Case 5:16-cv-06925-LHK Document 159 Filed 12/01/17 Page 1 of 6
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`TWILIO, INC.,
`Plaintiff,
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`v.
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`TELESIGN CORPORATION,
`Defendant.
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`Case No.16-cv-06925-LHK (SVK)
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`ORDER REGARDING DISCOVERY
`DISPUTES OF NOVEMBER 3, 2017
`AND NOVEMBER 16, 2017
`Re: Dkt. Nos. 145, 149
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`Before the Court are two discovery disputes relating to interrogatories and requests for
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`production (“RFP”). ECF 145, 149. The Court is familiar with the parties and posture of this
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`case, having ruled on several issues. See ECF 89, 109, 113, 135, 152. By way of relevant
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`background for the matters at hand, the parties submitted their interrogatory dispute on November
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`3, 2017, wherein TeleSign seeks to compel further responses from Twilio. ECF 145. On
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`November 14, 2017, the Court held a hearing on a previously filed dispute regarding Twilio’s
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`damages contentions. At that hearing, the parties asked the Court to defer ruling on the
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`interrogatory dispute until they could submit yet another dispute arising out of Twilio’s document
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`responses and production. On November 16, 2017, the parties submitted their RFP dispute,
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`wherein TeleSign complains of inadequate responses and productions by Twilio. ECF 149. On
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`November 17, 2017, the Court issued an order on TeleSign’s motion to compel amended damages
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`contentions from Twilio. ECF 152. Having reviewed the joint letters submitted by the parties, the
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`Court orders as follows.
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`I. November 3, 2017 Interrogatory Dispute
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`Some of the issues raised in the interrogatory dispute were addressed by this Court’s order
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`on damages contentions. To the extent there are still outstanding issues, the Court addresses them
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`below.
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`Case 5:16-cv-06925-LHK Document 159 Filed 12/01/17 Page 2 of 6
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`Interrogatory No. 1: In large part, the need to compel Twilio to respond to this
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`interrogatory is mooted by the Court’s November 17, 2017 order on damages contentions. ECF
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`152. However, the issue as to “irreparable harm” remains. Twilio’s verb-tense objection is not
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`well taken, and Twilio must respond and identify, with all the particularity that is currently
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`available to it, the irreparable harm that it has suffered or anticipates it will suffer. Twilio’s
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`response is subject to Rule 26(e)(1)(A) and may be amended as necessary.
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`Interrogatory No. 9: While Twilio’s definition of a “third party affiliate” seems evident
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`from its position in the submission to the Court, Twilio is ordered to respond to the following
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`question: In response to Interrogatory No. 9, is Twilio excluding from its response only
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`companies related to Twilio? If yes, then no further action is required. If no, such that Twilio is
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`excluding from its definition of “third party” parties not related to Twilio, then Twilio needs to
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`respond to the interrogatory as to those parties.
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`Interrogatory No. 10: The Court addressed this dispute in its November 17, 2017 order
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`on damages contentions. ECF 152 at 8.
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`Interrogatory No. 11: This interrogatory asks Twilio to provide “on a limitation-by-
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`limitation basis, where and how each alleged claim is valid in view of the Prior Art identified in
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`TeleSign’s Invalidity Contentions” and the reasons therefore. TeleSign cites to other jurisdictions
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`that require such a disclosure under their local rules. However, there is no such requirement in
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`this District. This information is better provided in an expert report, and as such Twilio is not
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`required to respond at this time.
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`Interrogatory No. 12: This interrogatory asks Twilio to identify Prior Art relating to the
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`Asserted Patents, excluding the Prior Art cited on the face of the Asserted Patents. Twilio has
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`qualified its response as to “relevant or non-cumulative Prior Art.” The term “prior art” as used in
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`35 U.S.C. § 102(a) requires that the prior publication, public use, etc., relate to the claimed
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`invention. Therefore Twilio’s response, which is narrowed to “relevant” prior art, is not the
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`unilateral limitation on production that TeleSign suggests. Twilio’s response is sufficient.
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`Interrogatory No. 13: Pursuant to Patent L.R. 3–1(f), if a plaintiff wishes to assert that its
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`own product practices the claimed invention, it must identify the products which practice each
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`Northern District of California
`United States District Court
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`Case 5:16-cv-06925-LHK Document 159 Filed 12/01/17 Page 3 of 6
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`claim. However, a detailed claim chart is not required. See Nazomi Commc'ns, Inc. v. Arm
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`Holdings PLC, No. C 02-02521-JF(RS), 2003 WL 24054504, at *2–3 (N.D. Cal. Sept. 3, 2003).
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`Therefore, the Court orders Twilio to identify its products that it contends embody the asserted
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`claims and to identify which claims are embodied in which products.
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`II. November 16, 2016 RFP Dispute
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`a. “Relevant” Documents
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`There is an expectation in discovery that requests and responses are both made in good
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`faith. In operation, this expectation prevents disputes from drifting into an argument over
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`semantics. Here, the parties appear to be adrift.
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`The first overarching complaint raised by TeleSign as to 50 RFPs is that Twilio responds
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`that it is producing “relevant” documents, without having asserted relevance objections. In the
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`submission to the Court, Twilio states unequivocally that it is not withholding responsive
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`documents. To the extent Twilio’s written responses do not provide such a clear statement, Twilio
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`is to supplement its written responses to state, as unequivocally as it does in the submission to the
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`Court, that it is not withholding responsive documents, and if it is, to identify those documents.
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`See Fed. R. Civ. P. 34(b)(2)(C).
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`Beyond this clarification to be provided by Twilio, the Court finds that Twilio’s response
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`that it is producing “relevant” documents, particularly in response to the RFPs cited by TeleSign,
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`to be appropriate because the RFPs cited by TeleSign require some type of limitation in responses
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`and production, as seen in the examples below.
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` Several of Telsign’s requests seek documents “relating to” a specific topic. Here,
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`“relating to” and “relevant” are substantially the same. Twilio has limited its
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`responses to documents that are “relevant” and stated that it is not withholding any
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`documents. As such, Twilio has produced documents relating to each topic.
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`Although technically “relevant” could be a subset of “relating to,” it is not
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`necessarily so. Further, a statement that a party is producing “relevant” documents
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`and not withholding any documents, particularly in response to a request seeking
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`documents “relating to” a particular subject, is sufficient. Again, the parties have
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`Case 5:16-cv-06925-LHK Document 159 Filed 12/01/17 Page 4 of 6
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`drifted into an unnecessary dispute over semantics. See, e.g., RFP Nos. 2, 5-7, 9-
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`13.
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` Some requests are limited to documents “sufficient to show” a specific event. For
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`example, RFP No. 44 seeks production of “[d]ocuments sufficient to show the
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`technical operation of any Twilio Products that Practice the Claimed Inventions.”
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`ECF 149-1 at 33. The request does not seek “all documents” that show the
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`technical operation of products but rather, properly, is limited to documents
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`“sufficient to show” the technical operation. As a result of the structure of the
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`request, a response and production limited to relevant documents is not only
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`appropriate but appears to be what TeleSign has asked for.
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` Other requests suffer from a failure to set forth adequate parameters on the
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`documents TeleSign seeks. For example, RFP No. 3 requests “[c]ommunications
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`with licensees, potential licensees or potential infringers of the Asserted Patents,
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`including agreements and settlement negotiations.” ECF 149-1 at 6. Certainly
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`TeleSign does not seek all communications with potential licensees, down to
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`minute emails exchanged regarding logistics of meetings, for example. By limiting
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`its response to only those documents that are relevant, Twilio is placing a good
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`faith limitation on the documents to be produced. As such, the Court finds Twilio’s
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`responses sufficient.
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`b. Individual RFP disputes
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`In addition to the general complaint discussed above, TeleSign attempts to identify discrete
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`disputes as to specific RFPs. However, with regards to RFPs 4, 24, 32 and 36, the parties are
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`again adrift, suggesting requests are duplicative, setting forth compromises, then abandoning those
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`comprises in favor of further disagreement. The Court will not revisit the parties’ paths to impasse
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`herein, and instructs the parties to proceed as follows:
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`RFP No. 4: This RFP is not duplicative to the extent that it requests internal documents
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`relating to negotiations regarding the Asserted Patents. Twilio is to produce internal documents
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`relating to negotiations regarding the Asserted Patents.
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`Case 5:16-cv-06925-LHK Document 159 Filed 12/01/17 Page 5 of 6
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`RFP No. 24: This RFP contains two, separate requests. The first seeks documents
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`relating to licenses or cross-licenses relating to the Asserted Patents. The second requests
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`documents relating to licenses or cross-licenses relating to the Twilio Products that Practice the
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`Claimed Inventions. First, as to Asserted Patents, in the submission to the Court, Twilio states
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`unequivocally that it “has not raised potential infringement or licensing of the Asserted Patents
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`with any third-party other than TeleSign.” ECF 146 at 3. Thus, after Twilio responds to RFP No.
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`4 as modified above, no further response or production will be necessary as to the request relating
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`to licenses or cross-licenses relating to the Asserted Patents.
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`As to the licenses or cross-licenses that relate to the Twilio Products that Practice the
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`Claimed Inventions, the Court finds that these documents have not been covered by other requests.
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`Twilio is ordered to produce the following three categories of documents: 1) Licenses or cross-
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`licenses that relate to the Twilio Products that Practice the Claimed Inventions;
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`2) Communications with third parties regarding those licenses or cross-licenses; and 3) Internal
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`documents relating to those licenses or cross-licenses.
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`RFP No. 32: This request seeks agreements with third parties relating to the Asserted
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`Patents. Although Twilio states it is not in possession of any additional agreements with third
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`parties relating to the Asserted Patents, the Court orders Twilio to confirm that it has produced
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`agreements with third parties relating to the invention, reduction to practice, and/or prosecution of
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`the Asserted Patents or state that such agreements do not exist.
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`RFP No. 36: Twilio states that it is not aware of having “raised or evaluated potential
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`infringement of the Asserted Patents by any third-party other than TeleSign.” The Court is again
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`puzzled and concerned by statements in the submission that do not appear to have been
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`communicated during the course of meet and confer. Accordingly, for the sake of completeness,
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`the Court orders Twilio to produce any non-privileged documents that identify other products or
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`services, including those of TeleSign, that infringe the Asserted Patents, or confirm that all such
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`documents have been produced.
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`RFP No. 38: This dispute presents a semantics game involving the term “manuals.” The
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`language of the RFP does not refer to “support manuals” specifically, although it uses the word
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`Case 5:16-cv-06925-LHK Document 159 Filed 12/01/17 Page 6 of 6
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`“supporting” to describe the documents requested. In the submission to the Court, TeleSign
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`clarifies that it is requesting support manuals. Twilio responds that it has produced documents
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`responsive to the request, including “manuals regarding Twilio’s products.” The Court orders
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`Twilio to produce technical support manuals or confirm that such manuals have already been
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`produced.
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`Twilio is ordered to supplement its responses to interrogatories and RFPs, including further
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`production of documents, as described above by December 18, 2017.
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`CONCLUSION
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`SO ORDERED.
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`Dated: December 1, 2017
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`SUSAN VAN KEULEN
`United States Magistrate Judge
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