Case 1:22-cv-00305-RGA-JLH Document 102 Filed 08/23/23 Page 1 of 4 PageID #: 4288
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ROBOCAST, INC.,
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`Plaintiff and Counterclaim Defendant,
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`v.
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`Defendant and Counterclaim Plaintiff.
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`NETFLIX, INC.,
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`C.A. No. 22-305-RGA-JLH
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`JURY TRIAL DEMANDED
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`Kelly E. Farnan (#4395)
`Tyler E. Cragg (#6398)
`Richards, Layton & Finger, P.A.
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`farnan@rlf.com
`cragg@rlf.com
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`Attorneys for Defendant Netflix, Inc.
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`NETFLIX, INC.’S OPENING DISCOVERY DISPUTE LETTER TO THE
`HONORABLE JENNIFER L. HALL
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`
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`OF COUNSEL:
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`Tara D. Elliott
`Rachel Weiner Cohen
`Ashley M. Fry
`Diane E. Ghrist
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW, Suite 1000
`Washington, DC 20004-1304
`(202) 637-2200
`
`Kimberly Q. Li
`LATHAM & WATKINS LLP
`200 Clarendon Street
`Boston, MA 02116
`(617) 880-4500
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`Dated: August 23, 2023
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`

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`Case 1:22-cv-00305-RGA-JLH Document 102 Filed 08/23/23 Page 2 of 4 PageID #: 4289
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`Dear Judge Hall:
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`Pursuant to the Order Setting Teleconference (D.I. 93), Netflix respectfully requests that
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`this Court compel Robocast to (a) provide substantive responses to Interrogatory Nos. 1-16;
`(b) supplement its Initial Disclosures on damages; and (c) produce emails and other responsive
`documents dated after the resolution of Microsoft and Apple cases, including documents seeking
`litigation funding and financing arrangements. These issues all arise from Robocast’s refusal to
`provide discovery beyond re-producing documents from the prior cases, which pre-date the alleged
`damages window in this case. Robocast’s tactics have hindered, and continue to hinder, Netflix’s
`ability to understand, and develop rebuttals to, Robocast’s claims and damages assertions.
`I.
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`Robocast’s Refusal to Respond to Any Interrogatory
`Robocast has refused to provide a single substantive response to any of Netflix’s
`Interrogatory Nos. 1-16, served on March 1, because it asserts that Netflix exceeded its limit of 25
`interrogatories. Ex. A. On May 1, Robocast conveyed that six of Netflix’s 16 interrogatories (Nos.
`2, 5, 10-12, and 16) purportedly contain multiple subparts. Ex. B, 5/11/23 Fry Ltr. at 4. Yet
`Robocast has provided no authority from this Court to support withholding substantive responses
`to all interrogatories. No such authority exists.1 In any event, as set forth below, each disputed
`interrogatory is properly counted as a single interrogatory and Robocast should promptly respond.
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`Robocast contends that Interrogatory No. 2 relating to patent agreements has two subparts:
`(1) “license agreements, assignments, settlement agreements, covenants not to sue,” and (2) “any
`agreement granting any party any rights under or interest in any of the Asserted Patents.” Ex. C,
`4/26/23 Shomaker Ltr. at 1. But the second purported subpart “logically and factually” subsumes
`the first. Medigus Ltd. v. Endochoice, Inc., No. 15-505-LPS-CJB, 2016 WL 5791409, at *2 n.4
`(D. Del. July 19, 2016) (“a general inquiry ... and then subsequent[] list[ing] specific types of
`information that are both logically and factually related to that inquiry” counts as a single
`interrogatory). The question at the interrogatory’s core is to ascertain what agreements conveyed
`any rights or interest in the asserted patents. Cf. Ex. D, Align Tech., Inc. v. 3Shape A/S, No. 17-
`1646-LPS-CJB (D. Del. Jan. 22, 2019) (interrogatory had multiple subparts where it covered
`license/settlement agreements and also co-development and sale/resale distribution agreements).
`No. 5 concerns Robocast’s knowledge of prior art. Robocast contends that seeking “the dates and
`circumstances of how such [p]rior [a]rt became known” is a separate subpart from seeking “[p]rior
`[a]rt ... that became known at any time to Robocast.” Ex. C, 4/26/23 Shomaker Ltr., Ex. 1 at 1.
`But seeking dates and circumstances that go to the call of the question does not constitute a separate
`subpart. Medigus, 2016 WL 5791409, at *2-3 (alleged subparts “simply request the dates for
`specific events … ‘necessary to complete the details required’ by the call of the question”; “a
`request to set out ‘the facts and circumstances’” did not comprise multiple subparts). The
`purported subparts of Nos. 10 and 11 relate to invalidity and unenforceability, respectively.
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`1 Robocast contends it would waive its objection should it answer any interrogatory (even those
`not in dispute), but in its only cited Delaware case, waiver was found when defendants responded
`to 32 interrogatories “before raising an objection.” Barkes v. First Corr. Med., No. 06-104-JJF-
`MPT, 2010 WL 1962797, at *2 (D. Del. May 17, 2010). Although Robocast attempts to justify its
`refusal to respond to any interrogatories with two outlier out-of-district cases, “the better rule is to
`require the responding party to answer the first 25 interrogatories, and object to the remainder.”
`7 Moore’s Federal Practice - Civil § 33.30 (2023).
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`Case 1:22-cv-00305-RGA-JLH Document 102 Filed 08/23/23 Page 3 of 4 PageID #: 4290
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`Robocast also contends both interrogatories are “premature,” Ex. E, 6/6/23 Shomaker Ltr. at 3, but
`that similarly is no legitimate basis to refuse to respond.
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`The purported subparts of Nos. 12 and 16 identify specific types of information that are
`logically and factually related to Robocast’s damages theories. Even specific pieces of requested
`information, while enumerated separately, may “form a combination that is most reasonably
`counted as a single interrogatory.” Ex. F, Confluent Surgical, Inc. v. HyperBranch Med. Tech.,
`No. 17-688-LPS-CJB, D.I. 212 (D. Del. June 18, 2019). This is “an especially understandable
`conclusion in complex cases such as a patent infringement case, where Plaintiffs’ method of
`counting subparts would hamstring a party’s ability to discover relevant information.” Id.
`Robocast’s treatment of No. 12, seeking its position on damages, as 17 alleged subparts
`contravenes the typical use of interrogatories. No. 16 concerns Robocast’s practice of the patents,
`and thus its lost profits claim. Ascertaining the facts and circumstances surrounding any Robocast
`practicing products does not constitute separate subparts. Medigus, 2016 WL 5791409, at *2-3.
`II.
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`Robocast’s Deficient Rule 26 Initial Disclosures on Damages
`Robocast’s Initial Disclosures (Ex. G) fail to comply with Rule 26, requiring parties to
`provide “a computation of each category of damages claimed” and make available documents “on
`which each computation is based.” Fed. R. Civ. P. 26(a)(1)(A)(iii). Judge Andrews has recognized
`that Rule 26(a) “expressly require[s] an initial computation and disclosure of the evidence that will
`be relied on to the full extent the patent plaintiff could or should know of it.” NexStep, Inc. v.
`Comcast Cable Commc’ns, LLC, No. 19-1031-RGA, 2021 WL 5356293, at *1 (D. Del. Nov. 17,
`2021). Early discovery of the factual underpinnings and evidence supporting damages “promotes
`judicial efficiency, informs settlement discussions, and helps parties determine the resources that
`will be devoted to a case based on its potential value.” MLC Intell. Prop., LLC v. Micron Tech.,
`Inc., 10 F.4th 1358, 1372 (Fed. Cir. 2021). Robocast should provide fulsome damages disclosures.
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`Robocast contends that it needs discovery before it can disclose its damages theories.
`Ex. H, 6/23/23 Fry Ltr. at 7; Ex. I, 8/15/23 Li Email. But Robocast waited four months to
`propound discovery—any suggestion that it requires information from Netflix to provide its
`disclosures is belied by its own conduct. It is also inconsistent with the law, which places the onus
`on Robocast to provide an initial damages computation based on information in its possession and
`disclose the evidence it intends to rely on, independent from discovery from Netflix. NexStep,
`2021 WL 5356293, at *1. Although Robocast claims that it may seek lost profits, Robocast refuses
`to 1) identify any products that allegedly lost profits and had impacted sales, 2) explain any alleged
`capacity to have made any lost sales, or 3) produce any documents from the alleged damages
`window (March 2016–August 2020). Ex. J, Commscope Techs. v. Rosenberger Site Sols. LLC,
`No. 20-1053-RGA, D.I. 162 at 3 (D. Del. Jan. 24, 2022) (requiring plaintiff to identify “on a
`product-by-product basis” all products “whose sales and/or price[s] were allegedly impacted
`and/or harmed” by the infringement and “describe in detail” the impact or harm). Robocast should
`immediately make these disclosures. Robocast should also provide detailed contentions as to its
`reasonable royalty claim, such as the extent it considers any of its prior patent licenses to be
`comparable. Id. at 2-3 (requiring plaintiff “to identify a reasonable royalty rate,” “explain why [it]
`thinks the reasonable royalty rate is appropriate,” and “identify any and all license agreements it
`contends are comparable”). Robocast’s disclosures only vaguely mention the Georgia-Pacific
`factors without providing evidence or analysis. Brandywine Commc’ns Techs. v. Cisco Sys., No.
`12-1669, 2012 WL 5504036, at *2 (N.D. Cal. Nov. 13, 2012) (patentee must identify its evidence).
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`Case 1:22-cv-00305-RGA-JLH Document 102 Filed 08/23/23 Page 4 of 4 PageID #: 4291
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`III. Robocast’s Untenable Limitations on Its Document Production
`Post-2014 Documents/Emails: Robocast should produce responsive documents from after
`2014, when the prior cases resolved and during the only potential damages window, because these
`documents are highly relevant to at least lost profits, the hypothetical negotiation, and Georgia-
`Pacific factors. Ex. K, 8/1/23 Fry Ltr. at 3. Robocast represented that its “reasonable search” in
`response to requests served on March 1 has uncovered no non-privileged documents from after
`2014, drawing into question Robocast’s basis for asserting at least lost profits. Ex. I, 8/15/23 Li
`Email. Robocast should also produce time-relevant, responsive emails consistent with its re-
`production of emails produced in the prior cases. Robocast argues that any relevance of post-2014
`emails—even emails expressly referencing the patents—is outweighed by the burden of
`production. Its only contention as to burden is that the documents may implicate privilege. This
`position makes little sense in light of Robocast’s production of pre-2014 emails, and it ignores
`Robocast’s obligation to log documents withheld as privileged. Without support, Robocast insists
`on email discovery from Netflix. But contrary to the highly relevant information in Robocast’s
`emails, there are no claims of indirect or willful infringement relating to its long-expired patents
`(or that responsive documents cannot be obtained by less burdensome means). D.I. 74.
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`Funding/Financing: Robocast should produce documents responsive to RFP Nos. 21-23,
`36, 47-48 relating to funding and financial interests in this case, which are relevant to damages.
`Ex. L, MHL Custom, Inc. v. Waydoo USA, Inc., No. 21-91-RGA-MPT, D.I. 120 at 5 (D. Del. Dec.
`1, 2022) (“insurance policy [related to litigation funding], correspondence, and opinion letters are
`clearly relevant” and “standard requests in patent litigation and relate to funding and financial
`interests in addition to perceived value, strengths, and weaknesses of the patents”); Acceleration
`Bay LLC v. Activision Blizzard, Inc., No. 16-453-RGA, 2018 WL 798731, at *3 (D. Del. Feb. 9,
`2018) (communications related to litigation funding relevant to “central issues like validity and
`infringement, valuation, damages, royalty rates, pre-suit investigative diligence, and whether
`[Plaintiff] is an operating company”). Robocast told this Court that “litigation” is “a big piece of”
`Robocast’s business and is “raising capital” to “finance … perhaps its litigation efforts.” Ex. M,
`Robocast, Inc. v. YouTube, LLC, No. 22-304-RGA-JLH, D.I. 43 (D. Del. Dec. 20, 2022), Tr. 33:6-
`10, 18-21. Such statements undermine Robocast’s privilege assertion. By asserting privilege, it
`must at least provide a log with sufficient information for Netflix or the Court to assess its claims.
`Elm 3DS Innovations LLC v. Samsung Elecs. Co., No. 14-1430-LPS, 2020 U.S. Dist. LEXIS
`216796, at *2-4 (D. Del. Nov. 19, 2020). It cannot refuse production or logging, as disclosure
`poses no risk of “unfair and unwarranted advantage to” Netflix—the patents are expired and
`Robocast has no competing product. Ex. N, TQ Delta LLC v. Adtran, Inc., No. 14-954-RGA, D.I.
`419 at 2 (D. Del. June 6, 2018).
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`Netflix respectfully requests that the Court enter Netflix’s Proposed Order (Ex. O).
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`Respectfully,
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`/s/ Kelly E. Farnan
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`Kelly E. Farnan (#4395)
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`3
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