Epicrealm Licensing, LLC v. Autoflex/Franklin Covey, 2:05cv164/2:05cv356 (August 27, 2007)
Judge: David Folsom
Holding: Motion for Reconsideration of Order Denying Motion to Compel REMANDED for further consideration
This order is not published (it may well be, but isn't yet) but since there will likely be great interest in it, I am posting on it.
This is a patent case in which the Plaintiff sought to compel the Defendants to produce certain information. On April 16, 2007 Judge Craven found, among other things, that Plaintiff’s infringement contentions were insufficient to compel Defendants to produce documents related to a non-accused product. "The present motion for reconsideration centers on whether the scope of discovery should be strictly limited to the products and services specifically identified in the patent holder’s PICs," Judge Folsom wrote, noting that at the hearing on the motion, the parties addressed an order entered in Caritas Technologies, Inc. v. Comcast Corp., in which Magistrate Judge Craven found that “[plaintiff] only ha[d] the right to discover information regarding the alleged infringing service, not the right to discover information on whether it should assert a claim of infringement regarding other services.” Civil Action No. 2:05-cv-339, Dkt. No. 63 at 8 (E.D. Tex. Feb. 10, 2006). "Contrary to Caritas," Judge Folsom concluded "the Court finds no bright line rule that discovery can only be obtained if related to an accused product identified in a party’s PICs." (Emphasis added). The order noted that the Northern District of Texas' new patent rules did not so limit discovery, nor had Judge Ward in a recent opinion in which he stated that "relevant discovery in a patent infringement suit “includes discovery relating to the technical operation of the accused products, as well as the identity of and technical operation of any products reasonably similar to any accused product.” See, e.g., Microunity Sys. Eng’g, Inc. v. Advanced Micro Devices, Inc., 2- 06-cv-486, Dkt. No. 38 at ¶ 3 (E.D. Tex. May 23, 2007). Accordingly:
The Court concludes that the scope of discovery may include products and services (in this case, websites and systems) “reasonably similar” to those accused in the PICs. Id. This finding best comports with the “notice pleading and broad discovery regime created by the Federal Rules” and the “right to develop new information in discovery.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006).
(Emphasis added). But that did not address the issue of whether the Plaintiff should have included the additional accused products in its original PICs, or should have sought leave earlier to amend its PICs to add them. "Delay and diligence remain factors to consider" in deciding whether good cause for leave to amend was shown, Judge Folsom noted. As a result, in light of the fact that the case was continued to a later setting, thus changing the calculus on the good cause factors, he remanded the case to Judge Craven to consider both the motion to compel and the question of whether the non-accused products should be in the case at all.
I know that in the the year and a half since Caritas came out (ed. note - I was the lawyer who argued that the scope of discovery was not limited to the PICs in this case, so I'm obviously glad to see Judge Folsom agreed with the position I was taking) there has been some confusion as to precisely what the scope of discovery into products not accused in the PICs was. I think this opinion will clear that up