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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`JAWBONE INNOVATIONS, LLC,
`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO. LTD.
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Defendants.
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`ORDER
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`Case No. 2:21-cv-00186-JRG-RSP
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`Before the Court are three motions related to discovery disputes:
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`• Motion to Compel Defendants Samsung Electronics Co., Ltd. and Samsung Electronics
`America, Inc. to Provide Technical Discovery filed by Plaintiff Jawbone Innovations,
`LLC, Dkt. No. 102;
`• Motion To Compel filed by Defendants Samsung Electronics Co. Ltd. and Samsung
`America, Inc., Dkt. No. 108; and
`• Motion to Compel Samsung to Provide Discovery filed by Jawbone, Dkt. No. 111.
`On August 24, 2022, the Court held a hearing where it heard arguments on the above motions. For
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`the reasons orally assigned at the hearing, the Court resolves the motions as follows.
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`I. Jawbone’s Motion to Compel Technical Discovery (Dkt. No. 102)
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`In this motion, Jawbone seeks (1) technical specifications concerning the Accused
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`Products, (2) communications between Samsung and its vendors concerning the development of
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`the Accused Products, and (3) a supplemental response to its Interrogatory No. 8.
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`The Court GRANTS IN PART the motion and ORDERS that, as to the first issue,
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`Samsung provide written confirmation to Jawbone that it has completed a diligent search and
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`produced any documents identified by Mr. Soonho Baek during his deposition. As to the second
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`issue, the Court directs Jawbone to provide the communications it received from Samsung’s
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`vendors, specifically Goodix and Forte Media, in which the vendors indicated Samsung possesses
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`Case 2:21-cv-00186-JRG-RSP Document 156 Filed 08/30/22 Page 2 of 3 PageID #: 9534
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`relevant technical documentation. Upon receiving the communications from Jawbone, Samsung is
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`to conduct a search to determine whether it does in fact possess the relevant technical
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`documentation and if so, produce it. Finally, Jawbone did not provide an adequate basis for the
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`Court to compel Samsung to supplement its interrogatory response.
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`II. Samsung’s Motion to Compel (Dkt. No. 108)
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`In its motion to compel, Samsung seeks three items: information related to Jawbone’s
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`ownership and control of the Asserted Patents, Jawbone’s business related to the Asserted Patents,
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`and production of a supplemental privilege log concerning Jawbone’s pre-suit investigation.
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`Taking the second item first, the parties reached an agreement prior to the hearing that
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`resolved this issue, Dkt. No. 127; therefore, this part of the motion is DENIED AS MOOT. For
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`the third item, counsel for Jawbone represented at the hearing that it will not put forth arguments
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`based on any pre-suit investigation, and based on this representation, the Court DENIES AS
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`MOOT this part of the motion.
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`For the first item, Samsung seeks documents to determine whether Jawbone has so called
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`“statutory standing”—i.e. whether Jawbone meets the statutory requirements to be a “patentee”
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`for the purposes 35 U.S.C. § 281 and whether there are co-owners of the Asserted Patents that
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`need to be joined to this suit. To this end, Jawbone seeks documents related to litigation funding
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`and Jawbone’s ability to enforce the Asserted Patents.
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`Samsung’s arguments at the hearing diverged from the briefing. Samsung’s arguments at
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`the hearing focused on redacted terms of a document— which Samsung had received the night
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`before the hearing—which establishes the membership interests in Jawbone as a business entity.
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`Citing these redactions, Samsung argued that they could allow Jawbone’s corporate owners to
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`control the ability of Jawbone to enforce Jawbone’s rights in the Asserted Patents. In response,
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`2
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`Case 2:21-cv-00186-JRG-RSP Document 156 Filed 08/30/22 Page 3 of 3 PageID #: 9535
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`counsel for Jawbone represented that none of the redacted terms controlled Jawbone’s ability to
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`maintain a suit, settle a suit, or maintain the Asserted Patents.
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`The Court finds, not only were Samsung’s arguments not ripe because they were not in the
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`briefing on the motion, but the representations made by Jawbone’s counsel adequately addressed
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`Samsung’s arguments. Furthermore, Samsung’s cited case does not support Samsung’s argument
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`that, on the facts before the Court, it is entitled to discovery concerning Jawbone’s corporate
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`ownership or litigation funding.
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`Turning to the briefing, Samsung argued that it is entitled to discovery on all financial and
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`ownership interests in the Asserted Patents based on the fact that certain corporate managers of
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`Jawbone were affiliated with previous owners of the Asserted Patents or are affiliated with an
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`entity that manages financial interests in intellectual property. This argument is based on mere
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`speculation and is not enough for the Court to compel Jawbone to go beyond what it has already
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`produced. Jawbone has presented sufficient evidence of ownership of all necessary patent rights.
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`Therefore, the Court DENIES this portion of the motion.
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`III.
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`Jawbone’s Motion to Compel (Dkt. No. 111)
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`At the hearing, counsel for Jawbone informed the Court the parties had reached an
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`agreement that resolves this motion. Therefore, the Court DENIES AS MOOT this motion.
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`3
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 30th day of August, 2022.
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