Case 1:22-cv-01257-GBW Document 124 Filed 05/06/24 Page 1 of 12 PageID #: 8123
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ROBOTICVISIONTECH, INC.,
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`ABB INC.,
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`Plaintiff,
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`V.
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`Defendant.
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`C.A. No. 22-1257-GBW
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`MEMORANDUM ORDER
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`Pending before the Court are (1) PlaintiffRoboticVISIONTech, Inc.'s ("RVT") motions to
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`(a) show cause and compel document production (D.I. 60); and (b) strike or, in the alternative,
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`compel supplemental infringement contentions (D.I. 81 ); and (2) Defendant ABB, Inc. ' s motions
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`to (a) compel RVT to identify additional custodians and produce their documents (D.I. 61); (b)
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`limit the number of asserted claims (D.I. 80); and (c) compel supplemental infringement
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`contentions (id.).
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`I.
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`DISCUSSION
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`A.
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`RVT's Motion to Show Cause And Compel Document Production.
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`RVT asks the Court to compel ABB to (1) produce core technical documents and source
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`code for the machine vision products charted in RVT's infringement contentions, (2) list all of
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`ABB's machine vision products and describe those products' functionalities (i.e., RVT's
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`Interrogatory I), (3) supplement ABB 's responses to Interrogatories 2-4, 8, 11 , 12, and 14
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`(commensurate with the scope of the accused products), and (4) respond to RVT's document
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`Case 1:22-cv-01257-GBW Document 124 Filed 05/06/24 Page 2 of 12 PageID #: 8124
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`requests for the machine vision products charted in RVT's contentions. D.I. 60 at 2. For the
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`reasons stated below, the Court denies RVT's motion.
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`RVT previously moved to compel document production on all of ABB's robotic vision
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`products. Id. at 1. The Court granted RVT' s motion to compel after holding a hearing on that
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`motion. Id. During that hearing, the Court explained that "what [RVT] accused ... go[es] to the
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`functionality of the ABB FlexVision product, even if the brand-name of another product is
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`something different than FlexVision." Id. (citing Aug. 16, 2023 Tr. at 28:19-25). Accordingly,
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`the Court gave ABB additional time to determine whether, in light of the Court's order, it had an
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`obligation to produce documents related to any other ABB products. D.I. 64 at 1-2. ABB
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`concluded that it did not. Id. RVT disagrees, and contends that ABB should have disclosed
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`technical documents and source code related to, at least, ABB' s PickMaster, YuMi, Integrated
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`Vision, 3DQI, and FlexLoader products-products that, according to RVT, relate to "machine
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`vision technology." Id. at 2.
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`The Court, however, is not convinced that its Order required ABB to produce the technical
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`documents and source code of those products because the Court's Order was limited to products
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`that incorporate the "functionality of the ABB FlexVisionproduct." Aug. 16, 2023 Tr. at 28:19-
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`25. RVT, in its initial motion to compel document production (D.I. 38), explained its position that
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`ABB incorporated aspects ofRVT's robotic vision technology software, eVF, into ABB 's product,
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`Flex Vision. Before ABB had access to eVF, "ABB did not have 3D robotic vision technology of
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`its own"-i.e., the technology to which the Accused Patents in this case (U.S. Patent Nos.
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`8,095,237, 7,336,814, and 6,816,755) are directed. Id. at 1.
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`As a result, the Court is not convinced that R VT has shown that the products developed by
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`ABB prior to the events that formed the basis for RVT's complaint-namely, ABB 's licensing of
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`2
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`Case 1:22-cv-01257-GBW Document 124 Filed 05/06/24 Page 3 of 12 PageID #: 8125
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`e VF-incorporate the allegedly infringing core functionality of Flex Vision. For example, ABB
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`has sold PickMaster since 1999, but did not license eVF until 2006. D.I. 64 at 2; D.I. 1111-12.
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`RVT argues that PickMaster, among other products, "appear[s] to incorporate or build upon the
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`core Flex Vision functionality" because ABB has described that product "as a vision system[] for
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`robots that enhance robotic motion in factory environments." D.I. 60 at 2 (internal citations
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`omitted). However, the alleged functionality of FlexVision does not extend to every type of
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`robotic vision system. See D.I. 38. Instead, the alleged functionality of Flex Vision is "3D robotic
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`vision software"-. i.e., a specific type of ro1?otic vision software.
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`Accordingly, because RVT has not presented evidence that elements of the accused
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`Flex Vision functionality were incorporated into the products for which RVT seeks discovery(cid:173)
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`such as a shared development team, or a showing that a specific ABB product incorporates features
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`ofFlexVision-the Court is not convinced that RVT has shown that it is entitled to discovery into
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`those products at this time.
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`ABB licensed eVF in 2006. D.I. 1 1 11-1 2. As a result, RVT may be able to show that
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`ABB, after 2006, updated its products with the allegedly infringing aspects of FlexVision.
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`However, based on the current record before the Court, RVT has not made such a showing. See ,
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`e.g., DJ. 60, Ex. 8 ("The [Integrated Vision] system may be used as an alternative to mechanical
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`fixtures to find the location and angle of the part in 2D") ( emphasis added). Thus, the Court denies
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`RVT' s motion to compel the production of additional documents along with its related motion to
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`show cause.
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`RVT also asks the Court to compel ABB to supplement its production of its "core technical
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`document[s]" and external libraries. 1 D.I. 60 at 2-3 . Specifically, RVT contends that ABB has
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`not produced (1) the source-code specifications for FlexVision or any documents that explain the
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`development or authorship of that source code, (2) any technical documents disclosing the
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`functionalities of the various robots and vision systems into which the FlexVision code (or its
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`functionality) are incorporated, and (3) any sales information for those robots and vision systems.
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`Id.
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`ABB·contends that it does not have "source code specifications for FlexVision," and that
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`the Cognex external library is in the possession of Cognex, a third party. D .I. 97. ABB states that
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`it has produced documents responsive to the remainder of RVT' s request for documents, namely:
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`(1) "git mirrors that show the date and person responsible for every change to the FlexVision code
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`to the extent ABB has that information," and (2) "a spreadsheet providing financial information
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`for every Flex Vision sale, along with purchase orders and invoices for each of those sales." Id.
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`RVT has not shown that ABB has the "legal right or ability" to obtain the Cognex libraries
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`from Cognex. See Mercy Catholic Med. Ctr. v. Thompson , 380 F.3d 142, 160 (3d Cir. 2004) ("In
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`the context of Fed. R. Civ. P. 34(a), so long as the party has the legal right or ability to obtain the
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`documents from another source upon demand, that party is deemed to have control.").
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`Accordingly, the Court denies RVT's motion to compel ABB to produce that source code. Also,
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`given ABB' s representations to this Court that it has produced what responsive information it has
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`to the remainder ofRVT's requests, the Court denies the remainder ofRVT's motion.
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`1 Including the Cognex software library, which RVT contends is partially incorporated into
`Flex Vision and is responsible for performing certain machine-vision tasks. D.I. 60, Ex. 2.
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`B.
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`RVT's Motion to Strike or, In The Alternative, Compel Supplemental
`Invalidity Contentions.
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`RVT asks the Court to strike ABB ' s initial invalidity contentions. D .I. 81. That motion is
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`denied. Among other reasons, RVT's motion makes no mention of the Pennypack factors that
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`govern the resolution of its motion and why the Court should strike ABB ' s initial contentions-if
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`the Court finds that those contentions are deficient- instead of granting ABB leave to amend. See
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`id. Considering that "each party shall be permitted to supplement" its initial disclosures, D. Del.
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`Default Standard (the Default Standard), ,r 4, n.3 , the Court is not convinced that RVT has shown
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`that ABB's initial disclosures are so deficient that striking those disclosures is an ·appropriate
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`remedy. See, e.g., First Quality Tissue, LLC v. Irving Consumer Prods. Ltd, C.A. 19-428-RGA,
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`D.I. 149 at 3, 5-6 (D. Del. Oct. 27, 2020) (denying motion to strike contentions that were
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`supplemented after the close of fact discovery as exclusion of those supplementations would be an
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`extreme sanction) (quoting In re Paoli R.R. Yard PCB Litig. , 35 F.3d 717, 791-92 (3d Cir. 1994).
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`In the alternative, RVT asks the Court to compel ABB to identify the prior-art references
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`and combinations on which it intends to rely, and explain how those combinations satisfy the
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`limitations of the asserted claims. D.I. 81 at 3. RVT argues that ABB ' s invalidity contentions are
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`deficient because those contentions (1) list over a hundred alleged prior-art references that do not
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`appear in the claim charts, (2) list ABB's own products as prior-art references without explaining
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`how those products meet the limitations of the asserted claims, (3) note that additional references
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`could be substituted for the references detailed in the charts without explaining why those
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`substitutions could be made, and ( 4) reserve ABB' s right to identify other invalidating
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`combinations "as appropriate." Id. at 1-2. For the reasons stated below, the Court denies RVT' s
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`motion.
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`ABB responds that its initial invalidity contentions are sufficient because those contentions
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`"organize its prior art references into groups and articulate an overarching theory of obviousness
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`that applies to each and every possible combination of prior art within those groups." D.I. 84 at 2-
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`3 (cleaned up) (citing 0912139 B. C. Ltd. v. Rampion USA Inc. , 2019 WL 3082290, at *1-5 (W.D.
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`Wash. July 15, 2019)). Further, ABB explains that- while it takes the position that its own
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`products do not meet the limitations of the asserted claims-it listed those products because RVT
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`contends that those products infringe. Id. Accordingly, if those products infringe, they anticipate
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`the . Asserted Patents becaus~ ABB was selling those _products prior to the pri?rity date of the
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`Asserted Patents. Id.
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`The Court declines to compel ABB to supplement its initial invalidity contentions because
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`the Court finds that RVT' s motion is premature. If ABB does not adequately chart its prior-art
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`references-such that its initial invalidity contentions fail to put RVT on notice of ABB ' s
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`invalidity positions-prior to the deadline for final invalidity contentions, then ABB will be
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`precluded from arguing that those prior-art references are invalidating unless the Court finds that
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`ABB has good cause to amend its final disclosures. See, e.g., British Telecom PLC v.
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`IAC/Interactive Corp. , No. 1:18-cv-00366-WCB, D.I. 210 at 13 (D. Del. June 8, 2020).
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`Accordingly, ifRVT believes that ABB is using a prior-art reference for an impermissible purpose
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`at a later stage of the case, RVT can object to the sufficiency of ABB 's disclosures at that time.
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`Moreover, the Court is confident that RVT's objection to ABB ' s use of "exemplary" or
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`"illustrative" claim charts will be resolved as the case is narrowed.2 Thus, the Court denies RVT' s
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`motion.
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`2 As discussed below, the Court finds that the instant action has proceeded to a stage of the case
`where it is appropriate for the parties to begin to reduce their initial contentions. Accordingly,
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`C.
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`ABB's Motion to Compel RVT To Identify Additional Custodians and
`Produce Additional Documents.
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`ABB asks the Court to compel RVT to identify additional custodians, produce documents
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`from those custodians, and produce documents showing how RVT' s paper documents are kept.
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`D.I. 61. For the reasons stated below, the Court grants-in-part and denies-in-part ABB's motion.
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`1.
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`Additional Custodians
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`In its initial disclosures, RVT identified only one custodian, Rick Weidinger (the founder
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`and CEO ofRVT), "for all e-discovery topics." Id. at 1. After ABB requested that RVT identify
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`more custodians, RVT identified another two custodians-Paul Weidinger, an "independent
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`contractor and former RVT employee responsible for source code," and Tim Weidinger, a "present
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`RVT employee." Id.
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`ABB filed this motion to compel RVT to identify additional custodians because the Default
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`Standard requires RVT to identify ten custodians. Default Standard, ,r 3(a). In response, RVT
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`replied that it cannot identify ten document custodians because, (1) it only has two employees, and
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`(2) "no other individual [including former employees] has possession, custody, or control ofRVT
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`documents." D.I. 63 at 1.
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`The Default Standard is mindful of the concept of proportionality. Default Standard,
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`,r 1 (b ). Accordingly, a party need not identify ten custodians if it cannot identify ten individuals
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`that are likely to have discoverable information in their possession, custody, or control.
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`Id.
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`Instead, if a party cannot identify ten custodians, that party must identify all of the individuals that
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`it believes have some likelihood of having possession, custody, or control over discoverable
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`the Court will order the parties to meet and confer and propose a schedule and procedure for
`narrowing the scope of this action.
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`information-which should include former employees, if those employees are likely to have such
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`information. See Air Prod. & Chemicals, Inc. v. Wiesemann, 2017 WL 758417, at *2 (D. Del.
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`Feb. 27, 2017); Attentive Mobile Inc. v. 31 7 Labs, Inc., C.A. No. 22-1163-CJB, D.I. 112 (D. Del.
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`Apr. 22, 2024).
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`Here, RVT erred in disclosing only three custodians, because RVT only disclosed the
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`individuals that it believes are likely to be in possession, custody, or control of discoverable
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`documents. See D.I. 63 at 1. The Default Standard is not limited to document custodians. Default
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`Standard, ,r 3(a). Instead, the Default Standard requires a party to identify individuals likely to
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`possess discoverable information-which includes, but is not limited to, discoverable documents.
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`Id. Accordingly, the Court grants ABB ' s motion to compel RVT to identify additional custodians
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`because RVT has not represented that no other individuals are likely to be in possession, custody,
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`or control of discoverable information. D.I. 63.
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`2.
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`Additional Documents
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`ABB asks the Court to compel RVT to produce "all documents describing how the
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`documents in RVT' s 'highly organized paper filing system' are organized" so that it can
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`"understand" the documents RVT produced. D.I. 61 at 3.
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`RVT alleges that it does not have a "searchable electronic document management system."
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`Instead, in the ordinary course of business, it "retains its important documents (including emails)
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`in hardcopy in a highly organized paper filing system." D.I. 63 at 2. Accordingly, in response to
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`ABB's request for ESI, RVT produced paper documents along with "the labels of the binders,
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`boxes, or folders containing these documents" in "a comprehensive spreadsheet cataloging where
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`each paper documents was kept" but did not "create a label or folder from scratch" for documents
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`lacking such pre-existing source information. Id.
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`The source information in RVT's "comprehensive spreadsheet" provides little more detail
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`than the location of where RVT apparently found the documents it produced. For example, RVT
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`identifies Document No. RVT_0015824 as one of many "Stickley Wood Table Files."
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`Accordingly, ABB ' s request for additional information regarding RVT's filing system is a
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`reasonable request. 3 However, according to RVT, "no such document exists." D.I. 63 at 2. Thus,
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`the Court grants ABB' s motion to compel production of a document detailing how RVT organizes
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`its paper files to the extent such a document exists. If RVT continues to assert that no such
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`document, or a~ditional responsive info~ation exists, it should so_ certify in writing.
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`D.
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`ABB's Motion to Limit the Number Of Claims And Compel Supplemental
`Infringement Contentions.
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`ABB asks the Court to order RVT to (1) reduce the number of asserted claims, and (2)
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`supplement its infringement contentions. For the reasons stated below, the Court grants ABB ' s
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`motion. D.I. 80.
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`1.
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`Case Narrowing
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`ABB asks the Court to order RVT to limit its number of asserted claims because RVT has
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`asserted 82 claims across three patents. Id. at 1. RVT responds that narrowing the case at this
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`time would be premature because ABB has not produced the documents that are the subject of
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`RVT's motion to compel. D.I. 83 at 1. However, as discussed above, the Court finds that RVT
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`has not shown that it is entitled to discovery into those products at this time. Supra at§ I(A). RVT
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`also objects to the sufficiency of ABB 's supplemental source code production with respect to
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`Flex Vision, but fails to explain how ABB ' s source code production is deficient (with the exception
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`3 RVT's "comprehensive spreadsheet" also fails to explain the difference between the "Stickley
`Wood Table Files" and the "AI Agreements & Misc info on [the] Stickley end table."
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`of the Cognex libraries, which, as discussed above, RVT has not shown ABB has a duty to
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`produce). Id.
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`The Court finds that narrowing the case at this time is appropriate. Fact discovery will
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`close approximately two months from the Court' s entry of this Order, see D.I. 48, and the Court
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`conducted a Markman hearing on May 1, 2024. Accordingly, the Court hereby orders the parties
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`to meet and confer and, by no later than May 20, 2024, to propose a joint schedule and procedure
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`for narrowing RVT' s asserted claims and ABB' s prior-art references.
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`2.
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`Infringement Contentions
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`ABB asks the Court to compel RVT to supplement its initial infringement contentions
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`because RVT's contentions state that "discovery, including source code, will show" how ABB ' s
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`products infringe, without further explanation of how or why ABB's products infringe. D.I. 80 at
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`2-3 . RVT responds that it has not been able to supplement its contentions because, as of the date
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`that RVT filed its letter in response to ABB' s motion, (1) RVT had been in possession of ABB ' s
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`newly-supplemented source code for only one week, and (2) ABB had not disclosed the
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`information that is the subject ofRVT's motion to compel. D.I. 83 at 2-3.
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`The Court hereby orders RVT to supplement its infringement contentions. As of the entry
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`of this Order, RVT will have been in possession of ABB's supplemental source code for
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`approximately three months. See D.I. 83 at 2. Courts in this District have required plaintiffs to
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`supplement their infringement contentions with source code citations, if available. Kajeet, Inc. v.
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`McAfee Corp., 1:21-cv-00005 (D. Del. Nov. 22, 2021 ) (ordering a plaintiff to amend its initial
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`infringement contentions when source code was available); see also Am. Video Graphics, L.P. v.
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`Elec. Arts, Inc., 359 F. Supp. 2d 558, 561 (E.D. Tex. 2005) (requiring supplementation of initial
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`claim charts with specific references to source code within thirty days of obtaining access to source
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`code). Accordingly, the Court orders RVT to supplement its infringement contentions with
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`citations to the source code. The Court finds that ABB ' s lack of production of documents related
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`to its PickMaster, YuMi, Integrated Vision, 3DQI, and FlexLoader products is not a bar to RVT
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`supplementing its disclosures because, as discussed above, RVT has not shown that it is entitled
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`to discovery regarding those products at this time. Supra at § I(A).
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`II.
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`CONCLUSION
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`For the foregoing reasons, this 6th day of May, 2024, IT IS HEREBY ORDERED that:
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`1.
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`RVT's Motion to Show Cause And Compel Document Production is DENIED.
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`D.I. 60.
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`2.
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`RVT's Motion to Strike or, in the Alternative Compel Supplemental Production is
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`DENIED. D.I. 81.
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`3.
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`ABB ' s Motion to Compel RVT to Identify Additional Custodians and Produce
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`Additional Documents is GRANTED. D.I. 61.
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`4.
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`ABB's Motion to Limit the Number of Claims and Compel Supplemental
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`Infringement Contentions is GRANTED. D.I. 80. RVT shall supplement its
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`infringement contentions to include source code citations by no later than 5 :00 PM
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`on June 7, 2024.
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`5.
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`The parties shall meet and confer and, by no later than 5:00 PM on May 20, 2024,
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`file a joint letter of no more than four (4) pages with the Court providing an agreed(cid:173)
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`upon schedule and procedure for limiting RVT's number of asserted claims and
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`ABB' s number of invalidity contentions, including the number of prior-art
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`references and obviousness combinations. If the parties cannot reach an agreement
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`regarding that schedule and procedure, then the parties' joint letter shall identify
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`and support each parties' respective proposed schedule and procedure for
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`narrowing the number of asserted claims and invalidity contentions in this action.
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`Date: May 6, 2024
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`G GORYB. WILLIAMS
`U.S. PISTRICT JUDGE
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`12
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