TEXASLDPC INC., Plaintiff, v. BROADCOM INC., LSI CORPORATION, AVAGO TECHNOLOGIES U.S. INC., Defendants C.A. No. 18-1966-SB United States District Court, D. Delaware Signed August 04, 2022 Counsel Gregory Robert Booker, Joseph B. Warden, Warren K. Mabey, Jr., Fish & Richardson, P.C., Wilmington, DE, Bret T. Winterle, Pro Hac Vice, David H. Hoffman, Pro Hac Vice, Lawrence K. Kolodney, Pro Hac Vice, Michael R. Headley, Pro Hac Vice, Rodeen Talebi, Pro Hac Vice. for Plaintiff. Adam Wyatt Poff, Robert M. Vrana, Young, Conaway, Stargatt & Taylor LLP, Wilmington, DE, Ramy E. Hanna, Houston, TX, Steven J. Rizzi, Pro Hac Vice, for Defendants. Rychlicki, Helena C., Special Master SPECIAL MASTER RULINGS AND RECOMMENDATIONS REGARDING DEFENDANTS’ MOTION FOR DISCOVERY CONFERENCE AND RELIEF (D.I. 303) Public Version *1 Pending before the Special Master is a discovery dispute raised by Defendants regarding Plaintiff's responses to certain of Defendants’ interrogatories. Specifically, Defendants ask that I compel Plaintiff to fully respond to Defendants’ Interrogatory Nos. 1 and 21 relating to Plaintiff's contentions regarding alleged dates of conception, reduction to practice, and diligence for each of the claims asserted in this action, as well as the evidence Plaintiff intends to rely on to support such contention, and facts concerning modifications to the source code deposited with the Copyright Office. (D.I. 303). Defendants responded by Letter Brief on July 12, 2022. I held a hearing regarding the dispute on July 14, 2022. I have reviewed and considered the parties’ letter briefs and attached exhibits, cited case law, and the parties’ arguments made at the hearing. I. LEGAL STANDARD On March 16, 2013, the United States moved from a first-to-invent patent system to a first-to-file patent system. See America Invents Act (“AIA”). Patent applications filed before March 16, 2013 continue to be governed by the first-to-file patent system. In addition, those applications filed before March 16, 2013 can form the basis for filing one or more continuation applications after that date. A patentee “claiming an invention date prior to the application filing date ... has the burden to establish conception and reduction to practice. [The] conception and reduction to practice dates are relevant to invalidity defenses for purposes of discovery.” Beckman Coulter, Inc. v. Sysmex America, Inc., C.A. No. 18-CV-6563, 2019 WL 1875356, at *1 (N.D. Ill. April 26, 2019) (citation omitted). When “[plaintiff's] theory is that its patent was conceived of and reduced to practice before the patent filing date[, defendant] has a right to know the dates underlying this theory so that it can respond.” Id. at *2. “A response to a contention interrogatory must include the principal or material facts which support an allegation or defense.” IOENGINE, LLC v. PayPal Holdings, Inc., C.A. 18-452-WCB, D.I. 329, at *7 (D. Del. Sep. 30, 2021) (internal quotation marks and citation omitted). A plaintiff “is not required to provide a narrative account of its entire case on diligence, complete with all the evidence of diligence that it intends to elicit at trial ....” Id. “But [a plaintiff] must set out the essential facts on which it bases its claim of diligence....” Id. With respect to alleging that patent claims are invalid for failure to meet the written-description requirement, as noted in SFA Systems, LLC v. Amazon.com, Inc., et al., 6:11-cv-052-LED, D.I. 400 (E.D. Tex. April 11, 2013): Defendant bears the burden of proving that the patents-in-suit are invalid for failure to meet the written-description requirement. The burden of proving invalidity is on the attacker. That burden is constant and never changes. One attacking the validity of a patent must present clear and convincing evidence establishing the facts which lead to the legal conclusion that the patent is invalid. *2 Id. at *2 (cleaned up). II. DISCUSSION Interrogatory No. 1 requests: For each Asserted Claim, and on a claim-by-claim basis, provide a detailed description of all facts and circumstances concerning the alleged applicable dates of conception, intervening diligence, priority of invention, and reduction to practice. Such a detailed description should include without limitation: (a) identification of all relevant dates, including the earliest date by which TexasLDPC contends that the alleged invention was conceived and the date(s) by which TexasLDPC contends the alleged invention was actually and/or constructively reduced to practice; (b) identification of any embodiments of the Asserted Claim that have been actually or constructively reduced to practice; (c) an identification of where each limitation of the Asserted Claim is found in each patent application allegedly constituting a constructive reduction to practice; (d) identification of all persons who were involved in or witnessed the alleged conception, actual or constructive reduction to practice, and intervening diligence; and (e) identification of all documents and evidence concerning or corroborating the earliest contended conception date, date(s) of actual or constructive reduction to practice, and all intervening diligence from the time of conception to the time of reduction to practice. Interrogatory No. 21 requests: With respect to the source code produced by Zip file from TEXASLDPC00240641-49, identify, with respect to each file: (a) The date and location of initial creation, and the person who created the file; (b) The storage location(s) where such file was maintained, and all persons who had access to such storage location(s); (c) All persons to whom such file was transmitted, whether by email, FTP, CD/DVD, or other means, and who transmitted such file in each instance; (d) The date of last modification, the person who last modified, and the location where such modification was made; and (e) Each modification made to the file between the date of creation and last modification, and the person responsible for such modification(s); such identification should include each line of code and each comment that was modified, and the date and location where such modification was made. A. Interrogatory No. 1 (“Rog 1”) Defendants assert that invention is determined on a claim-by-claim basis and to predate prior art references, Plaintiff must show an earlier invention date separately for each claim. Defendants’ Letter Brief at 2. Plaintiff responds that it has provided the best information it has at this time regarding conception and reduction to practice dates. Plaintiff also notes that Rog 1 is overbroad because it requests “a detailed description of all facts and circumstances” concerning the information requested. I reviewed Plaintiff's Response and First Supplemental Response to Rog 1. Regarding Defendants’ request for an identification of all relevant dates regarding earliest dates of conception and reduction to practice, I find Plaintiff's response incomplete. Plaintiff has asserted that Defendants infringe 60 claims contained in six patents. For seven of those claims, Plaintiff has not provided a date of conception and a date of reduction to practice of either “by October 2006” or “by July 2006.” For the remaining claims, Plaintiff has provided a date of conception of “in late 2005, or at the latest by early 2006” and a date of reduction to practice of “by December 2005.” *3 Although I agree with Plaintiff that Rog 1 is overbroad, Plaintiff must provide specific earliest dates of conception and reduction to practice for each Accused Claim. Plaintiff states that it has provided the best information it has at this time. It contends that the inventors are “third-parties” and Plaintiff is respectful of their time. But, Plaintiff represents both inventors with respect to subpoenas served on them by Defendants. If Plaintiff wants to demonstrate dates of conception and reduction to practice earlier that the filing dates, it must do so specifically. Stating that something occurred “by” a certain month implies that the actual date could be sometime earlier. In a similar fashion, stating that something occurred sometime over several months is not acceptable. Beckman, 2019 WL 1875356, at *2. See also In re Papst Licensing GMBH & Co. KG Litig., 252 F.R.D. 7, 17 (D. D.C.) (“Of all the parties to this [action, plaintiff] alone has access to all of the information on conception because it is evidence from the inventor.”). Defendants served Rog 1 on January 14, 2022. It is now the end of July. Plaintiff has had sufficient time to confer with the inventors to discuss the specifics of dates of conception and reduction to practice for each Asserted Claim. Plaintiff's suggestion that Defendants can depose the inventors to determine these dates is a nonstarter for this issue. Defendants are entitled to know the dates that Plaintiff intends to assert before any inventor deposition. Plaintiff also states that it has provided more information than the plaintiff in IOENGINE. That is true but it is not enough. Similarly, Plaintiff must provide evidentiary support for these dates. It is not required to provide “all” the evidence it will present at trial but it must cite to specific documents for each Asserted Claim. Plaintiff has already identified source code that evidences a reduction to practice (the “embodiments”) for 53 of the Asserted Claims. It must do the same for the remaining Asserted Claims and identify any other documents relevant to each Asserted Claim. Because Plaintiff has identified, in general, individuals who were “involved in or witnessed” the events surrounding conception, diligence, and reduction to practice, I do not require Plaintiff to supplement that contention at this time. See Trovan, Ltd. v. Sokymat SA, Irori, et al., 299 F.3d 1292, 1302 (Fed. Cir. 2002) (“[A]n inventorship analysis, like an infringement or invalidity analysis, begins as a first step with a construction of each asserted claim to determine the subject matter encompassed thereby.”). Finally, Defendants request that I order Plaintiff to provide “an identification of where each limitation of the Asserted Claim is found in each patent application allegedly constituting a constructive reduction to practice.” Issued patent claims are presumed valid. 35 U.S.C.A. § 282. It is Defendants’ burden of proving invalidity, including failure to meet the written-description requirement. Defendants have the patents at issue, their prosecution histories, the provisional patent applications on which the patents rely, and the source code. Defendants “must present clear and convincing evidence establishing the facts which lead to the legal conclusion that the patent is invalid.” SFA Systems, LLC v. Amazon.com, Inc., et al., 6:11-cv-052-LED, D.I. 400, at *2 (E.D. Tex. April 11, 2013). For the above stated reasons, I GRANT IN PART AND DENY IN PART Defendants’ request that I order Plaintiff to further supplement is response to Rog 1. This does not preclude Defendants from bringing another motion to order supplementation at a later time if Plaintiff's supplemented response remains deficient. B. Interrogatory No. 21 (“Rog 21”) Rog 21 requests information regarding source code produced by Plaintiff. Plaintiff has responded: TexasLDPC understands that the copyrighted files, produced at TEXASLDPC00240641-49, were created by Dr. Kiran Gunnam prior to being deposited with the United States Copyright Office. To the best of TexasLDPC's knowledge, the files produced at TEXASLDPC00240641-49 are the very same files that were deposited with the Copyright Office. TexasLDPC is unaware of all storage location(s) where such files were maintained, and all persons who had access to such storage location(s). TexasLDPC's discovery and investigation is ongoing. *4 Therefore, Plaintiff has provided the name of the person who created each file, that those files were transmitted to the U.S. Copyright Office, and that it is unaware of all storage location(s) for the files or all persons who had access to those location(s). Because Dr. Gunnam, as the creator of the files and one of the inventors of the Asserted Claims, should recall where he was when he created each file, Plaintiff must provide that information. During the July 14, 2022, hearing, Plaintiff's counsel states, regarding file creation dates, that they found “all the files out of the 5,000 or so that say 2005 or December of 2005.” July 14, 2022, Hearing Transcript at 50. This is also noted in Plaintiff's Supplemental Response to Rog 1. I order Plaintiff to provide that information to Defendants. It has the information and should not withhold it from Defendants. Plaintiff's response notes that it is “unaware of all storage location(s) where such files were maintained, and all persons who had access to such storage location(s).” Plaintiff also stated that its “discovery and investigation is ongoing.” Plaintiff must continue that investigation and report its results (whether it does or does not discover further information) to Defendants. Plaintiff must also further investigate the issue of transmission of the files. If the source code files were transferred between the inventors or to others (such as patent attorneys, colleagues, or third parties), I order any such information produced to Defendants. Regarding Defendants’ request that I order Plaintiff to supplement its response to Rog 21(d) and (e), I decline for the most part. Defendants have the source code files. It is no more burdensome for Defendants than Plaintiff to review the files. If the requested information exists in the files, Defendants should find that information themselves. See CIF Licensing, LLC v. Agere Sys. Inc., No. 07-170-JJF, 2009 U.S. Dist. LEXIS 5555, 2009 WL 187823, at *2 (D. Del. Jan. 23, 2009). I do, however, order Plaintiff to produce any recollections of the inventors or contemporaneous documents they or others may have created regarding dates and locations of any modifications made to the files. I do NOT order Plaintiff to review the files, line by line to determine the requested information. Finally, Plaintiff notes that because Rog 21 has five-plus requests, it objected to Rog 21 as exceeding the agreed 30 interrogatory limit provided in the Scheduling Order. It continued its assertion that no response is required in its July 12, 2022, Letter Brief. But, Plaintiff did respond to Rog 21, although not completely, and therefore has waived its objection to excess interrogatories as to Rog 21. See Barkes v. First Corr. Med., C.A. No. 06-104-JJF-MPT, 2010 U.S. Dist. LEXIS 48546, at *8 (D. Del. May 17, 2010). For the above stated reasons, I GRANT IN PART AND DENY IN PART Defendants’ request that I order Plaintiff to further supplement is response to Rog 21. This does not preclude Defendants from bringing another motion to order supplementation at a later time if Plaintiff's supplemented response remains deficient. III. CONCLUSION As detailed above, Defendants’ Motion for Discovery Conference and Relief (D.I. 303) is GRANTED IN PART AND DENIED IN PART. *5 If I have not discussed certain assertions made or case law cited by the parties that does not mean that I did not consider them before making my Rulings and Recommendations. Out of an abundance of caution due to the parties designating their Letter Briefs as Confidential, I will file the Rulings and Recommendations under seal. The parties are ordered to confer regarding any proposed redactions. The proposed redactions and correspondence explaining why the redactions are necessary must be sent to me by 10 a.m. on August 3, 2022. The parties are referred to D.I. 231 regarding procedures for any appeal of the Rulings and Recommendations. Such are the Rulings and Recommendations of the Special Master. Dated July 29, 2022