Last week, Magistrate Judge Grewal granted a motion to compel certain RAND licensing documents from LSI, who was objecting to a third-party subpoena issued by Realtek in an ongoing patent infringement action filed by CSIRO. Ruling against LSI, the court found that documents used in the Realtek–LSI litigation are relevant to Realtek’s defense that CSIRO failed to comply with its obligation to license the patent on reasonable and non-discriminatory terms. By way of background, CSIRO filed the instant action in the Eastern District of Texas in August 2012, alleging Realtek — along with Barnes & Noble, Nokia, Samsung, Texas Instruments, and a number of other defendants — infringed a patent relating to the IEEE 802.11 wireless local area network standard. Realtek issued a third-party subpoena to LSI in April 2014, requiring LSI to produce all documents related to its 802.11 RAND patent licensing obligations and the calculation of a RAND patent royalty that were relied on or referenced in its own patent dispute with Realtek (as discussed in our prior posts, LSI was found to have breached its contract with the IEEE to license two 802.11 standard essential patents to Realtek). LSI opposed Realtek’s request, arguing that the documents were not relevant to the determination of a reasonable royalty rate because the patent royalties discussed in the Realtek–LSI dispute were directed to a different portion of the 802.11 standard and involved a different set of patents than was at issue in the CSIRO case. Considering whether the LSI documents sought by Realtek were relevant to the determination of a royalty rate, Magistrate Judge Grewal ruled that the requests were reasonably calculated to lead to the discovery of admissible evidence under Federal Rule 26(b):
Two houses on the same block may have very different features, and yet a real estate appraiser’s report will usually consider both. The patents at issue here were all asserted against Realtek and were all declared essential to the 802.11 standard. In addition, the patents are all claimed to be subject to an identical RAND commitment. In short, while the factual differences between the LSI and CSIRO cases may dampen the probative value of the evidence, the discoverability of the evidence cannot be disputed.