Case Cite

Barnes and Noble, Inc. v. LSI Corp., No. C 11-02709 EMC (LB), 2013 WL 5183053 (N.D. Cal. Sept. 13, 2013).

IPDQ Commentary

The magistrate judge in Barnes and Noble limited a Plaintiff’s discovery request aimed at examining all of Defendant’s licenses to only those relating to the patents-in-suit and the accused technologies. Adopting a pragmatic approach, the judge concluded it seemed unduly burdensome to consider a large universe of other licenses to determine value for the accused functionalities.

Case Summary

In ruling on various discovery disputes, the court considered the patent owner’s request that the accused infringer produce all licenses relating to any accused device. Id. at *2. The requested licenses purportedly related to a determination of the value of the patented technology.

The court narrowed the request, requiring the accused infringer to produce licenses related only to the patents-in-suit and the accused technologies, and not all licenses held by Defendant relating to the accused devices,. Id. The court decided it seemed “backwards and burdensome” to analyze a large universe of other licenses and then back out value for the accused functionalities. Id. at *3.