In the United States Court of Federal Claims SCIENCE APPLICATIONS INTERNATIONAL CORP.,
Plaintiff,
v.
THE UNITED STATES, No. 17-cv-825 Defendant, Filed Under Seal: October 19, 2021 and Publication: October 27, 20211 MICROSOFT CORPORATION,
Intervenor-Defendant,
and
L3 TECHNOLOGIES, INC.,
Third-Party Defendant.
Stephen R. Smith, Cooley LLP, Washington, D.C. for Plaintiff. With him on the briefs are DeAnna D. Allen and Emily Terrell, Washington, D.C.; Douglas P. Lobel, Cooley, LLP, Reston, Virginia; and William D. Belanger and Gwendolyn Tawresey, Pepper Hamilton LLP, Washington, D.C.
William Carl Bergmann, Baker & Hostetler, LLP, Washington, D.C., for Third-Party Defendant. With him on the briefs are Michael Anderson and Cassandra Simmons, Baker & Hostetler, LLP, Washington, D.C.
1 This Memorandum and Order was filed under seal in accordance with the Protective Order entered in this case (ECF No. 34) and was publicly reissued after the parties informed this Court that no redactions would be necessary for public release. (ECF No. 223.) The sealed and public versions of this Memorandum and Order are identical, other than the publication date and this footnote. MEMORANDUM AND ORDER This case is entering its fourth year of litigation before the trial court, and familiarity with
prior proceedings in this action is presumed. See January 19, 2018 Order Denying Motion to
Dismiss (ECF No. 14); April 21, 2021 Order Granting in Part and Denying in Part Plaintiff’s
Motion to Strike (ECF No. 172); August 6, 2021 Claim Construction Opinion (ECF No. 192)
(Claim Constr. Op.). On August 6, 2021, this Court issued its Claim Construction Opinion,
holding indefinite several key claim terms in Plaintiff Science Applications International
Corporation’s (SAIC’s) asserted patents. See Claim Constr. Op. at 70-91. These indefinite terms
pervade the claims in SAIC’s asserted patents. Indeed, they are so widespread that, when the
parties jointly stipulated to invalidity of the claims containing those indefinite terms, only one of
the four asserted patents survived. See Joint Stipulation of Invalidity and Motion for Partial
Summary Judgment Regarding the Asserted Patents (ECF No. 208). As is typical in patent cases,
SAIC indicated that it will likely appeal this Court’s claim construction given its impact. See Sept.
15, 2021 Joint Status Conference Transcript (ECF No. 205) (Status Conference Tr.) at 13:20-25
(“When we appeal, we need to make sure it’s teed up correctly”).
That SAIC may appeal this Court’s Claim Construction Opinion is unremarkable.
However, before embarking on its journey to the U.S. Court of Appeals for the Federal Circuit
(Federal Circuit), SAIC effectively seeks to supplement the record. SAIC contends that additional
discovery regarding a license to Third-Party Defendant L3 Technologies, Inc. (L3) from non-party
BAE Systems, Inc. (BAE) (the L3-BAE license) and a patent included in that license may uncover
evidence that would necessitate a reversal of the Court’s claim construction ruling concerning the
terms “registering” and “in registration with.” See id. at 13:10-14:7. Specifically, SAIC alleges
that this “newly discovered” extrinsic evidence will purportedly demonstrate that one of ordinary
2 skill in the art would understand that the referenced invalid claim terms have a definite meaning.
Id at 13:1-19.
The history of how this extrinsic evidence suddenly became an issue post-claim
construction merits recitation. After SAIC served discovery requests seeking this evidence from
L3 and non-party BAE, L3 filed a motion for a protective order seeking to “prohibit[] SAIC from
further claim construction discovery.” L3 Motion for Protective Order (ECF No. 210) (L3’s Mot.)
at 1. The protective order that L3 seeks is broad. L3 argues that expanded discovery related to
the L3-BAE license and one patent referenced within it will impose an undue burden on L3 to
review and produce documents “that are irrelevant to claim construction, cumulative of what the
Court has already considered, or which SAIC already had ample opportunity to present.” Id. at 3.
In response, SAIC argues that L3’s proposed protective order is overbroad and will inappropriately
enable Defendants to avoid discovery related to damages and liability where evidence relevant to
those issues is also relevant to claim construction. See Opposition to L3 Motion for Protective
Order (ECF No. 215) (SAIC’s Resp.) at 1. Finally, SAIC urges this Court to deny L3’s motion
because it lacks the certification required by United States Court of Federal Claims Rule (Rule or
RCFC) 26. Id. On October 14, 2021, this Court conducted oral argument on the Motion. See Oct.
14, 2021 Hearing on L3’s Motion for Protective Order Transcript (ECF No. 219) (Hearing Tr.).
For the reasons explained below, L3’s Motion for a Protective Order is GRANTED IN PART.
BACKGROUND
This case assumed its current tack after a prolonged claim construction process, including
extensive, multi-year discovery. SAIC filed this patent infringement suit against the United States
of America (Government) in June 2017. See Complaint for Patent Infringement (ECF No. 1). The
Government and SAIC disclosed their respective claim construction experts in November 2018.
3 See Defendant’s Disclosure of Claim Construction Expert (ECF No. 48); SAIC’s Disclosure of
Claim Construction Expert (ECF No. 49). Microsoft intervened in this case as a defendant in April
2019. See Microsoft Corporation’s Motion Intervene (ECF No. 59); Order Granting Microsoft’s
Motion to Intervene (ECF No. 60). Microsoft, the Government, and SAIC filed a joint claim
construction statement in June 2019, in which the parties identified claim terms for construction.
See Joint Claim Construction Statement (ECF No. 63). In that statement, Defendants alleged that
the terms “registering” and “in registration with” in the relevant patents are indefinite. See Joint
Claim Construction Statement, Ex. A (ECF No. 63-1) at 8.
The parties filed opening claim construction briefs on August 15, 2019. See Microsoft’s
Opening Claim Construction Brief (ECF No. 87); Government’s Opening Claim Construction
Brief (ECF No. 89); SAIC’s Claim Construction Brief (ECF No. 90). Two months later, the parties
filed responsive claim construction briefs. See Microsoft’s Responsive Claim Construction Brief
(ECF No. 95); SAIC’s Responsive Claim Construction Brief (ECF No. 96); Government’s
Responsive Claim Construction Brief (ECF No. 97). After several delays — including a stay
related to inter partes review, delays attributable to the Covid-19 pandemic, and subsequent
reassignment of the case in 2020 to the present judge — L3 joined the case as a third-party
defendant in July 2020. See L3’s Answer to Complaint (ECF No. 131); Memorandum and Order
Granting Notice to L3 (ECF No. 120); see also Order Granting Partial Stay (ECF No. 102); Order
Reassigning Proceedings (ECF No. 112).
In October 2020, the Court granted L3 an opportunity to file supplemental claim
construction briefing on up to five terms since L3 was not a party when the Government, SAIC,
and Microsoft had filed their claim construction briefs. See Sept. 4, 2020 Scheduling Order (ECF
No. 141); L3’s Opening Claim Construction Brief (ECF No. 148). Like the other defendants in
4 this action, L3 asserted, inter alia, that the terms “registering” and “in registration with” in the
patents at issue are indefinite. L3’s Opening Claim Construction Brief at 21-24. On the same day
that L3 filed its brief, SAIC submitted supplemental briefing on the terms for construction that had
L3 proposed. See SAIC’s Supplemental Claim Construction Brief (ECF No. 149). L3 and SAIC
filed their respective responsive claim construction briefs on November 20, 2020. See SAIC’s
Responsive Claim Construction Brief to L3 (ECF No. 151); L3’s Responsive Claim Construction
Brief (ECF No. 152). On December 15, 2020, this Court held a Markman hearing. See Markman
Hearing Transcript (ECF No. 159).
According to SAIC, L3 was negotiating a patent license agreement with BAE during
supplemental claim construction briefing. See SAIC’s Resp. at 3. L3 and BAE executed the
license agreement three days after L3’s and SAIC’s submission of their responsive claim
construction briefs. See L3’s Mot., Ex. 1 (ECF No. 210-1) at 6. That license covers several
patents, but the only one SAIC contends is relevant to this motion is U.S. Patent No. 9,210,384
(the ’384 patent). See id. The ’384 patent is directed to “[a] system and method for real time
registration of images . . . .” SAIC Resp., Ex. A (ECF No. 215-1) (’384 patent) at Abstract. Like
SAIC’s asserted patents, the ’384 patent uses the terms “registering” and “registration” in its
claims. See id. at 6:2-15 (Claim 1), 6:33-36 (Claim 6), 6:62-7:10 (Claim 10). The patent
application that ultimately issued as the ’384 patent was published on March 20, 2014 — well
before SAIC initiated this lawsuit. See ’384 patent at pg. 2. In March 2019, SAIC also received
a copy of the ’384 patent from BAE in discovery. See L3’s Mot., Ex. 4 (ECF No. 210-4) at 1
(listing document number BAE‐ENVG‐17377 as part of a March 5, 2019 production); L3’s Mot.,
Ex. 2 (ECF No. 210-2) at 13 (noting that the ’384 patent was produced at BAE-ENVG-0017377).
5 Despite that the ’384 patent was publicly available to SAIC before it initiated this case, and
that SAIC received a copy of the ’384 patent early in this case, SAIC did not cite the ’384 patent
to the Court in support of its arguments that the “registering” and “in registration with” terms are
definite. See generally SAIC’s Claim Construction Brief; SAIC’s Responsive Claim Construction
Brief; SAIC’s Supplement Claim Construction Brief; SAIC’s Responsive Claim Construction
Brief to L3. Instead, however, SAIC cited several other patents — including one owned by L3 —
to suggest that its proposed construction of the terms “registering” and “in registration with” is
consistent with how one of ordinary skill in the art would use the term. See SAIC’s Responsive
Claim Construction Brief to L3 at 20 (“Lastly, L3’s insistence that the ‘registering’ claim terms
are indefinite contradicts the fact that SAIC’s use of these terms is consistent with the way persons
of ordinary skill in the art use them, including Defendants and their contractors.” (emphasis in
original)).
SAIC alleges it remained in the dark about L3’s license with BAE, covering the ‘384 patent
until June 24, 2021 — six months after this Court conducted its Markman hearing — when L3
produced a copy of the L3-BAE license. See SAIC’s Resp. at 3; Status Conference Tr. at 13:7-9
(SAIC noting that the ’384 patent was disclosed to it “in June, late June” 2021), 15:21-16:2 (noting
that the L3-BAE license covering the ’384 patent was not brought to the Court’s attention before
issuance of its Claim Construction Opinion). Although SAIC possessed a copy of the L3-BAE
license 43 days before this Court issued its August 6, 2021 Claim Construction Opinion, SAIC did
not bring the license, or any issues related to the ‘384 patent, to this Court’s attention. See SAIC’s
Resp. at 3; Claim Constr. Op. It was not until over two weeks after the Claim Construction Opinion
issued — a total of 60 days after SAIC received the license — that SAIC even hinted to this Court
the L3-BAE license or the ’384 patent might have had relevance, however remote, to claim
6 construction. See Aug. 23, 2021 Joint Status Report (ECF No. 197) at 7. Indeed, rather than
straightforwardly filing a motion for reconsideration, SAIC raised the issue of the ’384 patent and
the L3-BAE license in an unusual way — in a joint status report wherein the parties were to
propose to the Court a schedule for further proceedings. Id. at 1.
In the joint status report, SAIC alleged that the L3-BAE license was highly relevant to
claim construction because the claims and disclosure of the ’384 patent “are directly and
fundamentally inconsistent with the Defendants’ indefiniteness arguments.” Id. at 7. Three weeks
later, SAIC informed the Court at a September 15, 2021 status conference that it may opt to move
for reconsideration of the Court’s Claim Construction Opinion at some unknown, future point, but
only after conducting further post-Opinion discovery relating to claim construction. See Status
Conference Tr. at 16:15-17:19. The parties also informed the Court at the September 15, 2021
status conference that SAIC had recently served requests for production on L3 and BAE seeking
information about the ’384 patent and the L3-BAE license. See id. at 12:16-18; L3’s Mot, Ex. 1;
L3’s Mot., Ex. 2 (ECF No. 210-2).
SAIC’s requests for production to L3 and BAE are nearly identical. Compare L3’s Mot,
Ex. 1 at 7 (L3 RFP Nos. 34-36) with L3’s Mot., Ex. 2 at 13-14 (BAE RFP Nos. 1-3). SAIC
requested all documents related to the ’384 patent, including documents related to the decision to
enter into the L3-BAE license, the inclusion of the ’384 patent in the license, and negotiations for
the terms of the license. See L3’s Mot., Ex. 1 at 7 (L3 RFP No. 34); L3’s Mot., Ex. 2 at 13 (BAE
RFP No. 1). SAIC also requested “[a]ll Documents relating to any analysis of the ’384 patent,
including but not limited to its scope, its validity, and its applicability to the Instrumentalities.”
See L3’s Mot, Ex. 1 at 7 (L3 RFP No. 35); L3’s Mot., Ex. 2 at 14 (BAE RFP No. 2). Finally,
SAIC requested all documents related to communications between L3, BAE, the Government, and
7 any other entity, regarding the ’384 patent, the L3-BAE license, and any communications
regarding those documents. See L3’s Mot., Ex. 1 at 7 (L3 RFP No. 36); L3’s Mot., Ex. 2 at 14
(BAE RFP No. 3).
SAIC explicitly moored these post-claim construction requests for production to its
potential future challenge to the Court’s construction of the terms “registration” and “in
registration with.” Indeed, during a recent status conference, SAIC expressly linked its requests
to its quest for further extrinsic evidence — all of which, remarkably, SAIC had in hand well prior
to issuance of this Court’s Claim Construction Opinion. As SAIC’s counsel stated during the
September 15, 2021 status conference:
BAE and L3 entered into a license agreement for a patent, the ’384 patent, that talks about in claims registering two different images from two different cameras. And we think it has less disclosure than the patents that Your Honor found invalid. . . . We think there is more evidence in the record about what people think are skilled in the art on registration. . . . We’re in a situation where now we have evidence that is disclosed after claim construction2 that we’re going to bring to Your Honor’s attention at the appropriate time because we need it for the appellate record if we’re going to appeal.
Status Conference Tr. at 13:1-19. SAIC further explained that in addition to outstanding discovery
requests concerning this extrinsic evidence (i.e., the L3-BAE license and the ‘384 patent), it had
not yet received source code. See id. at 16:23-17:12. SAIC contends that source code will refer
to registration in a manner consistent with its unsuccessful claim construction positions. Id. While
the parties discussed damages at the September 15, 2021 status conference in the context of
whether to bifurcate proceedings, damages were not discussed in relation to SAIC’s discovery
requests about the ’384 patent and the L3-BAE license. See id. at 12:10-26:23. L3 filed the present
2 Later in the status conference, however, SAIC’s counsel explained that it had received such information prior to issuance of this Court’s Claim Construction Opinion. See Status Conference Tr. at 13:7-9 (SAIC stating that the ’384 patent was disclosed to it “in June, late June” 2021); Claim Construction Op. (issued August 6, 2021).
8 motion two weeks after that status conference. To date, SAIC has not filed a motion to reconsider
this Court’s Claim Construction Opinion.
APPLICABLE LEGAL STANDARDS
This Court may issue an order to protect a party or person from annoyance, embarrassment,
oppression, or undue burden or expense if good cause exists. RCFC 26(c)(1). “Good cause
requires a showing that the discovery request is considered likely to oppress an adversary or might
otherwise impose an undue burden.” Forest Prods. Nw., Inc. v. United States, 453 F.3d 1355,
1361 (2006). “[T]he party seeking the protective order must show good cause by demonstrating a
particular need for protection.” Cipollone v. Liggett Grp., Inc., 785 F.2d 1108, 1121 (3d Cir.1986).
Generic statements that discovery is burdensome or oppressive do not suffice; the moving party
must show how each request is not relevant, overly broad, or unduly burdensome by offering
evidence of the burden. Lakeland Partners, L.L.C. v. United States, 88 Fed. Cl. 124, 133 n.6
(2009).
Further, Rule 26(b)(2)(c) authorizes a court to impose limits if: “(i) the discovery sought is
unreasonably cumulative or duplicative, or . . . (ii) the party seeking discovery has had ample
opportunity by discovery to obtain the information [sought.]” RCFC 26(b)(2)(C)(i)-(ii).
“[D]iscovery, like all matters of procedure, has ultimate and necessary boundaries . . . .
[L]imitations come into existence when the inquiry touches upon the irrelevant . . .” Kellogg
Brown & Root Svcs., Inc. v. United States, 117 Fed. Cl. 1, 5-6 (quoting Hickman v. Taylor, 329
U.S. 495, 507-08 (1947)) (alterations in original).
Under this Court’s Rules, motions for a protective order “must include a certification that
the movant has in good faith conferred or attempted to confer with other affected parties in an
9 effort to resolve the dispute without court action.” RCFC 26(c)(1). L3 did not include a
certification in its motion indicating that a meet and confer had occurred. See L3’s Mot. The
Court does not look lightly on noncompliance with its Rules. However, in this circumstance it is
evident to the Court from its prior status conference that the parties were at an obvious impasse on
whether SAIC’s claim construction discovery is appropriate at this stage of the litigation, and it is
further evident that L3’s motion presents a pressing issue that this Court will have to confront. See
Status Conference Tr. Given the prior delays in this case,3 and the clear previous discussion of
this issue among the parties to no effect, the most efficient resolution is to address SAIC’s
discovery requests now.
DISCUSSION
L3 argues that a protective order is necessary because SAIC continues to request claim
construction discovery — after extensive discovery and this Court’s Claim Construction Opinion
— seeking what would amount to irrelevant and cumulative evidence. L3’s Mot. at 2.
Specifically, L3 argues that SAIC’s September 13, 2021 requests for production are irrelevant
because the L3-BAE license does not mention the indefinite terms and only mentions the ’384
patent in a list of patents being licensed. Id. L3 also argues that the requests for production seek
evidence that is cumulative of extrinsic evidence submitted to the Court during claim construction.
Id. at 2-3. Finally, L3 argues that SAIC’s pursuit of broad fact discovery improperly seeks source
3 In addition to the stay and reassignment referenced in the Background, this action involved several previous reassignments to other judges, all of which appears to have delayed proceedings. See Apr. 5, 2018 Transfer Order (ECF No. 24) (transferring case from the Honorable Eric G. Bruggink to the Honorable Mary Ellen Coster Williams); June 21, 2018 Transfer Order (ECF No. 67) (transferring case from the Honorable Mary Ellen Coster Williams to the Honorable Richard A. Hertling); July 23, 2019 Recusal Order (ECF No. 83) (recusing the Honorable Richard A. Hertling and transferring the case back to the Honorable Mary Ellen Coster Williams).
10 code. Id. at 3. SAIC responds that its discovery requests relate to issues beyond claim construction
and that further discovery on the L3-BAE license is warranted given its purportedly recent
disclosure. See SAIC’s Resp. at 1-3. It also contends that licensing communications are relevant
to damages while source code is relevant to the infringement analysis. Id. at 2. Having considered
the parties’ arguments, the Court finds it appropriate to issue a protective order precluding further
claim construction discovery but notes that SAIC shall not be precluded from propounding
discovery legitimately connected to other relevant, remaining issues remaining in this suit.
L3 has satisfied its burden under RCFC 26(c)(1) by demonstrating that SAIC’s discovery
requests, tailored to gather new, post-claim construction evidence, are irrelevant and cumulative.
Lakeland Partners, 88 Fed. Cl. at 133 n.6 (“The objecting party bears the burden of demonstrating
specifically how, despite the broad and liberal construction afforded the federal discovery rules,
each [request] is not relevant” (internal citations and quotations omitted)). The cumulative and
duplicative nature of the evidence related to the ’384 patent also supports an order under Rule
26(b)(2)(C) limiting SAIC’s ability to further conduct claim construction discovery. Evidence
touching solely on claim construction is irrelevant to issues that remain pending before this Court.
SAIC was clear that its recent discovery requests to L3 and BAE are directed at supplementing the
record on claim construction, despite the availability of extensive claim construction discovery
and access to the license and ‘384 patent well before this Court resolved claim construction. At a
status conference with this Court, SAIC explained that it served its requests for production of
documents related to the ’384 patent and the L3-BAE license because it believes that “there is
more evidence in the record about what people think are skilled in the art on registration.” Status
Conference Tr. at 13:10-13:12. That may be so, but SAIC possessed the ’384 patent both before
Markman discovery closed on July 18, 2019 and before the October 14, 2020 deadline to submit
11 supplemental claim construction briefing with L3. See May 6, 2019 Scheduling Order (ECF No.
60); Sept. 4, 2020 Scheduling Order. (ECF No. 141). The appropriate time to submit that evidence
was a year ago.
L3’s disclosure of its license from BAE several months after the Markman hearing does
not imbue SAIC’s requested discovery with new relevance. First, it is of no moment that SAIC
failed to appreciate the alleged importance of the ’384 patent until after it received a copy of the
L3-BAE license. See, e.g., GoDaddy.com LLC v. RPost Commc’ns Ltd., No. CV-14-00126, 2015
WL 6468370 at *2 (D. Ariz. Oct. 27, 2015) (“In its briefing on this motion, GoDaddy does not
contend that it was wholly unaware of the Supplemental Exhibits at the time it filed its Responsive
Claim Construction Brief. Rather, GoDaddy ostensibly argues that it was oblivious as to the
relevance of the Supplemental Exhibits at the time of filing. Such an argument does not result in
a finding of ‘good cause.’” (emphasis in original)). As noted, the ’384 patent was in the public
domain prior to the inception of this case. See ’384 patent at pg. 2 (listing Date of Patent as Dec.
8, 2015). Further, BAE produced a copy of the ’384 patent to SAIC well before the deadline for
the parties to submit extrinsic evidence on claim construction. See L3’s Mot., Ex. 4 (ECF No.
210-4) at 1 (listing document number BAE‐ENVG‐17377 as part of a March 5, 2019 production);
L3’s Mot., Ex. 2 (ECF No. 210-2) at 13 (noting that the ’384 patent was produced at BAE-ENVG-
0017377). Additionally, SAIC possessed a copy of the L3-BAE license 43 days before this Court
issued its claim construction opinion, and SAIC chose not to alert the Court of, what SAIC now
seeks to characterize as, newly-discovered, relevant evidence. It is inappropriate to burden
Defendants with post-Markman claim construction discovery now that SAIC regrets its decision
to forgo citing the ’384 patent during claim construction briefing.
12 Limiting discovery on this evidence is particularly appropriate where, as here, the evidence
is, at most, cumulative. SAIC claims that the discovery it seeks is relevant because the ’384
patent’s claims and disclosure indicate how the “registering” terms were understood to one of
ordinary skill in the art. But SAIC already offered several other patents as extrinsic evidence for
the same reason. Compare SAIC’s Responsive Claim Construction Brief to L3 at 20 (discussing
that a patent assigned to L3 uses the term “registration” consistent with SAIC’s proposed
construction) with Status Conference Tr. at 13:10-19 (suggesting that evidence related to the ’384
patent and its licensing history show “what people think [that] are skilled in the art on
registration”). SAIC has not demonstrated that the ’384 patent adds anything new. Nor could it.
If anything, the ’384 patent’s insight into the terms in the patents in suit adds less than the other
cited patents because it is assigned to a third party, while at least one of the patents that SAIC
previously cited on this issue is assigned to L3. See SAIC’s Responsive Claim Construction Brief
to L3 at 20 (discussing that a patent assigned to L3 uses the term “registration” consistent with
SAIC’s proposed construction). Because such evidence is duplicative of evidence SAIC cited to
the Court during claim construction, and since SAIC did not timely pursue such discovery before
the claim construction hearing, SAIC is precluded from seeking discovery related to the ’384
patent now.
SAIC’s discovery requests related to the history of the L3-BAE license are more
complicated. The license relates to technology that arguably has some overlap with the accused
products. This suggests the license may be relevant to evaluating damages. It would be
inappropriate to limit damages discovery at this point in the litigation. Accordingly, related to the
L3-BAE license, it is necessary for the Court to issue a targeted order protecting Defendants from
13 the burden of irrelevant discovery while also allowing SAIC the full extent of discovery on issues
such as infringement and damages.
That SAIC did not receive a copy of the L3-BAE license until six months after the
Markman hearing is inconsequential at this litigation stage, as the license is irrelevant to whether
the “registering” terms are indefinite. SAIC suggests that cases like Procter & Gamble Co. v.
CAO Grp., Inc., No. 1:13-cv-337, 2014 WL 2116994 (S.D. Ohio May 21, 2014), and Bancorp
Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004), support an inference that
L3’s payment to license a patent that includes the term “registering” is a representation at odds
with L3’s argument that SAIC’s patent claims asserting similar terms are indefinite. See SAIC’s
Resp. at 3. SAIC is mistaken. Both cases explain that it is the defendant’s, rather than a third
party’s, use of a term that is relevant. See Procter & Gamble, 2014 WL 2116994 at *4 (explaining
how defendant’s advertisements described the accused product in terms like those that it alleged
lacked discernable meaning in the asserted patents, and concluding that “[d]efendant’s documents
support a finding that the ‘unobtrusive’ phrase has a discernable meaning and is not indefinite”
(emphasis added)); Bancorp, 359 F.3d at 1376 (“[T]he evidence of defendants’ knowledge and
use of the term prior to patenting is relevant to show that the term was in use and had a discernible
meaning to at least some persons practicing in the field.” (emphasis added)). Here, the ’384
patent’s use of the term “registering” is not a statement by L3; L3 is not the owner of the patent,
and L3 did not prosecute the patent. See SAIC Resp., Ex. A at pg. 2. L3 is a mere licensee.
Nor should L3’s license concerning the ’384 patent be construed as a statement that all of
the terms in the ’384 patent are definite. While parties enter into agreements assuming that the
licensed patents are valid, and while many patent owners will warrant as much, parties also
understand that an issued patent is merely presumed valid. See 35 U.S.C. § 282(a). At most, L3’s
14 position in this case might suggest that it overpaid for a license that may include patents with one
or more invalid claims. L3’s risk tolerance for licensing BAE patents that may potentially include
invalid claims does not shed any light on the meaning of the “registering” terms in the patents at
issue in the present action. Even if timely raised, which it was not, SAIC’s proposed line of
discovery is exceedingly unlikely to produce new evidence relevant to claim construction.
Accordingly, a protective order is appropriate to shield Defendants and third parties from the costs
of such burdensome, irrelevant discovery.
SAIC’s conduct after receiving the L3-BAE license further undercuts SAIC’s claim that
this allegedly new evidence would be necessary for this Court to reconsider its claim construction.
Forty-three days elapsed between when SAIC received the license and when the Court issued its
Claim Construction Opinion. See supra Background, p.6. SAIC could have brought the license
to the Court’s attention if it believed that it would affect this Court’s claim construction decision.
It chose not to do so. SAIC’s inaction suggests that it did not believe the L3-BAE license was
important for claim construction until the Court issued an Opinion holding key terms indefinite.
Even after the Court issued its Claim Construction Opinion, SAIC did not present the
license issue to this Court with any urgency. It only brought the license to this Court’s attention
in a joint status report. Rather than file a motion for reconsideration based on the allegedly newly-
disclosed license, SAIC instead seeks further discovery, presumably because it understands that
the license itself is not the significant type of evidence that could support a reconsideration of this
Court’s Claim Construction Opinion. This Court’s discretion to enter a protective order is
designed for just this scenario: where a party wants to embark on a fishing expedition based on
irrelevant evidence that itself is not likely to lead to any relevant evidence. See Monarch Assur.
P.L.C. v. United States, 244 F.3d 1356, 1365 (Fed. Cir. 2001) (explaining that “the trial court is
15 not expected to, nor should it, simply allow plaintiffs to embark on a wide-ranging fishing
expedition in hopes that there may be gold out there somewhere”).
However, as L3 acknowledges and this Court agrees, discovery concerning other issues
such as damages must remain available to SAIC at this stage in the proceedings. See Hearing Tr.
at 21:5-8; see also In re MSTG, Inc., 675 F.3d 1337, 1348 (Fed. Cir. 2012) (holding documents
pertinent to the issue of a reasonable royalty). Accordingly, if a discovery request is directed
towards evidence with relevance to both claim construction and other issues such as damages,
Defendants must produce it. See Hearing Tr. at 8:3-13, 21:6-8. For example, SAIC’s requests for
source code, to the extent otherwise relevant, would be permissible under this protective order
because SAIC will likely need to review the source code to prove its infringement case.
Additionally, SAIC may pursue discovery on the economic terms of the L3-BAE license because
that information may be relevant to damages. This protective order prohibits SAIC from
conducting further discovery that is relevant solely to claim construction. Going forward in
discovery, consistent with this Memorandum and Order, SAIC must clearly articulate the
relevance of any discovery that Defendants in good faith challenge as solely relevant to claim
construction issues.
Finally, as noted supra, based on SAIC’s own statements that its September 15, 2021
discovery requests are intended to further develop claim construction arguments premised on the
’384 patent, SAIC may not seek discovery related to the ’384 patent. See Status Conference Tr. at
13:1-25, 16:23-17:12; supra Background, pp. 7-8.
16 CONCLUSION
For good cause shown, L3’s Motion for a Protective Order (ECF No. 210) is GRANTED
IN PART. Consistent with this Memorandum and Order, SAIC is prohibited from further
discovery related solely to claim construction. The parties are ORDERED to meet and confer to
discuss proposed terms for a supplemental protective order consistent with the terms of this
Memorandum and Order. Following that meeting, the parties shall FILE a joint proposed
protective order by October 28, 2021.
If the parties cannot agree on the terms of the joint proposed protective order, the parties
shall highlight in a Joint Status Report any such specific terms and the basis for such disagreement.
The Joint Status Report shall also include a meet and confer certification consistent with this
Court’s Rules.
The terms of the joint proposed protective order shall not preclude SAIC from obtaining
discovery concerning relevant remaining issues in this action, including by way of example,
infringement and damages. Additionally, the joint proposed protective order shall prohibit SAIC
from pursuing discovery on topics that SAIC indicates, or has indicated, were directed towards
claim construction, such as the following topics outlined in SAIC’s September 13, 2021 requests
for production to L3 and BAE:
• Analysis of the ’384 patent’s scope, see e.g., L3’s Mot., Ex. 1 at 7 (L3 RFP No. 35); L3’s Mot., Ex. 2 at 14 (BAE RFP No. 2);
• Analysis of the ’384 patent’s validity, see e.g., L3’s Mot., Ex. 1 at 7 (L3 RFP No. 35); L3’s Mot., Ex. 2 at 14 (BAE RFP No. 2);
• Analysis of the ’384 patent’s applicability to the accused instruments, see e.g., L3’s Mot., Ex. 1 at 7 (L3 RFP No. 35); L3’s Mot., Ex. 2 at 14 (BAE RFP No. 2);
• Communications concerning the ’384 patent, see e.g., L3’s Mot., Ex. 1 at 7 (L3 RFP No. 36); L3’s Mot., Ex. 2 at 14 (BAE RFP No. 3); and
17 • Communications concerning a summary or assessment of the ’384 patent, see e.g., L3’s Mot., Ex. 1 at 7 (L3 RFP No. 36); L3’s Mot., Ex. 2 at 14 (BAE RFP No. 3).
The parties are directed to CONFER and FILE a NOTICE by October 26, 2021,
attaching a proposed public version of this Sealed Memorandum and Order, with any competition-
sensitive or otherwise protected information redacted.
IT IS SO ORDERED.
s/Eleni M. Roumel ELENI M. ROUMEL Judge
Dated: October 19, 2021 Washington, D.C.