Case 2:21-cv-00186-JRG-RSP Document 156 Filed 08/30/22 Page 1 of 3 PageID #: 9533
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`
`
`JAWBONE INNOVATIONS, LLC,
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO. LTD.
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`ORDER
`
`
`
`
`
`Case No. 2:21-cv-00186-JRG-RSP
`
`
`
`Before the Court are three motions related to discovery disputes:
`
`• 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
`
`the reasons orally assigned at the hearing, the Court resolves the motions as follows.
`
`I. Jawbone’s Motion to Compel Technical Discovery (Dkt. No. 102)
`
`In this motion, Jawbone seeks (1) technical specifications concerning the Accused
`
`Products, (2) communications between Samsung and its vendors concerning the development of
`
`the Accused Products, and (3) a supplemental response to its Interrogatory No. 8.
`
`The Court GRANTS IN PART the motion and ORDERS that, as to the first issue,
`
`Samsung provide written confirmation to Jawbone that it has completed a diligent search and
`
`produced any documents identified by Mr. Soonho Baek during his deposition. As to the second
`
`issue, the Court directs Jawbone to provide the communications it received from Samsung’s
`
`vendors, specifically Goodix and Forte Media, in which the vendors indicated Samsung possesses
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 156 Filed 08/30/22 Page 2 of 3 PageID #: 9534
`
`relevant technical documentation. Upon receiving the communications from Jawbone, Samsung is
`
`to conduct a search to determine whether it does in fact possess the relevant technical
`
`documentation and if so, produce it. Finally, Jawbone did not provide an adequate basis for the
`
`Court to compel Samsung to supplement its interrogatory response.
`
`II. Samsung’s Motion to Compel (Dkt. No. 108)
`
`In its motion to compel, Samsung seeks three items: information related to Jawbone’s
`
`ownership and control of the Asserted Patents, Jawbone’s business related to the Asserted Patents,
`
`and production of a supplemental privilege log concerning Jawbone’s pre-suit investigation.
`
`Taking the second item first, the parties reached an agreement prior to the hearing that
`
`resolved this issue, Dkt. No. 127; therefore, this part of the motion is DENIED AS MOOT. For
`
`the third item, counsel for Jawbone represented at the hearing that it will not put forth arguments
`
`based on any pre-suit investigation, and based on this representation, the Court DENIES AS
`
`MOOT this part of the motion.
`
`For the first item, Samsung seeks documents to determine whether Jawbone has so called
`
`“statutory standing”—i.e. whether Jawbone meets the statutory requirements to be a “patentee”
`
`for the purposes 35 U.S.C. § 281 and whether there are co-owners of the Asserted Patents that
`
`need to be joined to this suit. To this end, Jawbone seeks documents related to litigation funding
`
`and Jawbone’s ability to enforce the Asserted Patents.
`
`Samsung’s arguments at the hearing diverged from the briefing. Samsung’s arguments at
`
`the hearing focused on redacted terms of a document— which Samsung had received the night
`
`before the hearing—which establishes the membership interests in Jawbone as a business entity.
`
`Citing these redactions, Samsung argued that they could allow Jawbone’s corporate owners to
`
`control the ability of Jawbone to enforce Jawbone’s rights in the Asserted Patents. In response,
`
`
`
`2
`
`

`

`Case 2:21-cv-00186-JRG-RSP Document 156 Filed 08/30/22 Page 3 of 3 PageID #: 9535
`
`counsel for Jawbone represented that none of the redacted terms controlled Jawbone’s ability to
`
`maintain a suit, settle a suit, or maintain the Asserted Patents.
`
`The Court finds, not only were Samsung’s arguments not ripe because they were not in the
`
`briefing on the motion, but the representations made by Jawbone’s counsel adequately addressed
`
`Samsung’s arguments. Furthermore, Samsung’s cited case does not support Samsung’s argument
`
`that, on the facts before the Court, it is entitled to discovery concerning Jawbone’s corporate
`
`ownership or litigation funding.
`
`Turning to the briefing, Samsung argued that it is entitled to discovery on all financial and
`
`ownership interests in the Asserted Patents based on the fact that certain corporate managers of
`
`Jawbone were affiliated with previous owners of the Asserted Patents or are affiliated with an
`
`entity that manages financial interests in intellectual property. This argument is based on mere
`
`speculation and is not enough for the Court to compel Jawbone to go beyond what it has already
`
`produced. Jawbone has presented sufficient evidence of ownership of all necessary patent rights.
`
`Therefore, the Court DENIES this portion of the motion.
`
`III.
`
`Jawbone’s Motion to Compel (Dkt. No. 111)
`
`At the hearing, counsel for Jawbone informed the Court the parties had reached an
`
`agreement that resolves this motion. Therefore, the Court DENIES AS MOOT this motion.
`
`
`
`
`
`3
`
`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
`
`SIGNED this 3rd day of January, 2012.
`
`SIGNED this 30th day of August, 2022.
`
`