Case 1:22-cv-00305-RGA-JLH Document 131 Filed 11/17/23 Page 1 of 5 PageID #: 5005
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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)
`Sara M. Metzler (#6509)
`Richards, Layton & Finger, P.A.
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`farnan@rlf.com
`metzler@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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`OF COUNSEL:
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`Tara D. Elliott
`Rachel Weiner Cohen
`Ashley M. Fry
`Diane E. Ghrist
`Alessandra M. Schaszberger
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW, Suite 1000
`Washington, DC 20004-1304
`(202) 637-2200
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`Kimberly Q. Li
`LATHAM & WATKINS LLP
`200 Clarendon Street
`Boston, MA 02116
`(617) 880-4500
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`Dated: November 17, 2023
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`Case 1:22-cv-00305-RGA-JLH Document 131 Filed 11/17/23 Page 2 of 5 PageID #: 5006
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`Dear Judge Hall:
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`Netflix respectfully requests that this Court enter Netflix’s Proposed Order to compel
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`Robocast to: (a) comply with the Court’s August 29, 2023 Oral Order and produce all responsive
`documents that post-date 2014 in response to Netflix’s Requests for Production; and (b) provide a
`complete substantive response to Interrogatory No. 15, which seeks Robocast’s sources of revenue
`and expenses from the date of conception of the Asserted Patents through patent expiration and
`persons with knowledge of the same. (Ex. A)
`I.
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`Robocast’s Failure to Produce Any Post-2014 Documents
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`Notwithstanding the Court’s August 29 Order, and that Netflix’s requests that have been
`pending since March 2023, Robocast failed to produce a single responsive document that post-
`dates 2014—not one.1 Robocast’s productions to date have instead primarily consisted of the
`reproduction of documents from its prior litigations against Microsoft and Apple, and have not
`included any Robocast documents following the conclusion of those litigations in 2013. But the
`documents from the prior litigations do not address the alleged damages window in this case:
`March 2016–August 2020. See Exs. B, C. Netflix is thus forced to re-raise this issue to enforce
`the Court’s prior order that “Robocast needs to search [for] documents that post-date 2014 that are
`responsive to the requests for production made by the defendant, and if those documents are
`responsive, they need to be produced.” See Ex. D, 8/29/23 Hr’g Tr. 21:17-21.
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`Netflix’s RFPs seek highly relevant information directed to patent validity, the alleged
`value of the Asserted Patents, whether Robocast exploited the patented technology through a
`practicing product, Robocast’s licensing efforts, the hypothetical negotiation, and the Georgia-
`Pacific factors, by way of example. See, e.g., Ex. E, 8/1/23 Fry Ltr. at 3-4; Ex. F, 11/14/23 M&C
`Tr. 13:6-14:5. Below are exemplary document requests for which Netflix would expect to see
`post-2014 documents or a representation that no such documents exist:
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` Documents relating to patentability and secondary considerations of non-obvious
`(RFPs 9-10);
` Marketing, commercialization, demand for, and sales of any allegedly practicing
`product (RFPs 15, 59, 61, 72, 85);
` Sales, revenues, investments, and business information, including regarding the alleged
`invention and any related licensing, monetization, or patent litigation efforts (RFPs 20-
`22, 52, 62, 68, 70, 76, 79); and
` Documents related to the reasonably royalty calculation (RFPs 38-40).
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`Having received no Robocast post-2014 documents and with the November 17 substantial
`completion deadline rapidly approaching, Netflix attempted to understand Robocast’s positions to
`no avail. For example, Netflix asked whether Robocast had any responsive documents, whether
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`1 Although Robocast made a production on November 17 (the substantial completion deadline and
`when Netflix’s brief was due), it was not accessible for review at the time of this submission.
`Notably, before this production, Robocast produced a total of 52 documents since the Court’s
`August 29 Order, but none post-2014. It should not have taken several months of correspondence,
`multiple meet and confers, and the instant motion for Robocast to make its production.
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`Case 1:22-cv-00305-RGA-JLH Document 131 Filed 11/17/23 Page 3 of 5 PageID #: 5007
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`and when Robocast will produce those documents, and the basis of withholding any post-2014
`documents. See, e.g., Ex. G at 38-39 (9/8/23 D. Ghrist Email); id. at 27-28 (10/10/23 D. Ghrist
`Email); id. at 4-5 (11/6/23 D. Ghrist Email); id. at 1 (11/8/23 D. Ghrist Email); Ex. H, 11/2/23
`M&C Tr. 5:14-7:1; Ex. F, 11/14/23 M&C Tr. 14:20-17:10. Robocast has remained non-committal
`and evasive, as it had been regarding this issue during the August 29 hearing. Ex. D, 8/29/23 Hr’g
`Tr. 18:14-22. Robocast then took the untenable position that the Court’s Order only applied to
`Netflix’s first set of RFPs and not the second, though both seek highly relevant information related
`to the patentability and damages issues set forth above. Ex. H, 11/2/23 M&C Tr. 7:7-13, 11:12-
`20. The lack of clarity as to whether Robocast has any responsive post-2014 documents to produce
`or is withholding documents on some unknown basis has resulted in a denial of relevant discovery
`to Netflix. Robocast’s delays have forced Netflix to re-raise the same issue the Court previously
`ruled upon, rather than assess the sufficiency of Robocast’s post-2014 production—the exact
`situation the parties and the Court tried to avoid. See Ex. D, 8/29/23 Hr’g Tr. 38:17-20.
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`With no other way to understand what Robocast post-2014 documents exist and whether
`any are forthcoming or what is being withheld, Netflix moves the Court to compel Robocast to
`immediately comply with the Court’s August 29 Order by searching for and producing all post-
`2014 documents responsive to all of Netflix’s RFPs. In the alternative, Netflix requests an
`opportunity to review Robocast’s November 17 production and provide the Court with a one-page
`reply to address Robocast’s most recent production.
`II.
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`Robocast’s Ongoing Refusal to Fully Respond to Netflix’s Interrogatory No. 15
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`Netflix’s Interrogatory No. 15 asks Robocast to “[i]dentify all of Robocast’s expenses and
`sources of income since the alleged date of conception, all documents that show or reflect the
`information set forth in Robocast’s response, and the Person(s) most knowledgeable about the
`same.” Ex. I at 1. Seeking basic P&L information, Interrogatory No. 15 requests information only
`in Plaintiff Robocast’s possession that should be readily accessible. When Robocast refused to
`provide any substantive responses to any of Netflix’s sixteen interrogatories, Netflix raised this
`issue with the Court. D.I. 102 at 2-3. As Netflix’s Interrogatories had been pending since March,
`the Court ordered Robocast to substantively respond. See Ex. D, 8/29/23 Hr’g Tr. 9:22-24.
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`Robocast did not follow the Court’s Order with respect to Interrogatory No. 15.2 Instead,
`Robocast simply stated that it was “willing to meet and confer on the proper scope, if any, of this
`Interrogatory.” Ex. J at 2. Both in meet and confers and written correspondence thereafter, Netflix
`repeatedly and patiently set forth in law and in fact the basis for its request for Robocast’s revenues
`and sources of income. Netflix explained that this information is highly relevant to Robocast’s
`request for reasonably royalty damages, including the success of any allegedly practicing products
`(a question Robocast has repeatedly avoided); whether any value is allegedly attributable to the
`alleged invention as opposed to other, unclaimed features; as well as any potential secondary
`considerations of non-obviousness, including any alleged commercial success demonstrated by
`Robocast or long-felt need. See, e.g., Ex. G at 32-33 (9/18/23 D. Ghrist Email) (identifying
`Georgia-Pacific Factor 8); id. at 29-30 (9/28/23 D. Ghrist Email) (identifying Georgia-Pacific
`Factors 8, 10, 13, and 15; and commercial success). Netflix cited supporting law that explains that
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`2 In narrowing the dispute for the Court, Netflix does not waive its challenges to the sufficiency of
`Robocast’s other interrogatory responses.
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`2
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`such information would allow Netflix to assess what portion of Robocast’s realizable profits
`should be credited to the invention as distinguished from non-patented elements. See id. at 30
`(9/28/23 D. Ghrist Email) (citing MiiCs & Partners, Inc. v. Funai Elec. Co., No. 14-804-RGA,
`2017 WL 6268072, at *4 (D. Del. Dec. 7, 2017) (“[A]s the Federal Circuit has recognized, ‘a
`patent owner participating in a hypothetical negotiation would consider the profits on sales it might
`lose as a result of granting a license.’” (quoting Asetek Danmark A/S v. CMI USA Inc., 852 F.3d
`1352, 1362 (Fed. Cir. 2017))); Hitkansut LLC v. United States, 130 Fed. Cl. 353, 393-94 (2017)
`(holding as relevant to the reasonable royalty analysis the state of development of the allegedly
`practicing product and the “risk that possible benefits associated with [the patent] might not be
`achieved”)). For more than two months, the parties exchanged correspondence on this
`interrogatory without being any closer to resolving the dispute. See generally Ex. G.
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`On November 2, 2023, Netflix again provided its basis for the request and made clear that
`parties had reached an impasse (for the second time). Ex. H, 11/2/23 M&C Tr. 48:5-49:17, 54:8-
`56:12, 59:12-25, 61:6-62:6; Ex. G at 11 (10/24/23 D. Ghrist Email). But instead of responding on
`the merits, Robocast claimed that Netflix had agreed to narrow the date range to August 2011
`through August 2013, while later admitting that the parties never had such an agreement. Ex. H,
`11/2/23 M&C Tr. 65:24-25. Robocast then argued that Netflix’s request for revenue information
`outside of that 2011-2013 window was “all new information I will take back to my client.” Id. at
`63:2-7. This is belied by Robocast’s own incorrect allegations from September, accusing Netflix
`of having no date limitation at all. Ex. G at 29-30 (9/28/23 D. Ghrist Email) (clarifying that the
`interrogatory was not unbounded by time, but rather sought information since the alleged date of
`conception). Following the November 2 call, Robocast supplemented its response and produced
`Robocast, Inc.’s tax returns for the years 2011-2013, which simply show Robocast’s assets and
`any alleged income—not the requested “expenses and sources of income.” Ex. I at 2 (citing
`ROBOCAST027201, ROBOCAST027187, ROBOCAST027173). Netflix promptly explained
`why this issue was still ripe. Ex. G at 5 (11/6/23 D. Ghrist Email).
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`Netflix’s request is simple. As the plaintiff, Robocast should provide a proper response
`with its P&Ls or other accounting information. Robocast has never legitimately disputed its
`relevance, but has obstructed discovery into the information, or failed to conduct a reasonable
`search to locate it. Tellingly, during the parties’ November 14 call, the parties discussed Netflix’s
`RFP 52, which likewise seeks Robocast’s revenue information. Ex. C at 3; Ex. F, 11/14/23 M&C
`Tr. 29:22-33:23. Notwithstanding the fact that RFP 52 seeks some of the same revenue
`information sought in Interrogatory No. 15—served eight months ago—counsel had no idea
`whether Robocast has responsive documents just three days before the November 17 substantial
`completion deadline. Ex. F, 11/14/23 M&C Tr. 34:1-37:3. Robocast’s obstruction is exacerbated
`by its previous denial of Netflix’s Request for Admission No. 7, asking Robocast to admit that it
`“did not generate any revenue from any Robocast product or service after January 2002.” Ex. C
`at 2. Robocast’s blanket denial suggests that it did indeed generate revenues after January 2002,
`which likewise supports that Robocast should supplement its response to Interrogatory No. 15.
`See Natera, Inc. v. ArcherDX, Inc., No. 20-125-LPS, 2021 WL 4284580, at *3 (D. Del. Sept. 21,
`2021) (compelling plaintiff to explain its denial of RFAs, and permitting defendants to renew its
`request for plaintiff to supplement its response to a related interrogatory if still incomplete).
`Accordingly, Netflix requests the Court order Robocast to provide a response in full, by providing
`its “expenses and sources of income” from the alleged date of conception of the alleged inventions
`through the close of the damages period, along with persons with knowledge.
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`3
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`Case 1:22-cv-00305-RGA-JLH Document 131 Filed 11/17/23 Page 5 of 5 PageID #: 5009
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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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`4
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