Two Discovery Disputes

Google LLC v. Sonos, Inc., No. 20-cv-06754, 2022 U.S. Dist. LEXIS 197728 (N.D. Cal. Oct. 31, 2022) [GoogleSonosDiscovery]

Google sued back in 2020 seeking a declaratory judgment that several Sonos networked-speaker patents are invalid or not infringed.  Trial is set for May 2023.  The parties had a prior development agreement and in a recent discovery request, Google asked for a R.30(b)(6) corporate witness deposition regarding Sonos’ “understanding of the scope” of a prior agreement between the parties.  Sonos refused to provide the witness – arguing that the discovery request improperly sought Sonos legal theories (including contract interpretation) and trial strategy.  Google moved to compel discovery, but that request has been denied by Magistrate Judge Ryu.

Judge Ryu concluded that Sonos’ “understanding of” its contract implicated questions of law (since contract interpretation is a question of law rather than a question of fact).   Even though Google limited its request to discover “facts,”the request was also very much about Sonos’ interpretation of the contract.  The discovery request here seeking a party deponent is also different from an ordinary request for documents because a 30(b)(6) deposition allows 7 hours of questions that allows for more substantial development of legal theory as opposed to just sending over a set of responsive documents.  The court did not attempt to distinguish the deposition discovery here from interrogatories and requests for admission regarding legal contentions that are a regular practice in patent litigation.

In re PersonalWeb Techs., LLC Patent Litig., No. 18-md-02834-BLF, 2022 U.S. Dist. LEXIS 197706 (N.D. Cal. Oct. 31, 2022) [PersonalWebDiscoveryOrder]

Amazon won this litigation against PersonalWeb and also awarded more than $5 million in attorney fees to Amazon for 10,000 attorney hours.  Since 2021, Amazon has bene trying to get banking and investor records from PersonalWeb for enforcement purposes.

In this recent decision, Amazon is seeking discovery from PersonalWeb’s former attorneys, the Stubbs Alderton Law Firm. Of course, that information is likely privileged and/or work product. But, PersonalWeb apparently did not timely respond to the discovery requests directed to its counsel and so, according to Magistrate Judge Susan Van Keulen, has waived its privilege.

PersonalWeb’s failure respond to discovery directed to its counsel, followed by its failure to argue in the Joint Statement that it had not waived objections, cannot now save its privilege claims.

Id.

11 thoughts on “Two Discovery Disputes

  1. 3

    Without having the benefit a link, the Google decision seems a little bit off. If you can ask inventors about their understanding of claim terms in a deposition, I don’t see why it’s wrong to do the same with an appropriate corporate representative when it comes to contract terms.

    1. 3.2

      Is asking lay inventors about their understanding of claim terms which they did not draft in a deposition really that widely acceptable or effectively useable in a trial, especially since the Sup. Ct. Markman decision? [I have a vague recollection of a case to the contrary.]
      But asking the opposing party in a 30(b)(6) deposition their intent or purpose in entering into the agreement seems more reasonable to me if the relevant actual contract language in dispute is unclear or ambiguous?

      1. 3.2.1

        Case law in the MPEP suggests that Examiners are free to give little weight to 132 affidavits from inventors. Should deposition testimony of inventors be entitled to any more weight than affidavit testimony?

        1. 3.2.1.1

          That is most definitely NOT what case law “suggests.”

          You may be confusing weight that may be given to portions of such an affidavit, such as, for example, unsubstantiated opinion.

          1. 3.2.1.1.1

            I’ve seen Examiner dismiss declarations in their entirety as allegedly being “self-serving opinion.” Examiner training with regard to Rule 132 documents needs to be improved.

            1. 3.2.1.1.1.1

              The Fed. Cir. generally takes good patent application declaration evidence more seriously than examiners, so if they are needed, and the application is important enough to be worth appealing, they should be made of record in the application (or a continuation) before then.

  2. 2

    A typo: Google sued in the first case in 2020, not 2000.

  3. 1

    How does trying to find from attorneys who is really paying for their named-client’s patent lawsuit [a lawsuit investment company investing for their own financial reasons in many cases now, or a secret party trying to avoid suit consequences] be blocked as attorney–client privileged information when “that communication to the attorneys was not for the requisite purpose of securing legal advice?”

    1. 1.1

      Agreed.

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