Case 1:22-cv-00305-RGA-JLH Document 106 Filed 08/25/23 Page 1 of 5 PageID #: 4480
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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 RESPONSIVE DISCOVERY DISPUTE LETTER TO THE
`HONORABLE JENNIFER L. HALL
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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 25, 2023
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`Case 1:22-cv-00305-RGA-JLH Document 106 Filed 08/25/23 Page 2 of 5 PageID #: 4481
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`Dear Judge Hall:
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`Netflix respectfully requests that Robocast’s motion be denied (D.I. 104). Robocast
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`manufactures disputes where none exists; it submitted its motion minutes after the parties first
`conferred on these alleged disputes, even though the parties were not at an impasse. And Robocast
`demands irrelevant discovery from Netflix while shielding itself from discovery on highly relevant
`issues, including the claim scope, and alleged damages and secondary considerations.
`A.
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`Netflix’s Identification of Initial ESI Custodians Is Proper
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`Following this Court’s June 2 teleconference, Netflix properly identified an initial set of
`three ESI custodians most likely to have relevant custodial documents (Ex. A), notwithstanding
`Robocast’s failure to serve its own list of custodians pursuant to the Court’s Order. Consistent
`with the Court’s Order that the parties may have the flexibility to use an appropriate methodology
`to identify relevant documents, Netflix has determined that collecting from noncustodial sources
`is more likely to efficiently uncover relevant documents than custodial files. Ex. B, 6/2/23 Tr.
`47:11-48:7. This is especially so in this case given that Netflix’s responsive information is
`primarily kept in noncustodial data sources, and in view of the fact that the patents have long-
`expired and the alleged damages are from many years ago. Searching Netflix’s noncustodial
`sources occurs over a broader universe of documents (not limited to an individual’s custodial files),
`and is the methodology Netflix explained to Robocast that it is applying here. Robocast cites no
`authority requiring Netflix to arbitrarily identify 10 custodians, who are less likely to possess non-
`duplicative information from years ago. Instead, Robocast pushes its attorney argument that
`Netflix should identify 10 custodians because it is a large company. Ex. C, 8/24/23 K. Li Ltr. at
`2. That unsupported logic is untethered to the facts of this case and should be rejected.
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`Robocast’s demands that Netflix identify custodians relating to “sales and marketing” are
`misplaced, when Robocast has acknowledged that these documents (and others) are in
`noncustodial data sources. D.I. 102, Ex. K, 8/1/23 Fry Ltr. at 5-6. This is also borne out by the
`record. For instance, Netflix’s production of licenses, SEC filings (with financial information),
`and Netflix’s public-facing statements about its products—all responsive to Robocast’s document
`requests—comes from noncustodial sources. Netflix’s produced source code—most pertinent to
`the accused features’ operations—comes from noncustodial code bases. Netflix previously
`identified three ESI custodians with technical knowledge of the accused features who are most
`likely to have non-duplicative ESI, and has since identified two individuals with knowledge of
`Netflix’s financials and marketing, but whose information primarily derive from noncustodial
`sources as well. Ex. D.
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`Conversely, Robocast has not justified its disclosure of only two custodians (inventor
`Damon Torres and IP Counsel Brett Smith). Based on documents produced in the prior Microsoft
`and Apple cases, it appears that Robocast has or had other employees with potentially relevant ESI,
`including before or within the alleged damages window (March 2016–August 2020). Ex. E, 8/9/23
`Fry Ltr. at 1-2 (listing multiple employees’ emails and titles); Ex. F, Robocast, Inc. v. Microsoft
`Corp., No. 10-1055, D.I. 511-3 (D. Del. Feb. 26, 2014) (identifying current or former employees
`as witnesses). The Court should continue the practice observed in other cases that the number of
`custodians identified by a party should be determined by the facts and merits of each case, as
`justified by the claims at issue. Robocast’s motion to compel should be denied.
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`Case 1:22-cv-00305-RGA-JLH Document 106 Filed 08/25/23 Page 3 of 5 PageID #: 4482
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`B.
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`Email Discovery from Netflix Is Burdensome and Not Proportional to the
`Needs of the Case
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`As the Court noted, “to the extent that there are e-mails produced, it seems to me that what
`needs to get produced is probably pretty limited.” Ex. B, 6/2/23 Tr. 38:9-11. Yet, without
`engaging in a “meaningful discussion,” Robocast demands broad email discovery from Netflix as
`to each of its document requests without limitation as to time or scope, and years before Netflix
`had knowledge of Robocast’s expired patents.1 Robocast’s position is unreasonable. Netflix’s
`emails are irrelevant to the claims in the case. The Court dismissed Robocast’s indirect and willful
`infringement claims last year. D.I. 20, 21. Thus, no claims implicate Netflix’s knowledge or
`intent. Ex. G, Sentius Int’l, LLC v. HTC Corp., No. 18-1216, D.I. 49 (D. Del. May 12, 2020),
`11:3-12 (email discovery not required in case with “only direct infringement” claims and “expired
`patents with a very limited damages period”). Robocast seeks to engage in a fishing expedition.
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`Robocast’s letter fails to identify a single, substantive reason associated with its document
`requests that justifies email discovery from Netflix. D.I. 104 at 1-2. Instead, Robocast solely
`points to the number of documents Netflix has produced (currently 712 documents and its source
`code), to conclude that email discovery is necessary. Robocast’s complaints are unfounded.
`Netflix timely served its responses and objections to Robocast’s first set of document requests last
`month, has diligently sought to clarify the scope of Robocast’s broad requests, and is searching for
`and producing, responsive documents, as it committed to do. Moreover, any potential relevance
`of Netflix’s emails is outweighed by the burden of collecting and producing emails, given that the
`asserted patents all expired years ago and long before Netflix had knowledge of them. As
`explained above, many of the pertinent documents will be produced from noncustodial sources.
`In short, discovery of Netflix emails is not tailored to the issues here, not proportionate to the needs
`of the case, and will greatly and unnecessarily increase the cost and complexity of discovery.
`C.
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`Robocast’s Request for Netflix to Produce Documents Is Moot
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`Netflix has produced, and will continue to produce, documents responsive to Robocast’s
`requests on a rolling basis; Robocast’s motion is moot. As Robocast acknowledges, the case
`schedule already provides a date for substantial completion of document production on November
`17. D.I. 47. Nevertheless, Robocast demands that Netflix identify earlier dates for its
`production(s). In attempting to justify its request, Robocast does little more than point to its own
`production of documents that it had on-hand from its prior litigations, a large portion of which are
`junk files. Ex. H, 8/14/23 Fry Ltr. at 1-2. And even though Netflix served its document requests
`six months ago, Robocast has produced no documents within the damages window in this case.
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`The record also contradicts Robocast’s insistence on urgent discovery and the alleged lack
`of diligence by Netflix. Robocast waited over four months after fact discovery opened to
`propound a single document request, and those were limited to damages. Robocast served requests
`related to technical documents for the first time this week (D.I. 99), which Netflix is currently
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`1 Robocast refuses to produce any emails post-2014 and during the alleged damages window in
`this case, admitting that it has merely produced already-collected emails from the prior cases, much
`of which is non-responsive (i.e., spam emails and personal photos). In Robocast’s view, only
`Netflix should be obligated to undertake the burden of collecting and producing email discovery.
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`Case 1:22-cv-00305-RGA-JLH Document 106 Filed 08/25/23 Page 4 of 5 PageID #: 4483
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`reviewing for responsive documents. Robocast concedes, as it must, that Netflix has produced
`responsive documents in this case, including revenue data, prior licenses, documents regarding the
`accused features, and documents showing that Netflix’s success is unsurprisingly owing to, in
`large part, its award-winning content. Netflix’s success is unrelated to the accused product features
`and its revenues are irrelevant to the alleged inventions. D.I. 102, Ex. I, Li 8/15/23 Email. And
`although Netflix produced its source code in April, Robocast still has not reviewed it. Although
`Robocast seems to take issue that some of Netflix’s responsive documents are also public, the
`substance of those documents is directly responsive to Robocast’s requests. As Netflix has
`diligently been collecting and producing responsive documents, and has committed to producing
`additional documents on a rolling basis, Robocast’s motion should be denied as moot.
`D.
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`Discovery from Netflix Should Be Presumptively Limited
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`Robocast has failed to show the requisite good cause to seek Netflix’s documents from
`before the alleged damages window (March 2016-August 2020). Ex. I, Default Standard for
`Discovery, Including ESI (“[a]bsent a showing of good cause, follow-up discovery shall be limited
`to a term of 6 years before the filing of the complaint”). The presumption temporally limiting
`discovery to six years pre-complaint is to prevent unexplained delay from the plaintiff and forcing
`the defendant to undertake burdensome searches for documents years later. Ex. J, United States
`v. Gilead Sciences, Inc., No. 19-2103-MN, D.I. 247 (D. Del. Dec. 21, 2021) (denying motion to
`compel production of pricing documents from 15 years before the case was filed). Robocast waited
`years after the patents expired to file this lawsuit, despite having asserted one of the patents against
`Microsoft and Apple over ten years ago (and during the time one of the accused features was
`publicly released). Robocast cannot make it Netflix’s burden to search and produce all relevant
`documents from over a decade ago when Robocast’s delay was its own strategic decision.
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`To demonstrate good cause to expand the Default Standard’s six-year lookback on
`discovery, Robocast must articulate the specific documents it contends it needs and a basis for
`those documents, but it instead has taken the position that every single document request requires
`Netflix to undertake this burdensome search. Leo Pharma A/S v. Glenmark Pharms. Ltd., No. 20-
`1359-CFC, 2021 U.S. Dist. LEXIS 98588, at *2-3 (D. Del. May 25, 2021) (denying the movant
`an “extreme, blanket order” to compel production of documents predating the complaint by six
`years). And Robocast’s assertion that it needs discovery from Netflix to determine the hypothetical
`negotiation date makes little sense given that the date the accused features launched is publicly
`available. The same is true for obviousness, which is analyzed as of the alleged invention date,
`here, 1996, which far predates Netflix’s introduction of online streaming and, thus, Netflix’s
`documents. And, there are no asserted secondary considerations, as Robocast has disclosed none.
`While Netflix has produced some documents from outside of the potential damages window,
`including licenses, the burden on Netflix to produce “all relevant documents” before the
`presumptive six-year limit outweighs any potential relevance articulated by Robocast. D.I. 104.
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`Nowhere has Robocast explained the relevance of discovery from Netflix after the patents’
`expiration. Nor could it, as it cannot allege infringement or seek damages post-expiration, after
`August 2020 at the latest. In re Syngenta Crop Prot. AG, No. 21-375, 2022 WL 1690832, at *3
`(D. Del. May 26, 2022) (denying discovery after patent expiration). Its request for documents
`outside the alleged damages window should be denied.
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`Case 1:22-cv-00305-RGA-JLH Document 106 Filed 08/25/23 Page 5 of 5 PageID #: 4484
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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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`cc: All Counsel of Record (CM/ECF)
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