Case 1:18-cv-01966-SB Document 323 Filed 08/04/22 Page 1 of 9 PageID #: 12109
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`TEXASLDPC INC.,
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`Plaintiff,
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`v.
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`BROADCOM INC., LSI CORPORATION,
`AVAGO TECHNOLOGIES U.S. INC.,
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`Defendants.
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`C.A. No. 18-1966-SB
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`Public Version
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`SPECIAL MASTER RULINGS AND RECOMMENDATIONS
`REGARDING DEFENDANTS’ MOTION FOR
`DISCOVERY CONFERENCE AND RELIEF (D.I. 303)
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`Pending before the Special Master is a discovery dispute raised by Defendants regarding
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`Plaintiff’s responses to certain of Defendants’ interrogatories. Specifically, Defendants ask that I
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`compel Plaintiff to fully respond to Defendants’ Interrogatory Nos. 1 and 21 relating to
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`Plaintiff’s contentions regarding alleged dates of conception, reduction to practice, and diligence
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`for each of the claims asserted in this action, as well as the evidence Plaintiff intends to rely on to
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`support such contention, and facts concerning modifications to the source code deposited with
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`the Copyright Office. (D.I. 303). Defendants responded by Letter Brief on July 12, 2022. I held a
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`hearing regarding the dispute on July 14, 2022.
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`I have reviewed and considered the parties’ letter briefs and attached exhibits, cited case
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`law, and the parties’ arguments made at the hearing.
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`I.
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`LEGAL STANDARD
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`On March 16, 2013, the United States moved from a first-to-invent patent system to a
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`first-to-file patent system. See America Invents Act (“AIA”). Patent applications filed before
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`March 16, 2013 continue to be governed by the first-to-file patent system. In addition, those
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`applications filed before March 16, 2013 can form the basis for filing one or more continuation
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`applications after that date.
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`A patentee “claiming an invention date prior to the application filing date . . . has the
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`burden to establish conception and reduction to practice. [The] conception and reduction to
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`practice dates are relevant to invalidity defenses for purposes of discovery.” Beckman Coulter,
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`Inc. v. Sysmex America, Inc., C.A. No. 18-CV-6563, 2019 WL 1875356, at *1 (N.D. Ill. April
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`26, 2019) (citation omitted). When “[plaintiff’s] theory is that its patent was conceived of and
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`reduced to practice before the patent filing date[, defendant] has a right to know the dates
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`underlying this theory so that it can respond.” Id. at *2.
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`“A response to a contention interrogatory must include the principal or material facts
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`which support an allegation or defense.” IOENGINE, LLC v. PayPal Holdings, Inc., C.A. 18-
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`452-WCB, D.I. 329, at *7 (D. Del. Sep. 30, 2021) (internal quotation marks and citation
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`omitted). A plaintiff “is not required to provide a narrative account of its entire case on diligence,
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`complete with all the evidence of diligence that it intends to elicit at trial . . . .” Id. “But [a
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`plaintiff] must set out the essential facts on which it bases its claim of diligence. . . .” Id.
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`With respect to alleging that patent claims are invalid for failure to meet the written-
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`description requirement, as noted in SFA Systems, LLC v. Amazon.com, Inc., et al., 6:11-cv-052-
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`LED, D.I. 400 (E.D. Tex. April 11, 2013):
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`Defendant bears the burden of proving that the patents-in-suit are invalid for
`failure to meet the written-description requirement. The burden of proving
`invalidity is on the attacker. That burden is constant and never changes. One
`attacking the validity of a patent must present clear and convincing evidence
`establishing the facts which lead to the legal conclusion that the patent is invalid.
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`Id. at *2 (cleaned up).
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`2
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`II.
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`DISCUSSION
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`Interrogatory No. 1 requests:
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`For each Asserted Claim, and on a claim-by-claim basis, provide a detailed
`description of all facts and circumstances concerning the alleged applicable dates
`of conception, intervening diligence, priority of invention, and reduction to
`practice. Such a detailed description should include without limitation:
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`(a) identification of all relevant dates, including the earliest date by which
`TexasLDPC contends that the alleged invention was conceived and the date(s) by
`which TexasLDPC contends the alleged invention was actually and/or
`constructively reduced to practice;
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`(b) identification of any embodiments of the Asserted Claim that have been
`actually or constructively reduced to practice;
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`(c) an identification of where each limitation of the Asserted Claim is found in
`each patent application allegedly constituting a constructive reduction to practice;
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`(d) identification of all persons who were involved in or witnessed the alleged
`conception, actual or constructive reduction to practice, and intervening diligence;
`and
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`(e) identification of all documents and evidence concerning or corroborating the
`earliest contended conception date, date(s) of actual or constructive reduction to
`practice, and all intervening diligence from the time of conception to the time of
`reduction to practice.
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`Interrogatory No. 21 requests:
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`With respect to the source code produced by Zip file from
`TEXASLDPC00240641-49, identify, with respect to each file:
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`(a) The date and location of initial creation, and the person who created the file;
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`(b) The storage location(s) where such file was maintained, and all persons who
`had access to such storage location(s);
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`(c) All persons to whom such file was transmitted, whether by email, FTP,
`CD/DVD, or other means, and who transmitted such file in each instance;
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`(d) The date of last modification, the person who last modified, and the location
`where such modification was made; and
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`(e) Each modification made to the file between the date of creation and last
`modification, and the person responsible for such modification(s); such
`identification should include each line of code and each comment that was
`modified, and the date and location where such modification was made.
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`A.
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`Interrogatory No. 1 (“Rog 1”)
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`Defendants assert that invention is determined on a claim-by-claim basis and to predate
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`prior art references, Plaintiff must show an earlier invention date separately for each claim.
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`Defendants’ Letter Brief at 2. Plaintiff responds that it has provided the best information it has at
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`this time regarding conception and reduction to practice dates. Plaintiff also notes that Rog 1 is
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`overbroad because it requests “a detailed description of all facts and circumstances” concerning
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`the information requested.
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`I reviewed Plaintiff’s Response and First Supplemental Response to Rog 1. Regarding
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`Defendants’ request for an identification of all relevant dates regarding earliest dates of
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`conception and reduction to practice, I find Plaintiff’s response incomplete. Plaintiff has asserted
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`that Defendants infringe 60 claims contained in six patents. For seven of those claims, Plaintiff
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`has not provided a date of conception and a date of reduction to practice of either “by October
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`2006” or “by July 2006.” For the remaining claims, Plaintiff has provided a date of conception of
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`“in late 2005, or at the latest by early 2006” and a date of reduction to practice of “by December
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`2005.”
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`Although I agree with Plaintiff that Rog 1 is overbroad, Plaintiff must provide specific
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`earliest dates of conception and reduction to practice for each Accused Claim. Plaintiff states that
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`it has provided the best information it has at this time. It contends that the inventors are “third-
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`parties” and Plaintiff is respectful of their time. But, Plaintiff represents both inventors with
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`respect to subpoenas served on them by Defendants. If Plaintiff wants to demonstrate dates of
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`conception and reduction to practice earlier that the filing dates, it must do so specifically.
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`Stating that something occurred “by” a certain month implies that the actual date could be
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`sometime earlier. In a similar fashion, stating that something occurred sometime over several
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`months is not acceptable. Beckman, 2019 WL 1875356, at *2. See also In re Papst Licensing
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`GMBH & Co. KG Litig., 252 F.R.D. 7, 17 (D. D.C.) (“Of all the parties to this [action, plaintiff]
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`alone has access to all of the information on conception because it is evidence from the
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`inventor.”).
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`Defendants served Rog 1 on January 14, 2022. It is now the end of July. Plaintiff has had
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`sufficient time to confer with the inventors to discuss the specifics of dates of conception and
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`reduction to practice for each Asserted Claim.
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`Plaintiff’s suggestion that Defendants can depose the inventors to determine these dates is
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`a nonstarter for this issue. Defendants are entitled to know the dates that Plaintiff intends to
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`assert before any inventor deposition. Plaintiff also states that it has provided more information
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`than the plaintiff in IOENGINE. That is true but it is not enough.
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`Similarly, Plaintiff must provide evidentiary support for these dates. It is not required to
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`provide “all” the evidence it will present at trial but it must cite to specific documents for each
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`Asserted Claim. Plaintiff has already identified source code that evidences a reduction to practice
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`(the “embodiments”) for 53 of the Asserted Claims. It must do the same for the remaining
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`Asserted Claims and identify any other documents relevant to each Asserted Claim.
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`Because Plaintiff has identified, in general, individuals who were “involved in or
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`witnessed” the events surrounding conception, diligence, and reduction to practice, I do not
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`require Plaintiff to supplement that contention at this time. See Trovan, Ltd. v. Sokymat SA, Irori,
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`et al., 299 F.3d 1292, 1302 (Fed. Cir. 2002) (“[A]n inventorship analysis, like an infringement or
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`invalidity analysis, begins as a first step with a construction of each asserted claim to determine
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`the subject matter encompassed thereby.”).
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`Finally, Defendants request that I order Plaintiff to provide “an identification of where
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`each limitation of the Asserted Claim is found in each patent application allegedly constituting a
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`constructive reduction to practice.” Issued patent claims are presumed valid. 35 U.S.C.A. § 282.
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`It is Defendants’ burden of proving invalidity, including failure to meet the written-description
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`requirement. Defendants have the patents at issue, their prosecution histories, the provisional
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`patent applications on which the patents rely, and the source code. Defendants “must present
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`clear and convincing evidence establishing the facts which lead to the legal conclusion that the
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`patent is invalid.” SFA Systems, LLC v. Amazon.com, Inc., et al., 6:11-cv-052-LED, D.I. 400, at
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`*2 (E.D. Tex. April 11, 2013).
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`For the above stated reasons, I GRANT IN PART AND DENY IN PART Defendants’
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`request that I order Plaintiff to further supplement is response to Rog 1. This does not preclude
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`Defendants from bringing another motion to order supplementation at a later time if Plaintiff’s
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`supplemented response remains deficient.
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`B.
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`Interrogatory No. 21 (“Rog 21”)
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`Rog 21 requests information regarding source code produced by Plaintiff.
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`Plaintiff has responded:
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`TexasLDPC understands that the copyrighted files, produced at
`TEXASLDPC00240641-49, were created by Dr. Kiran Gunnam prior to being
`deposited with the United States Copyright Office. To the best of TexasLDPC’s
`knowledge, the files produced at TEXASLDPC00240641-49 are the very same
`files that were deposited with the Copyright Office. TexasLDPC is unaware of all
`storage location(s) where such files were maintained, and all persons who had
`access to such storage location(s). TexasLDPC’s discovery and investigation is
`ongoing.
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`Therefore, Plaintiff has provided the name of the person who created each file, that those
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`files were transmitted to the U.S. Copyright Office, and that it is unaware of all storage
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`location(s) for the files or all persons who had access to those location(s).
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`Because Dr. Gunnam, as the creator of the files and one of the inventors of the Asserted
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`Claims, should recall where he was when he created each file, Plaintiff must provide that
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`information. During the July 14, 2022, hearing, Plaintiff’s counsel states, regarding file creation
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`dates, that they found “all the files out of the 5,000 or so that say 2005 or December of 2005.”
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`July 14, 2022, Hearing Transcript at 50. This is also noted in Plaintiff’s Supplemental Response
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`to Rog 1. I order Plaintiff to provide that information to Defendants. It has the information and
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`should not withhold it from Defendants.
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`Plaintiff’s response notes that it is “unaware of all storage location(s) where such files
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`were maintained, and all persons who had access to such storage location(s).” Plaintiff also
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`stated that its “discovery and investigation is ongoing.” Plaintiff must continue that investigation
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`and report its results (whether it does or does not discover further information) to Defendants.
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`Plaintiff must also further investigate the issue of transmission of the files. If the source
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`code files were transferred between the inventors or to others (such as patent attorneys,
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`colleagues, or third parties), I order any such information produced to Defendants.
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`Regarding Defendants’ request that I order Plaintiff to supplement its response to Rog
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`21(d) and (e), I decline for the most part. Defendants have the source code files. It is no more
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`burdensome for Defendants than Plaintiff to review the files. If the requested information exists
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`in the files, Defendants should find that information themselves. See CIF Licensing, LLC v.
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`Agere Sys. Inc., No. 07-170-JJF, 2009 U.S. Dist. LEXIS 5555, 2009 WL 187823, at *2 (D. Del.
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`Jan. 23, 2009).
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`I do, however, order Plaintiff to produce any recollections of the inventors or
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`contemporaneous documents they or others may have created regarding dates and locations of
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`any modifications made to the files. I do NOT order Plaintiff to review the files, line by line to
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`determine the requested information.
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`Finally, Plaintiff notes that because Rog 21 has five-plus requests, it objected to Rog 21
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`as exceeding the agreed 30 interrogatory limit provided in the Scheduling Order. It continued its
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`assertion that no response is required in its July 12, 2022, Letter Brief. But, Plaintiff did respond
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`to Rog 21, although not completely, and therefore has waived its objection to excess
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`interrogatories as to Rog 21. See Barkes v. First Corr. Med., C.A. No. 06-104-JJF-MPT, 2010
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`U.S. Dist. LEXIS 48546, at *8 (D. Del. May 17, 2010).
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`For the above stated reasons, I GRANT IN PART AND DENY IN PART Defendants’
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`request that I order Plaintiff to further supplement is response to Rog 21. This does not preclude
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`Defendants from bringing another motion to order supplementation at a later time if Plaintiff’s
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`supplemented response remains deficient.
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`III. CONCLUSION
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`As detailed above, Defendants’ Motion for Discovery Conference and Relief (D.I. 303) is
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`GRANTED IN PART AND DENIED IN PART.
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`If I have not discussed certain assertions made or case law cited by the parties that does
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`not mean that I did not consider them before making my Rulings and Recommendations.
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`Out of an abundance of caution due to the parties designating their Letter Briefs as
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`Confidential, I will file the Rulings and Recommendations under seal. The parties are ordered to
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`confer regarding any proposed redactions. The proposed redactions and correspondence
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`explaining why the redactions are necessary must be sent to me by 10 a.m. on August 3, 2022.
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`The parties are referred to D.I. 231 regarding procedures for any appeal of the Rulings
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`and Recommendations.
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`Case 1:18-cv-01966-SB Document 323 Filed 08/04/22 Page 9 of 9 PageID #: 12117
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`Such are the Rulings and Recommendations of the Special Master.
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`Dated July 29, 2022
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`Public Version
`August 4, 2022
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`/s/ Helena C. Rychlicki
`Helena C. Rychlicki, Special Master
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