of 114 products since 2008. That's ten years of data.
`That's a lot of data.
`We have been clear in our interrogatory
`responses since March of 2018 that we're not going to be
`producing anything outside of discovery and yet this issue
`has not come up until very recently. With regard to the
`request for production, as I'm sure Your Honor has seen,
`those are extremely broad. They're all agreements
`concerning any actual concrete purchase price, rebate,
`manufacturing, so on, of OmniVision sensors, and you know,
`any kind of supply, manufacture and so on, data. And I'll
`also note that since in the last several weeks we have been
`meeting and conferring with Godo, we have been submitting
`letter briefing, but despite our arguments of, you know, no
`relevance and the burden, they still haven't done anything
`to narrow or even to attempt to appropriately tailor their
`request.
`
`And with regard to their cases that they cited,
`I'll note that the Apeldyn case, I believe that was from
`2010, so the case law on foreign sales was still developing.
`It also seems like in Apeldyn what was at issue there was
`quite different from what's at issue here, that was
`essentially the movant in that case was seeking specific
`information whereas here, Godo is seeking a very, very broad
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 14 of 74 PageID #: 5092
`13
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`set of information here.
`THE COURT: Okay. I think that answered the
`questions that I had. Let me ask the plaintiffs to address
`two points that we just heard. One is have plaintiffs
`identified any direct infringers such that inducement is
`actually at issue here?
`And secondly, what am I supposed to do with the
`fact that OmniVision wasn't producing this information in
`March and here we are two weeks from the end of the
`discovery period and it appears that Godo didn't ask for it
`for, you know, ten months?
`MR. OFFOR: Your Honor, I will address both
`questions. So with the first, with respect to direct
`infringement, first I want to say this is discovery and not
`a summary judgment proceeding, but even aside from that,
`Motorola is a customer of OmniVision, and Motorola is a
`customer that OmniVision has tried not to provide --
`OmniVision has tried -- effectively to shield from us any
`information. That part aside, yes, the Motorola G Force
`contains OmniVision sensors. That is proven, not proven,
`but we produced evidence of this, we tore down a Motorola
`phone and produced several hundred pictures and we also
`produced a PowerPoint that summarized the fact that that
`Motorola G Force shows that it contains an OmniVision Pure
`Cell Plus S sensor that is accused in this case. We
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 15 of 74 PageID #: 5093
`14
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`produced particularly in the summary reports the Bates
`number 290-ID 33254, and 267, produced about 200 pages of
`pictures and whatnot that related to that particular report.
`On top of this, when I deposed John Li on
`October 17th, 2018, he testified that
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` And John Li is
`OmniVision's senior vice-president of applications, system
`technologies. Basically he is over all of their
`applications engineers. And he testified that
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`We have subpoenaed Motorola for testimony. We
`have a deposition with Motorola set on November 14th.
`Motorola's counsel has told us that while he doesn't want to
`give us exact numbers of sales of Motorola's direct
`infringement, he confirmed, he confirmed that yes, in fact
`they do sell products that have OmniVision sensors in them.
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 16 of 74 PageID #: 5094
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`So there is clear evidence of this.
`But in the information that OmniVision provides,
`you wouldn't be able to tell that Motorola is a customer,
`even though
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`And we have been put in a position where we
`couldn't take depositions in this case, any fact depositions
`in this case until August 28. That was the first date that
`fact depositions opened by the parties' agreement.
`I don't know why that agreement was struck.
`Myself and Mr. Joyner, we were brought on this case in July
`of this year, and so I can't speak to anything that happened
`before that, but what I do know is that as soon as we have
`been brought in and we have been given those depositions and
`trying to get this information, because OmniVision refuses
`to provide it, despite testifying that they are in fact
`providing support to customers in the United States. And
`that's important because Ms. Zang keeps talking about a
`sales cycle, sales cycle. We are not talking about design
`limits here, we are not alleging -- we are not right now in
`this talking about OmniVision sales to United States, we are
`saying that yes, it's okay, there are foreign buyers of
`OmniVision's products. But it's OmniVision, those foreign
`buyers bring those products to customers in the United
`States, those customers -- and those customers in the United
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 17 of 74 PageID #: 5095
`16
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`States sell those products, those customers in the United
`States, they are direct infringing. And if Motorola
`provides customer support to them to enable them to do that,
`then Motorola is inducing infringement. OmniVision is
`liable for infringe, for inducing infringement under 35 USC
`271(b).
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`Yes, we have produced evidence of direct
`infringement. I have another deposition of Apple that's
`scheduled in a week, or in ten days or so, the 21st. And we
`have been put in a position where we have to go and try to
`get this testimony because OmniVision won't provide the
`information despite, despite providing customer support to
`those end users in the United States. And so that's why we
`find it very difficult to understand what OmniVision's
`position is.
`Again, this case, we're not alleging here -- we
`have not been arguing about design, design is not mentioned,
`that's not been the case. There has been no communications
`between Mr. Joyner and I and anyone on that side about any
`design. We are asking here for Motorola or OmniVision to
`provide us, inform of us of these customers that they are
`providing customer support to. And they identified at least
`one in the deposition until we took a break, and then the
`rest of the transcript is a bunch of calls for speculation
`and Ms. Zang telling the witness that saying that he can't
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 18 of 74 PageID #: 5096
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`remember anything, and that's what we're dealing with here
`in this case.
`As far as the second question, Your Honor,
`related to why are we just bringing this up now. Again, we
`could not take that deposition until August 28. As I
`understand it, the run up to this case, they were working to
`trying to negotiate the production of this information, but
`that didn't happen. But since we have been clear that we
`are trying to get this information, there is additional
`requests to try to specifically -- to try to specifically
`get this information. And OmniVision I guess decided that
`they were going to use this discovery process to preclude
`discovery into anything that would allow identification of
`their end users. And, you know, we have tried to get those.
`I understand the current posture of the case,
`but I don't think that that excuses OmniVision's refusal to
`produce this information. And if you look at the discovery
`requests we're serving, I mean, we're talking about a month,
`even a month before discovery close OmniVision was required
`to respond, and OmniVision's position is it's just not going
`to produce any of the information that we requested.
`They're lodging objections saying that it's on timing, even
`though we served them two months before the close of
`discovery.
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`So I understand the issue of where we are, but I
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 19 of 74 PageID #: 5097
`18
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`also think that OmniVision was required to produce
`information, produce this information and instead of doing
`that, it was on October 26, sometime in October when they
`finally produced a sales spreadsheet of what they contend to
`be U.S. sales, sales that they actually shipped to the
`United States -- to retailers in the United States.
`And you know, Ms. Zang mentioned the burden
`issue. That sales information that they were able to
`produce, the global sales, that's the information that we
`are -- that is -- we believe we're entitled to here. And so
`when I heard the comments about burden, that is really just
`a trojan argument there because there hasn't been any
`showing of burden. In fact they produced the very type of
`spreadsheets, although limited, they chose to limit it in a
`way that basically prevented us from investigating anything
`that they don't consider to be U.S. sales. And that's not
`the way this is supposed to work.
`THE COURT: I think I have heard enough and
`given that we are, you know, running short on time, I am
`prepared to rule on this issue. And I'm going to do
`something similar to what the court did in the Collabo case,
`which is I'm going to order OmniVision to produce summary
`data of gross foreign sales and revenue for the accused
`products.
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`And I am going to, to the extent that OmniVision
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 20 of 74 PageID #: 5098
`19
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`hasn't already disclosed the names of the customers to whom
`the foreign sales were made, and also to identify those
`companies whom they provide customer support.
`And the rest of the information that's requested
`in Godo's request, I'm going to deny.
`Okay. So let's move to the next -- let's move
`to I guess OmniVision's issue. I don't know if you prefer
`to start with your issue number one on supplementation of
`infringement or the response to interrogatory number eight,
`but I'll let you choose.
`MR. CARLSON: Good morning. This is Erik
`Carlson from Wilson Sonsini. I'll take them in order
`beginning with the first issue of supplementation of the
`'677 patent infringement contention. That's a good place to
`start.
`
`THE COURT: Okay.
`MR. CARLSON: And I guess, Your Honor, just
`before I begin, there is a threshold issue, Godo has
`complained that there was not a satisfaction at the meet and
`confer requirement. We believe there was, and we submitted
`an e-mail that we sent to Godo setting forth the record. I
`don't want to presume that the Court agrees with us before
`continuing so I'll see --
`THE COURT: I read the 85 pages of e-mails that
`were submitted to me last week about the meet and confer.
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`Case 1:16-cv-00290-MN Document 160-1 Filed 01/09/19 Page 21 of 74 PageID #: 5099
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`And I will say that I expect the parties to actually talk
`and discuss issues on the phone before bringing issues to
`me. But in the interest of time, I do want to hear on this,
`especially on the sum perimeter issue, because that is one
`that was addressed at the Markman, in the Markman
`proceedings and it's one that I am aware of. So I would
`like to hear on that one.
`MR. CARLSON: Understood, Your Honor. Thank you
`for that guidance.
`So let me just jump right to it then. We
`received an amendment from Godo on the '677 patent
`infringement contention. They purported to address the
`things that they needed to correct as they told Your Honor
`at the Markman hearing. And if we just jump right to
`Exhibit A, pages 7 to 9, that's where you see the amended
`contentions for the sum perimeter limitation. And for
`comparison sake, Exhibit R, the same pages, 7 through 9, are
`the original contentions.
`And on reviewing them, it appears to us that all
`that Godo has done is taken out the description on page 7 of
`Exhibit R that uses average pattern density, that's the part
`that Godo said was incorrect, and they have popped in the
`equation that they showed at the Markman hearing.
`Now, they have applied this color codings as
`Your Honor will notice in Exhibit A, these patterns were
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`11:3
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