Frederick L. Cottrell, III
`Case 1:22-cv-00304-RGA-JLH Document 103 Filed 08/25/23 Page 1 of 3 PageID #: 5687
`Director
`302-651-7509
`Cottrell@rlf.com
`
`August 25, 2023
`
`BY CM/ECF
`The Honorable Jennifer L. Hall
`U.S. District Court for the District of Delaware
`844 North King Street
`Wilmington, DE 19801-3555
`
`Re: Robocast, Inc. v. YouTube, LLC, C.A. No. 22-304-RGA-JLH
`
`Dear Judge Hall:
`
`Defendants YouTube, LLC and Google LLC (collectively, “Google”) respectfully submit this
`letter for the August 29, 2023 discovery teleconference in response to Robocast’s request for an order
`compelling email discovery and requiring production of documents outside the period of alleged
`infringement. Robocast initially sought these orders only against Defendant Netflix, Inc. in the related
`case, but Google asked to be allowed to participate in resolving these common issues.
`
`Email discovery. Google has abided by the Court’s guidance at the June 2, 2023 discovery
`conference. The parties met and conferred on the sole outstanding set of RFPs propounded by
`Robocast. Google provided its ESI custodians to Robocast, and Robocast recently provided its
`feedback on them (in their view, insufficient).1 The parties have simply reached an impasse on the
`particular RFPs propounded by Robocast and whether email discovery is warranted for those RFPs
`now, rather than after substantial completion of non-custodial ESI. Notably it is Google—not
`Robocast—that has timely sought to bring this issue to the Court’s attention. Robocast’s letter
`identifies no specific RFPs nor any deficiency in Google’s document production for any specific RFP.
`
`Robocast’s failure to identify any specific RFPs or production deficiencies highlights the
`reason for Google’s earlier proposed ESI order: A phasing of email discovery makes sense here
`because the patents at issue expired before the lawsuit began, and there is a limited period of alleged
`infringement.2 June 2, 2022 Hearing Tr. 30:16-31:1. In line with this, email discovery is generally of
`secondary importance in patent cases. See D.I. 71-1 (attaching Sentius Int’l, LLC v. HTC Corp., No.
`18-1216-MN, D.I. 49 (D. Del. May 25, 2020) at 11:3-12 (denying email discovery in patent case
`involving “only direct infringement” and “very limited damages period”) (Ex. 2); Groove Digital, Inc.
`v. King.com Ltd., C.A. No. 18-836 (RGA), D.I. 21 (D. Del. Jan. 25, 2019), (Ex. 3); In re Sensipar
`AntitrustLitig., C.A. No. 19-396 & 19-2895, D.I. 36 (D. Del. June 6, 2019) (scheduling order phasing
`custodial searches after production of non-custodial materials) (Ex. 4); Roche Diagnostics Corp. v.
`Meso Scale Diagnostics, LLC, C.A. No. 17-189, D.I. 25 (D. Del. July 31, 2017) (scheduling order with
`two-track discovery) (Ex. 5); Int’l Construction Products LLC v. Caterpillar Inc., C.A. No. 15-108,
`D.I. 95 (D. Del. Feb. 24, 2017) (same) (Ex. 6)). At the end of the day, email evidence cannot strike at
`the heart of the infringement question, namely, whether the claims map onto the accused functionality.
`
`
`1 Google remains available to discuss its custodians and expects to further discuss them with Robocast.
`2 The ‘819 and ‘932 patents expired on September 2, 2017. The ‘451 patent expired on August 9, 2020.
`
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`

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`Case 1:22-cv-00304-RGA-JLH Document 103 Filed 08/25/23 Page 2 of 3 PageID #: 5688
`
`The Honorable Jennifer L. Hall
`August 25, 2023
`Page 2
`
`
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`Google thus proposes that email discovery be phased. The parties would meet and confer
`regarding the scope of email discovery by November 30, 2023, when they have had an opportunity to
`review the documents produced by the November 17, 2023 substantial completion deadline and have
`a better understanding of the necessity and proportionality of production of any emails in response to
`a particular RFP. The parties would then submit a joint status report by December 12, 2023 indicating
`the agreed scope and any disputes.3
`
`Robocast’s accusations comparing its production to Google’s are not well taken. First,
`Robocast’s production appears to be wholly recycled from its litigation against Microsoft and Apple,
`which concluded in 2014. In fact, Robocast entirely objects to “the production of documents from the
`post-2014 time period” in responding to Google’s RFPs. Ex. A (Letter from S. Moore) at 1. By
`contrast, Robocast has identified no specific deficiencies in Google’s production to any Robocast RFP.
`Robocast has only one outstanding set of RFPs, which are largely duplicative requests related to
`damages. Id. at 2. Robocast further has yet to review Google’s source code, which includes detailed
`information about the operation of Google’s products and is of primary relevance in patent litigation.
`
`Time period. As an initial matter, Robocast does not seem to dispute that information from
`after expiration of the patents-in-suit is irrelevant and unnecessary for discovery. Its letter does not
`address this issue at all. Thus, it appears undisputed that post-expiration documents need not be
`preserved or produced. The only issue is information from before the actionable potential infringement
`damages period—here, six years prior to the lawsuit. Robocast has argued that the Delaware Default
`Standard for Discovery should apply. D.I. 73 at 2. That order includes the following limitation on
`discovery: “Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years
`before the filing of the complaint, except that discovery related to asserted prior art or the conception
`and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.”4
`
`Regardless, Google is not making an absolute objection to discovery earlier than six years
`before filing. As Robocast admits, Google already said it would provide information regarding prior
`art and comparable licenses. It is further willing to provide specific information or documents
`sufficient to show what the date of the hypothetical negotiation would be, as Robocast raised that issue
`for the first time in its letter brief. But Robocast’s requested unlimited scope of all discovery before
`the six-year date based only on an unidentified hypothetical negotiation date and a general citation to
`the Georgia-Pacific factors is unwarranted. Rather, Google proposes that discovery be limited to the
`period of actionable infringement absent a showing a good cause.
`
`
`3 The only allegations of indirect infringement or willful infringement pending against Google are for
`the ’451 patent. D.I. 28 at 7-8. To the extent those claims are dismissed, Robocast has not identified
`sufficient reasons email discovery would be necessary or proportional at all. Google may raise this
`issue at the appropriate time. See D.I. 29 (permitting leave to refile a motion to dismiss once the
`Federal Circuit decides In re Cellect, Case No. 22-1293 (Fed. Cir.).)
`4See
`https://www.ded.uscourts.gov/sites/ded/files/pages/Electronic%20Discovery%20Default%20Standar
`d_0.pdf, § 4.e.
`
`
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`

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`Case 1:22-cv-00304-RGA-JLH Document 103 Filed 08/25/23 Page 3 of 3 PageID #: 5689
`
`The Honorable Jennifer L. Hall
`August 25, 2023
`Page 3
`
`
`cc:
`
`All Counsel of Record (via email)
`
`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`
`