Case 2:21-cv-00040-JRG Document 103 Filed 10/19/21 Page 1 of 7 PageID #: 3229
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`CASE NO. 2:21-cv-00040-JRG
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`
`CASE NO. 2:21-cv-00041-JRG
`(Member Case)
`
`JURY TRIAL DEMANDED
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`Plaintiff
`
`v.
`
`HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC.,
`
`Defendants.
`
`
`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`Plaintiff
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`DEFENDANTS’ MOTION TO COMPEL
`PRODUCTION OF RESPONSIVE DOCUMENTS
`
`
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 103 Filed 10/19/21 Page 2 of 7 PageID #: 3230
`
`
`I.
`
`INTRODUCTION
`
`Defendants hereby move the Court to compel Plaintiff Gesture Technology Partners
`
`(“GTP”) to produce documents pursuant to Rule 26, the Court’s Local Rule CV-26(d), and the
`
`agreed Discovery Order entered by the Court regarding patent licensing efforts, valuations, and
`
`prior licensing agreements related to the Asserted Patents or other “Portfolio Patents,” i.e., patents
`
`within other portfolios owned or controlled by GTP’s principal and the sole named inventor of the
`
`Asserted Patents (Dr. Pryor). These documents may be highly relevant to the damages analysis,
`
`at a minimum, and GTP’s refusal to produce them prejudices Defendants’ ability to prepare their
`
`defense in this case.
`
`II.
`
`FACTUAL BACKGROUND
`
`On April 28, 2021, GTP made an initial production of just over 900 pages of documents.
`
`On August 15, GTP additionally produced over 7,000 pages of documents. On September 1,
`
`Defendants sent GTP a letter identifying categories of relevant documents that Defendants would
`
`expect to be included in GTP’s production pursuant to Rule 26, the Court’s Local Rule CV-26(d),
`
`and the agreed Discovery Order entered by the Court. For example, Defendants identified “all
`
`licenses or other agreements . . . that relate to rights to the Patents-in-Suit, Related Patents, and/or
`
`Portfolio Patents” (Category 13) and “All documents relating in any way to any valuation or
`
`appraisal of the Patents-in-Suit, Related Patents, and/or Portfolio Patents” (Category 17). Exhibit
`
`A at 4. Further, on September 15, Defendants sent one additional request for production of “[a]ll
`
`documents and communications relating to any negotiations . . . and/or agreements relating to the
`
`actual or potential licensing of the Portfolio Patents[.]” (Category 21). Exhibit B at 1.
`
`On October 1, 2021, GTP produced another 23,000 pages of documents. On October 5,
`
`Defendants sent GTP a letter regarding deficiencies in GTP’s document production, specifically
`
`-1-
`
`

`

`Case 2:21-cv-00040-JRG Document 103 Filed 10/19/21 Page 3 of 7 PageID #: 3231
`
`
`as to licensing and valuation documents including documents referenced in GTP’s production but
`
`that had not been produced.
`
`On October 15, 2021, the parties met and conferred. GTP stated that it had performed a
`
`reasonable search as to licensing negotiations regarding the Asserted Patents, but that it objected
`
`to any request regarding licensing of “Portfolio Patents,” i.e., patents within other portfolios owned
`
`or controlled by GTP’s principal and the sole named inventor of the Asserted Patents (Dr. Pryor).
`
`GTP would not state whether a search for such documents had been made. Thus, the parties are
`
`at an impasse.
`
`III. LEGAL STANDARD
`
`As this Court has noted, “[t]he rules of discovery ‘are to be accorded a broad and liberal
`
`treatment to effect their purpose of adequately informing litigants in civil trials.’” Infernal Tech.,
`
`LLC v. Microsoft Corp., No. 2:18-CV-00144-JRG, 2019 WL 5388442, at *1 (E.D. Tex. May 3,
`
`2019) (citing Herbert v. Lando, 441 U.S. 153, 176 (1979)). To that end, “[p]arties may obtain
`
`discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and
`
`proportional to the needs of the case . . . .” Id. (citing Fed. R. Civ. P. 26(b)(1)). “Information
`
`within this scope of discovery need not be admissible in evidence to be discoverable.” Id. “Once
`
`the moving party establishes that the materials requested are within the scope of permissible
`
`discovery, the burden shifts to the party resisting discovery to show why the discovery is irrelevant,
`
`overly broad, or unduly burdensome or oppressive, and thus should not be permitted.” SSL Servs.,
`
`LLC v. Citrix Sys., Inc., No. 2:08-cv-158-TJW, 2010 WL 547478, at *2 (E.D. Tex. Feb. 10, 2010).
`
`IV. ARGUMENT
`
`GTP’s production fails to include relevant documents specifically requested in Defendants’
`
`letters of September 1 and 15, 2021 requesting all licensing, other agreements, or valuations related
`
`to the Asserted Patents, Related Patents, and/or Portfolio Patents. These documents may be highly
`
`-2-
`
`

`

`Case 2:21-cv-00040-JRG Document 103 Filed 10/19/21 Page 4 of 7 PageID #: 3232
`
`
`relevant to the damages analysis, at a minimum, and GTP’s non-production prejudices Defendants
`
`ability to prepare their defense in this case.
`
`As the Federal Circuit instructs, “[l]icense agreements can be pertinent to the calculation
`
`of a reasonable royalty. . . . Our cases appropriately recognize that settlement agreements can be
`
`pertinent to the issue of reasonable royalties.” In re MSTG, Inc., 675 F.3d 1337, 1339, 1348 (Fed.
`
`Cir. 2012). There is no question that such documents are relevant to damages, at a minimum, and
`
`should be produced. See PerdiemCo, LLC v. Industrack LLC, Nos. 2:15-cv-727-JRG-RSP, et al., 2016
`
`WL 6611488, at *4 (E.D. Tex. Nov. 9, 2016) (Payne, M.J.); see also Allegran, Inc. v. Teva Pharm.
`
`USA, Inc., No. 2:15-cv-1455-WCB, 2017 WL 132265, at *1 (E.D. Tex. Jan. 12, 2017) (“Courts have
`
`frequently ordered the production of such agreements . . . .”) (collecting cases).
`
`Here, GTP’s production omits documents that are referenced explicitly in other produced
`
`materials and that are themselves responsive to Defendants’ discovery requests. For example,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`GTP’s production is similarly deficient with respect to at least the following documents
`
`
`
`relating to licensing:
`
`-3-
`
`
`
`
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 103 Filed 10/19/21 Page 5 of 7 PageID #: 3233
`
`
`
`
`
`
`
`
`
`
`
`
`The above are but a few examples of GTP’s failure to abide by its discovery obligations.
`
`Licenses and settlement agreements, and any associated negotiations or offers to license and/or
`
`settle, are particularly relevant because GTP does not practice the Asserted Patents—as Dr. Pryor
`
`confirmed in his recent deposition,
`
`. In such
`
`circumstances, this Court makes clear that licensing and settlement documents must be produced
`
`because “Plaintiff’s business is to litigate and license[,]” not to “openly compete with Defendants
`
`in the marketplace.” Charles E. Hill & Assocs., Inc. v. ABT Elecs., Inc., 854 F. Supp. 2d 427, 430
`
`(E.D. Tex. 2012) (Gilstrap, J.). Similarly, any licensing or settlement documents regarding patents
`
`included in other portfolios owned or controlled by Dr. Pryor, i.e., “Portfolio Patents,” may be
`
`comparable and thus highly relevant to the damages analysis. Defendants request that the Court
`
`compel GTP to produce all documents responsive to the categories identified above.
`
`V.
`
`CONCLUSION
`
`For at least the foregoing reasons, Defendants respectfully request an order compelling
`
`GTP to produce all documents related to licensing, settlement negotiations, and valuation of the
`
`Asserted Patents or other “Portfolio Patents,” i.e., patents within other portfolios that are owned
`
`or controlled by Dr. Pryor.
`
`
`
`
`
`
`-4-
`
`

`

`Case 2:21-cv-00040-JRG Document 103 Filed 10/19/21 Page 6 of 7 PageID #: 3234
`
`
`DATED: October 15, 2021
`
`
`Respectfully submitted,
`
`
`By: /s/ Christopher W. Kennerly
`Christopher W. Kennerly (TX Bar No. 00795077)
`chriskennerly@paulhastings.com
`Radhesh Devendran (pro hac vice)
`radheshdevendran@paulhastings.com
`Boris S. Lubarsky (pro hac vice)
`borislubarsky@paulhastings.com
`David M. Fox (pro hac vice)
`davidfox@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`Allan M. Soobert
`allansoobert@paulhastings.com
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`Telephone: 202-551-1700
`Facsimile: 202-551-1705
`
`Elizabeth L. Brann
`elizabethbrann@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`Robert Laurenzi
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Melissa R. Smith (TX Bar No. 24001351)
`GILLAM & SMITH, LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`-5-
`
`

`

`Case 2:21-cv-00040-JRG Document 103 Filed 10/19/21 Page 7 of 7 PageID #: 3235
`
`
`melissa@gillamsmithlaw.com
`
`Attorneys for Defendants Samsung Electronics
`Co., Ltd and Samsung Electronics America, Inc.
`
`CERTIFICATE OF CONFERENCE
`
`Pursuant to Local Rules CV-7(h) and (i), counsel for the Defendants met and conferred
`
`
`
`
`
`
`with counsel for the Plaintiff on October 15, 2021 in a good faith attempt to resolve the matters
`
`raised by this motion. No agreement could be reached. Plaintiff indicated it opposes the relief
`
`requested by this motion. Thus, these discussions have conclusively ended in an impasse and
`
`leave an open issue for the Court to resolve.
`
` /s/ Christopher W. Kennerly
`Christopher W. Kennerly
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document was filed
`
`
`
`
`
`
`electronically in compliance with Local Rule CV-5 on October 15, 2021. As of this date, all
`
`counsel of record had consented to electronic service and are being served with a copy of this
`
`document through the Court’s CM/ECF system under Local Rule CV-5(a)(3)(A) and by email.
`
` /s/ Christopher W. Kennerly
`Christopher W. Kennerly
`
`
`
`CERTIFICATE OF AUTHORIZATION TO SEAL
`
`I hereby certify that under Local Rule CV-5(a)(7), the foregoing document is filed under
`
`
`
`
`
`
`seal pursuant to the Court’s Protective Order entered in this matter.
`
`
`
`
` /s/ Christopher W. Kennerly
`Christopher W. Kennerly
`
`
`
`-6-
`
`