New Pacer--ORDER RE: DISCOVERY DISPUTE JOINT REPORT NOS. 1 AND 2

NOT FOR CITATION
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
BARCO N.V.,
Plaintiff,
v.
TECHNOLOGY PROPERTIES LTD.,
PATRIOT SCIENTIFIC CORP., and
ALLIACENSE LTD.,
Defendants.

ORDER RE: DISCOVERY DISPUTE JOINT REPORT NOS. 1 AND 2

BACKGROUND

In December 2008, plaintiff Barco, N.V. ("Barco"), a Belgian corporation, filed the instant
action against defendants Technology Properties Limited and Alliacense Limited (collectively,
"TPL") for declaratory judgment of noninfringement and invalidity of three of TPL's patents.1 Two
months later, TPL counterclaimed that Barco infringed its patents. In broad terms, TPL contends
that Barco's products contain third-party computer chips that infringe the patents-in-suit, and Barco
contends that they do not. Two discovery disputes have now arisen, so, pursuant to this Court's
Standing Order re: Civil Discovery Disputes, the parties filed two separate Discovery Dispute Joint
Reports seeking judicial intervention. Docket Nos. 207 ("DDJR No. 1"), 208 ("DDJR No. 2").
1 The three patents-in-suit are: United States Patent Nos. 5,809,336 (the "'336 Patent"), 5,440,749
(the "'749 Patent"), and 5,530,890 (the "'890 Patent").

DISCUSSION

A. Discovery Dispute Joint Report No. 1
In the first Joint Report, the parties argue over Barco's responses to five of TPL's Requests
for Production of Documents ("RFP"). See, generally, DDJR No. 1. TPL argues that Barco's
responses are insufficient and questions whether Barco conducted the "reasonable inquiry" in
response to them that is required by Federal Rule of Civil Procedure 26. DDJR No. 1 at 3-4 (citing
Qualcomm, Inc. v. Broadcom Corp., No. 05cv1958-B (BLM), 2010 WL 1336937, at *2 (S.D. Cal.
Apr. 2, 2010)). Barco essentially responds that it has conducted a "reasonable inquiry" in response
to TPL's relevant requests but it also maintains that it need not search for documents in response to
requests that are not relevant or for which the search would be unduly burdensome. DDJR No. 1 at
7-10.
1. RFP Nos. 75-76
TPL's RFP Nos. 75 and 76 together ask for "[a]ll DOCUMENTS concerning any
investigation, testing, analysis, or study of the BARCO CHIPS or BARCO PRODUCTS" either
"conducted by or on behalf of BARCO in the United States" or "that relate to BARCO's assertion
that its products do not infringe any valid claims of the PATENTS-IN-SUIT." DDJR No. 1, Ex. A at
4-5. In essence, TPL is trying to determine whether Barco tested the accused products within the
United States because testing a patented invention, in some cases, may be an infringing "use" under
35 U.S.C. section 271(a). DDJR No. 1 at 6 (citing Waymark Corp. v. Porta Sys. Corp., 245 F.3d
1364, 1366 (Fed. Cir. 2001)). Barco objected to these RFPs on several boilerplate grounds (e.g.,
overly broad; vague and ambiguous; privilege; etc.) and on the ground that RFP No. 76 would
require it to produce documents not within its possession, custody, or control. DDJR No. 1, Ex. B at
6. In the parties' Joint Report, however, Barco represents that some of the relevant products are
tested within the United States, but some are not. DDJR No. 1 at 11. For those that are, Barco states
that it has located and will produce responsive documents. DDJR No. 1 at 11. For those that are not,
it states that it will submit a declaration to that effect (and so there are no responsive documents).
DDJR No. 1 at 11. Thus, it appears that Barco has taken steps to fully respond to RFP Nos. 75 and
76, as it should. If this is not true, within 21 days, the parties may file a joint letter, not to exceed 3
pages, describing any remaining impasse and proposing a possible resolution to it.
2. RFP Nos. 78-80
TPL's RFP Nos. 78, 79, and 80 ask for "[a]ll DOCUMENTS concerning block
specifications, datasheets, floor plans, user manuals, programming manuals, clock tree, I/O protocol
specifications, service manuals, CORE manual, die image, chip packaging information, and timing
diagrams for any BARCO chip or BARCO PRODUCT"; "[a]ll system and transistor level
schematics, including but not limited to schematics contained in service manuals for each BARCO
CHIP, corresponding to each printed circuit board in the BARCO CHIP"; and "[o]ne copy of each
version (including each paper, magnetic, and electronic version) of all manuals, user guides, white
papers, training guide, brochures, instructions for use, specifications and licenses (both express and
implied) for each model of BARCO PRODUCT, and their prototypes." DDJR No. 1, Ex. A at 5.
Barco objected to these RFPs on the grounds that they seek irrelevant documents for the broadlydefined
BARCO PRODUCTS and are not limited to documents related to the third-party computer
chips that are actually accused of infringing TPL's patents, that it does not understand what TPL
means by certain terms, and that the documents it seeks (basically, chip-level and product-level
documents) are much more easily obtained from the chip-makers themselves (who TPL only
recently subpoenaed, apparently).
Despite Barco's assertion that product-level documents are not relevant, the court thinks
otherwise. As TPL notes, its claims specify distinct elements that are found outside of the actual
computer chips (e.g., the "off-chip external clock"). See DDJR No. 1 at 5. And, as discussed below,
because TPL's infringement contentions are not overly vague and sufficiently identify, at this time,
the location of each element within the accused products, Barco cannot refuse to produce responsive
documents on this basis. See DDJR No. 1 at 10.
Nevertheless, Barco has produced some responsive documents. See DDJR No. 1 at 8-11.
The problem, though, is that TPL believes Barco did not try to look for them very hard. As an initial
matter, the court reminds both parties that Rule 26's "reasonable inquiry" requirement is not to be
taken lightly. However, the court need not -- and refuses to -- monitor Barco's compliance with this
requirement throughout the discovery phase of this case. Specifically, the court will not require, as
TPL requests, Barco to submit a certification describing in detail the scope and methods of its search
for documents responsive to TPL's RFPs. That said, Barco's argument that it is easier for the chipmakers
to produce any responsive documents does not mean that it is "unduly burdensome" for
Barco to do so (to the extent they exist). Despite its claim, Barco has not shown that it would be
"unduly burdensome" for it to search for and produce responsive documents. In other words, if
additional responsive chip-level and product-level documents exist (and they may or may not), and
if they are within Barco's possession, custody, or control (whether in emails or not), Barco must
conduct a reasonable search for them and produce them. Barco shall have 21 days to do so. To the
extent that Barco is confused by any of the terms included within TPL's RFPs, the parties are
ordered to meet-and-confer about them.
B. Discovery Dispute Joint Report No. 2
In the second Joint Report, the parties argue over whether TPL should have to amend its
infringement contentions ("ICs"). Barco says TPL must amend them; TPL says it does not need to
do so.
1. Barco's Argument that TPL's ICs Are Vague and Insufficient
Barco argues that TPL's ICs "are simply too vague to show 'specifically where' the accused
instrumentality meets the claim limitation." DDJR No. 2 at 2.
This District's Patent Local Rules require that a party's ICs contain, "separately for each
asserted claim, each accused . . . instrumentality . . . of which the party is aware. This identification
shall be as specific as possible. Each product, device, and apparatus shall be identified by name or
model number, if known." Patent L.R. 3-1(b). The ICs also must contain "a chart identifying
specifically where each limitation of each asserted claim is found within each accused
instrumentality." Patent L.R. 3-1(c).
"The overriding principle of the Patent Local Rules is that they are designed [to] make the
parties more efficient, to streamline the discovery process, and to articulate with specificity the
claims and theory of a plaintiff's infringement claims." Intertrust Techs. Corp. v. Microsoft Corp.,
No. 01-1640, 2003 U.S. Dist. LEXIS 22736, at *6 (N.D. Cal. Nov. 26, 2003). "Patent L.R. 3-1,
more specifically, is a discovery device that 'takes the place of a series of interrogatories that
defendants would likely have propounded had the patent local rules not provided for streamlined
discovery.'" Bender v. Maxim Integrated Prods., Inc., No. C09-01152 SI, 2010 WL 1135762, at *2
(N.D. Cal. Mar. 22, 2010) (quoting Network Caching Tech., LLC v. Novell, Inc., No. 01-2079
VRW, 2002 WL 32126128, at *3-4 (N.D. Cal. Aug. 13, 2002)(hereinafter "NCT I")). Patent L.R. 3-
1, however, does not require a party to produce evidence of infringement or to set forth ironclad and
irrefutable claim constructions. Network Caching Tech., LLC v. Novell, Inc., No. 01-2079 VRW,
2003 WL 21699799, at *4 (N.D. Cal. Mar. 21, 2003) (hereinafter, "NCT II"). Thus, "[a]t this
juncture, a party may comply with Patent L.R. 3-1 by setting forth particular theories of
infringement with sufficient specificity to provide defendants[] with notice of infringement beyond
that which is provided by the mere language of the patents themselves." Id.
It makes sense, then, that ICs "are not meant to provide a forum for litigation of the
substantive issues." Id. at *5. But that is exactly what Barco appears to be doing. For example, with
respect to the '336 Patent, Barco explains:
All the asserted claims of the '336 [P]atent expressly require "a microprocessor
system" that includes a "central processing unit." TPL has accused a "fieldprogrammable
gate array" chip called the Xilinx Virtex-5, of infringing. Barco
has pointed out to TPL that, although some Virtex-5 chips include on-board
microprocessors, the one Barco uses does not. TPL's ICs are deficient in this
respect because they only contain the unsupported statement that "the device
contains the Xilinx Virtex-5 microprocessor. This microprocessor is a monolithic
integrated circuit." TPL does not even alleged that the purported "microprocessor"
includes a central processing unit.
DDJR No. 2 at 3 (internal citations omitted) (emphasis in original). As TPL notes, this is a factual
assertion that goes to the merits of TPL's infringement claim. DDJR No. 2 at 9. Indeed, Judge
Walker rejected a similar argument in NCT II, when defendant Inktomi contended that plaintiff
NCT "failed to provide 'support for the allegation that [Inktomi's] Traffic Server [product] always
saves a copy of the requested data.'" NCT II, 2003 WL 21699799, at *5. "These sorts of concerns,"
he wrote, "are not meant to be resolved all in the context of NCT's [ICs], and the court declines to
do so here. Defendants will be afforded shortly the opportunity to press the validity of NCT's
construction of its own patent claims and defendants' products." Id.; see also FusionArc, Inc. v.
Solidus Networks, Inc., No. C06-06760 RMW (RS), 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5,
2007) ("While the [Patent Local] Rules are . . . intended to hasten resolution on the merits, they are
not, as [defendant] appears to be attempting to enforce them, a mechanism for resolving the merits
of the parties' dispute.") (emphasis in original).
Moreover, TPL's ICs are not like those submitted in Bender, as Barco suggests. In that case,
the plaintiff's ICs simply repeated for each claim limitation that "[t]his element is located on the
integrated circuit contained in the product." See Bender, No. C09-01152, Docket No. 48-1 (N.D.
Cal. Feb. 5, 2010). Thus, Judge Illston explained that the plaintiff's ICs "do not actually specific the
location of each element within the accused product. Rather, the court is asked to assume that
certain elements of the patent are present in the accused product." Bender, 2010 WL 1135762, at *
2. Here, TPL's ICs are not so bare. Indeed, it appears that TPL has provided in its ICs all of the
information to which it currently has access. See FusionArc, 2007 WL 1052900, at *2 (Defendant's
motion to compel amendment of FusionArc's ICs "because FusionArc has adequately established it
has provided all of the information in its possession as to how and why it believes [Defendant's]
services infringe the [patent-in-suit]."). As such, the court disagrees with Barco's statement that
TPL's ICs are "simply too vague."
2. Barco's Argument that TPL's ICs Rely on Unrelated Material
Barco also argues that TPL's ICs "rely on published articles and chips other than the accused
chips to allegedly show the claim elements are found within the accused instrumentalities," and that
"[i]n each case, TPL does not and cannot show any relationship between the actual accused products
and the material referenced." DDJR No. 2 at 4.
Barco is correct that some of TPL's ICs are based on material for other products. For
instance, TPL accuses Barco of infringement based on its use of a DDP1011 chip, but it relies upon
a presentation about a DDP1000 chip and a datasheet for a CDCDLP223 chip in its ICs. See Docket
No. 208-2, Ex. A-8, Pic. 1927. And, in doing so, TPL does not explain how or why information
concerning a DDP1000 chip or a CDCDLP223 chip is relevant to its IC for a DDP1011. Perhaps
information concerning these other two chips is relevant, or perhaps it is not; from TPL's ICs, the
court cannot say. Thus, to the extent that TPL's ICs rely upon information concerning products not
at issue in this litigation, TPL must amend its ICs to either provide information concerning the
products at issue or explain how and/or why information concerning any products not at issue is
relevant to its ICs.
CONCLUSION
Based on the foregoing, within 21 days from the date of this order:
1. the parties may file a joint letter, not to exceed 3 pages, describing any remaining impasse
concerning RFP Nos. 75 and 76 and proposing a possible resolution to it;
2. Barco shall search for and produce any documents responsive to RFP Nos. 78-80;
3. TPL shall amend its ICs to either provide information concerning the products at issue or
explain how and/or why information concerning any products not at issue is relevant to its ICs.

IT IS SO ORDERED.

Dated: September 20, 2011

Signed By Judge
HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE