Case Cite

Positive Technologies, Inc. v. Sony Electronics, Inc., No. 11-cv-2226, 2013 WL 1209338 (N.D. Cal. March 25, 2013)

IPDQ Commentary

Don’t conflate relevancy for purposes of admissibility with relevancy for purposes for discoverability. While recent Federal Circuit cases, such as Lucent and LaserDynamics, have set a high bar for the trial admissible relevance of comparable licenses, the same isn’t true when it comes to the “reasonably calculated” standard for discovery.

Case Summary

Plaintiff sought broad discovery of Defendant’s patent licenses related to the accused device. When Defendant offered to produce only licenses relating to the accused features of the devices, Plaintiff move to compel. Id. at *1. The magistrate to whom the dispute was assigned granted the motion to compel, and:

  • Set out the standards for relevance in discovery. Id. at *1.
  • Responding to Defendant’s reliance on Lucent and LaserDynamics, cautioned against conflating relevance for purposes of admissibility with relevance for the purpose of discovery. Id. at *2.
  • Concluded that the discovery appeared relevant on its face, as the rates paid by the Defendant for some patent licenses related to components of the accused device “may be probative of the rate that Defendant might have paid for the hypothetical patent license at issue here.” Id.
  • Concluded that Defendant had failed to explain why it would be burdensome, let alone unduly burdensome, to produce the discovery. Id. at *3.
  • Concluded that the fact that one license Defendant objected to producing was discoverable even though it might not be admissible under the LaserDynamics standard for trial admissibility. Id.