Motion to Compel Discovery Regarding Plaintiff's Patent Licensing Practices Granted In Part

MOSAID Technologies Inc. v. Micron Technology, Inc. et al (2:06-cv-00302) (6/18/08)
Judge: David Folsom
Holding:  Motion to Compel Response to Discovery Regarding Plaintiff's Licensing Practices GRANTED in part.
Plaintiff MOSAID was a member of an industry standard setting group, which required it to provide licenses to its patents on terms that were reasonable and nondiscriminatory (RAND).  The defendant sought discovery into the terms of the licenses MOSAID obtained, since it asserted that MOSAID did not provide RAND terms, and that its alleged failure to do so supported the defendant's claims for breach of contract and promissory estoppel.
First, on the subject on how much value the patents-in-suit received in the licenses, MOSAID claimed it didn't have anything responsive other than litigation experts' opinions.  Judge Folsom ordered MOSAID to produce anything on the subject that wasn't litigation expert (which wasn't due yet).  Second, defendant sought MOSAID's prior licensing offers.  Judge Folsom granted the motion insofar as it requested prospective information, i.e. what terms would MOSAID grant a license on, as well as on past settlements and negotiations, as they were relevant to the issue of whether MOSAID was abiding with its RAND obligations in its licensing offers to the defendant.