Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 1 of 10 PageID #: 19006
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`BillJCo, LLC,
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`v.
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`Cisco Systems, Inc.,
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`Plaintiff,
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`Defendant.
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`Case No. 2:21-cv-181
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`BillJCo, LLC,
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`Plaintiff,
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`v.
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`Hewlett Packard Enterprise Company, Aruba
`Networks, LLC
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`Defendants.
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`Case No. 2:21-cv-00183
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`BILLJCO’S MOTION TO COMPEL
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`39807898.3 03/23/2022
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`Exhibit 2010
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`BillJCo, LLC,
`
`v.
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`Cisco Systems, Inc.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 2:21-cv-181
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`BillJCo, LLC,
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`Plaintiff,
`
`v.
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`Hewlett Packard Enterprise Company, Aruba
`Networks, LLC
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`Defendants.
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`Case No. 2:21-cv-00183
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`BILLJCO’S MOTION TO COMPEL
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`39807898.3 03/23/2022
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`Exhibit 2010
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 2 of 10 PageID #: 19007
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`Plaintiff BillJCo, LLC (“BillJCo”) moves the Court for an Order compelling Defendants
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`Hewlett Packard Enterprise Company (“HPE”) and Aruba Networks, LLC (“Aruba,” and
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`collectively the “HP Defendants”) to amend and supplement their discovery. Specifically, BillJCo
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`asks the Court to an order compelling the HP Defendants to:
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`These documents are clearly relevant to BillJCo’s damages and should have been disclosed
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`two months ago by the date for substantial completion of document production (January 21, 2022).
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`But the HP Defendants did not produce any ESI prior to that date and instead dumped over 3,700
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`emails and documents from
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` approximately 36 hours before his scheduled
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`30(b)(6) deposition on March 16, 2022, just five days before the discovery deadline. BillJCo was
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`significantly prejudiced by this late disclosure since
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` was supposed to testify regarding
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`Included in the HP Defendants’ last second production were several documents
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 3 of 10 PageID #: 19008
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`I.
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`BACKGROUND
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`A.
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`The Court’s Discovery Order and the HP Defendants’ Incomplete Discovery
`Disclosures
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`Per the Court’s October 25, 2021 Discovery Order, the parties were ordered to produce all
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`documents in their possession “relevant to the pleaded claims or defenses in this action” “[w]ithout
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`awaiting a discovery request,” and the date for substantial completion of production was set as
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`January 21, 2022. (Dkt. 46.)
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`In a letter to HP Defendants’ lead counsel dated October 21, 2021, counsel for BillJCo
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`specifically requested
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` BillJCo reiterated these requests in a letter dated February 18, 2022, and specifically
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`requested documents related to
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`1.
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`The HP Defendants’ answer to Interrogatory No. 1 is incomplete.
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`On January 6, 2022, BillJCo served its first set of interrogatories to the HP Defendants,
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`which included the following:
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`The HP Defendants’ answer to interrogatory No. 1
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`39807898.3 03/23/2022
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`. He testified:
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 4 of 10 PageID #: 19009
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`(Ex. A (Excerpt,
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`.)
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`In addition, at 7:18 p.m. Central time on March 16, approximately 36 hours before
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` deposition, the HP Defendants produced 3,729 emails from
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` files,
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`principally emails and attachments.
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`Further, Aruba’s website indicates that not only do the 300, 500, and 600 series implement
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`iBeacon, but so do several other product lines, including the 360 series, 370EX series, 370 series,
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`387 series, 560EX series, 560 series, 518 series, and 570 series. (See Aruba “Outdoor and
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`ruggedized
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`access
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`points”,
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`https://www.arubanetworks.com/products/wireless/access-
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`points/outdoor-ruggedized-access-points/#wpcf-wi-fi-standard=7 (list of products with Wi-Fi 6
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`(802.11ax) Wireless
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`Standard)
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`(last
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`visited Mar.
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`21,
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`2022);
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`id.,
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`https://www.arubanetworks.com/products/wireless/access-points/outdoor-ruggedized-access-
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`points/#wpcf-wi-fi-standard=1) (list of products with BLE Wireless Standard) (last visited Mar.
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`21, 2022)).
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 5 of 10 PageID #: 19010
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`2.
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`The HP Defendants failed to produce financial information with
`regard to the Undisclosed Products and the Meridian Products.
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`In addition to failing to adequately respond to interrogatory No. 1, the HP Defendants also
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`failed to produce any of the requested sales, revenue, or profit information related to the
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`Undisclosed Products.
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`The HP Defendants also failed to produce financial information relating to its Meridian
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`subscription service, a key product that allows customers to configure the infringing products.
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`3.
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`The HP Defendants failed to produce any sales forecasts whatsoever.
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`The HP Defendants have nevertheless failed to produce any documents or information related to
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`their forecasted sales of the Accused Products, the Undisclosed Products, and the Meridian
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`Products notwithstanding the relevance of that information and BillJCo’s repeated requests.
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`II.
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`ARGUMENT
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`The Discovery Order requires parties, “[to] produce or permit the inspection of all
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`documents, electronically stored information, and tangible things in the possession, custody, or
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`control of the party that are relevant to the pleaded claims or defenses involved in this action…”
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`(Dkt. 24 at 3.) This Court “adheres to a policy of liberal discovery.” ICON Health & Fitness, Inc.
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 6 of 10 PageID #: 19011
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`v. Horizon Fitness, Inc., No. 5:08CV26, 2009 WL 10677745, at *2 (E.D. Tex. Mar. 16, 2009)
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`(citation omitted). Under FRCP 37(a)(1), parties “may move for an order compelling discovery
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`disclosure or discovery.” Fed. R. Civ. P. 37(a)(1).
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`A.
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`The Court should order the HP Defendants to amend its answer to
`Interrogatory No. 1 to disclose all products that implement iBeacon.
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`The HP Defendants have failed to fully respond to interrogatory No. 1
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`clearly relevant,
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` This information is
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`Worse, the HP Defendants withheld highly relevant documents that expose their incomplete
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`answer for months, and then inserted them into a 3,700 document production on the eve of the
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` deposition just three days before the close of discovery. This is a textbook case of
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`hiding the ball and is highly improper. The Court should order that the HP Defendants amend their
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`interrogatory answer immediately.
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`B.
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`The Court should order the HP Defendants to produce documents sufficient
`to show past sales for the Undisclosed Products.
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`The HP Defendants should also be ordered to produce documents sufficient to show its
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`. As explained above,
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`, and the requested information is therefore relevant to
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`. As such, this information should be produced immediately. See Quintel Tech.
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`Ltd. v. Huawei Techs. USA, Inc., 4:15-CV-307-AM-CMC, 2017 WL 3712346, at *2 (E.D. Tex.
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`June 29, 2017).
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`C.
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`The Court should order the HP Defendants to produce documents sufficient
`to show past sales for the Meridian Products.
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 7 of 10 PageID #: 19012
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`Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970).
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`The Meridian products allow Aruba’s customers to monitor the infringing Aruba beacon and
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`access point products.
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`Factor 6 is “[t]he effect of selling the patented specialty in promoting sales of other
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`products of the licensee; that existing value of the invention to the licensor as a generator of sales
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`of his non-patented items; and the extent of such derivative … sales.” Id. Since Georgia-Pacific,
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`courts have often found that derivative or collateral sales are relevant to the reasonable royalty
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`analysis. For example, in Trans–World Mfg. Corp. v. Al Nyman & Sons, Inc., the Federal Circuit
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`relied on Georgia-Pacific factor 6 to hold that the district court had erred in excluding “evidence
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`of [defendant’s] profits from the sale of [nonpatented] eyeglasses as not relevant to the
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`determination of a reasonable royalty.” 750 F.2d 1552, 1568 (Fed. Cir. 1984). The court found that
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`“the extent of the profits from such sales could be relevant in determining the amount of a
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`reasonable royalty” because “[i]f, for example, sales were increased because of the infringing use
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`of the displays, that fact could affect the amount of royalties a potential licensee would be willing
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`to pay.” Id.; see also i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 853–54 (Fed. Cir. 2010)
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`(upholding damages report where expert, in consideration of Georgia-Pacific factor 6, “concluded
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`that the infringing custom XML editor was critical to Microsoft’s sales generally, as evidenced by
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`internal Microsoft statements that a custom XML editor was ‘one of the most important ways’ for
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`encouraging users to purchase new Word products.”); Micro Chemical, Inc. v. Lextron, Inc., 317
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`F.3d 1387, 1393 (Fed. Cir. 2003) (allowing expert to rely on derivative sales).
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 8 of 10 PageID #: 19013
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` Accordingly, this information is relevant to BillJCo’s reasonable
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`royalty analysis pursuant to Georgia-Pacific factor 6 and should be produced.
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`D.
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`The Court should order the HP Defendants to produce all of its sales
`forecasts all Accused Products, Undisclosed Products, and Meridian
`Products.
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`The Court should also order the HP Defendants to produce
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`For the reasons set forth above,
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`. Further, BillJCo’s patents
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`are valid for another
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`, and so
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`. See
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`Weatherfor Tech. Holdings, LLC v. Tesco Corp., No. 2:17-cv-00456-JRG, 2018 WL 4620634, at
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`*2 (E.D. Tex. Apr. 27, 2018). The Court should order that these documents be produced
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`immediately. See id.
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`F.
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`The Court should order the HP Defendants to re-produce their 30(b)(6)
`witnesses.
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`BillJCo has been prejudiced because it was deprived of all the information missing
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`described above during the depositions of the HP Defendants’ 30(b)(6) witnesses. In addition, as
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`noted above, the HP Defendants dumped 3,700 documents on BillJCo at the close of discovery. It
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`was impossible for BillJCo to review that production prior to the 30(b)(6) depositions. For these
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`reasons, the Court should order the HP Defendants to re-produce their witness so that BillJCo can
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`depose them after reviewing that production and with information relating to the Undisclosed
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`Products and Meridian.
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`Dated: March 21, 2021
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` Respectfully submitted,
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`/s/ Brian Michalek
`Brian R. Michalek (pro hac vice granted)
`Casey Grabenstein (pro hac vice granted)
`Brian Landry (pro hac vice granted)
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 9 of 10 PageID #: 19014
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`Erin Westbrook (pro hac vice granted)
`brian.michalek@saul.com
`casey.grabenstein@saul.com
`brian.landry@saul.com
`erin.westbrook@saul.com
`Saul Ewing Arnstein & Lehr LLP
`161 N. Clark St., Suite 4200
`Chicago, IL 60601
`Telephone: 312-876-7100
`Facsimile: 312-876-0288
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`Of Counsel:
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`Claire Abernathy Henry
`Texas State Bar No. 24053063
`E-mail: claire@wsfirm.com
`Andrea L. Fair
`Texas State Bar No. 24078488
`E-mail: andrea@wsfirm.com
`WARD, SMITH & HILL, PLLC
`1507 Bill Owens Parkway
`Longview, Texas 75604
`(903) 757-6400 (telephone)
`(903) 757-2323 (facsimile)
`Attorneys for Plaintiff BillJCo, LLC
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110 Filed 03/23/22 Page 10 of 10 PageID #: 19015
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the foregoing document
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`has been served via e-mail on March 21, 2022 to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system.
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`/s/Brian R. Michalek
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`CERTIFICATE OF CONFERENCE
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`I certify that, pursuant to Local Rule CV-7(i), counsels for Plaintiff BillJCo LLC and the
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`HP Defendants have complied with the meet and confer requirement of the Court.
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`/s/Brian R. Michalek
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`39807898.3 03/23/2022
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`Case 2:21-cv-00181-JRG Document 110-1 Filed 03/23/22 Page 1 of 1 PageID #: 19016
`Case 2:21-cv-00181-JRG Document 110-1 Filed 03/23/22 Page 1of1PagelD#: 19016
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`EXHIBIT WITHHELD PURSUANT TO
`EXHIBIT WITHHELD PURSUANT TO
`PROTECTIVE ORDER
`PROTECTIVE ORDER
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`Case 2:21-cv-00181-JRG Document 110-2 Filed 03/23/22 Page 1 of 1 PageID #: 19017
`Case 2:21-cv-00181-JRG Document 110-2 Filed 03/23/22 Page 1of1PagelD#: 19017
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`EXHIBIT WITHHELD PURSUANT TO
`EXHIBIT WITHHELD PURSUANT TO
`PROTECTIVE ORDER
`PROTECTIVE ORDER
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`Case 2:21-cv-00181-JRG Document 110-3 Filed 03/23/22 Page 1 of 1 PageID #: 19018
`Case 2:21-cv-00181-JRG Document 110-3 Filed 03/23/22 Page 1of1PagelD#: 19018
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`EXHIBIT WITHHELD PURSUANT TO
`EXHIBIT WITHHELD PURSUANT TO
`PROTECTIVE ORDER
`PROTECTIVE ORDER
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`Case 2:21-cv-00181-JRG Document 110-4 Filed 03/23/22 Page 1 of 1 PageID #: 19019
`Case 2:21-cv-00181-JRG Document 110-4 Filed 03/23/22 Page 1of1PagelD#: 19019
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`EXHIBIT WITHHELD PURSUANT TO
`EXHIBIT WITHHELD PURSUANT TO
`PROTECTIVE ORDER
`PROTECTIVE ORDER
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`Plaintiff,
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`v.
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`Defendant.
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`Plaintiff,
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`v.
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`Defendants.
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`BillJCo, LLC,
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`Cisco Systems, Inc.,
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`BillJCo, LLC,
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`Hewlett Packard Enterprise Company, Aruba
`Networks, LLC
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`Case 2:21-cv-00181-JRG Document 110-5 Filed 03/23/22 Page 1 of 2 PageID #: 19020
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:21-cv-181
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`Case No. 2:21-cv-00183
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`[PROPOSED] ORDER
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`Before the Court is Plaintiff BillJCo LLC’s Motion to Compel Discovery.
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`After consideration, the Court finds the Motion should be GRANTED. It is therefore
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`ORDERED that Defendants Hewlett Packard Enterprise Company and Aruba Networks, LLC
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`1. Amend its answer to interrogatory No. 1 to identify all products that implement
`the Apple’s iBeacon Bluetooth low energy specification;
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`2. Produce documents sufficient to show past sales for all products listed in the
`amended answer to interrogatory No. 1;
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`3. Produce documents sufficient to show past sales of its line of Meridian products
`and subscription services; and
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`39813266.2
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`Case 2:21-cv-00181-JRG Document 110-5 Filed 03/23/22 Page 2 of 2 PageID #: 19021
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`4. Produce documents and information related to forecasted sales for all Accused
`Products, Meridian products, and products listed in the amended answer to
`interrogatory No. 1.
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`5. Order the HP Defendants to re-produce Ben Dunsbergen so that BillJCo can
`examine them regarding the foregoing documents and information, as well as the
`3,700 documents dumped on BillJCo at the close of discovery.
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`SIGNED this ___________ day of _______________, 2022
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`39813266.2
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