1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 San Francisco Division 11 SYNOPSYS, INC., Case No. 20-cv-04151-WHO (LB)
12 Plaintiff, DISCOVERY ORDER 13 v. Re: ECF Nos. 265-2, 269, 270 14 SIEMENS INDUSTRY SOFTWARE INC., 15 Defendant. 16 17 The parties have three discovery disputes. Fact discovery closed on August 31, 2023, but the 18 disputes were raised within seven days of that date. See N.D. Cal. Civ. L.R. 37-3. The court can 19 decide the disputes without oral argument. N.D. Cal. Civ. L.R. 7-1(b). 20 21 1. Siemens’ Sixteenth Interrogatory 22 Siemens contends that Synopsys should respond further to Siemens’ sixteenth interrogatory. 23 That interrogatory requests “communications with any third party, including Synopsys customers 24 or potential customers, in which [Synopsys] alleged or suggested that Aprisa infringed any 25 Synopsys patent or copyright, or referred to this Action or the ATopTech Action.” Aprisa is 26 Siemens’ accused software product in this case, and the “ATopTech Action” was a lawsuit by 27 Synopsys alleging that ATopTech (which at the time owned Aprisa) infringed certain Synopsys 1 2023. Synopsys partly objected, though, and the parties now dispute whether Synopsys must 2 produce (1) oral or other non-email communications about interrogatory sixteen’s subject matter, 3 (2) communications about patents and copyrights at issue in the ATopTech case but not this case, 4 and (3) certain emails as to which Synopsys allegedly waived its privilege.1 5 First, the non-email communications would be overly burdensome because, as Synopsys 6 points out, it would have to interview many individual sales representatives.2 Fed. R. Civ. P. 7 26(b)(1). 8 Relatedly, the interrogatory asks for communications, so it is logically answered in the form of 9 document productions, given the difficulty of determining whether oral communications occurred. 10 See Fed. R. Civ. P. 33(d). Under the parties’ ESI protocol, “Siemens was able to choose specific 11 Synopsys custodians and propose search terms,” and Synopsys then produced communications 12 responsive to interrogatory sixteen. Synopsys now represents that it has “provided all relevant, 13 non-privileged information of which it is aware after a reasonable search.”3 That said, to the extent 14 Siemens’ proposed search terms did not capture all of interrogatory sixteen’s subject matter and 15 Synopsys did not otherwise perform a full search for responsive documents, then Synopsys must 16 perform the remainder of the search. (That remainder excludes the communications discussed in 17 the next paragraph.) The issue is preserved and the parties may raise any further disputes with the 18 court. 19 Second, Synopsys need not produce communications related to patents and copyrights at issue 20 in the ATopTech case but not this case. It is communications about the asserted patents that are 21 relevant here (including with respect to damages issues). See Phoenix Sols. Inc. v. Wells Fargo 22 Bank, N.A., 254 F.R.D. 568, 582 (N.D. Cal. 2008). 23 24 25 1 Joint Disc. Letter Br. – ECF No. 267-4; Am. Compl. – ECF No. 199 at 3 (¶ 5) (describing ATopTech 26 and Aprisa). Citations refer to material in the Electronic Case File (ECF); pinpoint citations are to the ECF-generated page numbers at the top of documents. 27 2 Joint Disc. Letter Br. – ECF No. 267-4 at 4. 1 Third, Synopsys did not waive its privilege when it referenced a previously produced 2 document by bates number (a document that, six days later, Synopsys clawed back). 3 Under Fed. R. Evid. 502(b), the disclosure of a privileged document in a federal proceeding 4 “does not operate as a waiver” if: “(1) the disclosure is inadvertent; (2) the holder of the privilege 5 or protection took reasonable steps to prevent disclosure; and (3) the holder promptly took 6 reasonable steps to rectify the error, including (if applicable) following Federal Rule of Civil 7 Procedure 26(b)(5)(B).” Fed. R. Civ. P. 502(b). Siemens asserts inadvertent disclosure and thus 8 has the burden of proving these elements. Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 9 F.2d 18, 25 (9th Cir. 1981). 10 Synopsys’s privilege was not waived because referencing the bates number is not an 11 independent disclosure of the actual document, the error was promptly rectified, and in any case 12 Siemens did not carry its burden. 13 14 2. Synopsys’s Document Productions 15 The parties also raise various disputes about Synopsys’s document productions.4 16 First, the court already resolved the issue of whether Synopsys waived its privilege over a 17 document by referencing its bates number in an interrogatory response. 18 Second, Siemens contends that it is entitled to documents related to Synopsys’s acquisition of 19 Extreme DA Corp. According to Siemens, those documents “are relevant to damages in this action 20 because they relate to the valuation of technology in the same field as the patents asserted in this 21 litigation.”5 But the valuation of “technology in the same field” is a very broad conception of what 22 is relevant to patent-infringement damages. See N.D. Cal. Patent L.R. 3-8(a). A reasonable-royalty 23 analysis, for example, would be more closely tailored to the asserted patents (or analogous 24 inventions). Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 25 1970). Also, documents “related to” an acquisition could be unrelated to technology valuation. On 26
27 4 Joint Disc. Letter Br. – ECF No. 268-5. 1 this briefing, the court denies the motion to compel these documents — but as explained below, 2 the court will allow supplemental briefing. 3 Third, the result is different for documents related to Magma Automation’s valuation of its 4 intellectual property before Synopsys acquired Magma, because one of the asserted patents was 5 originally a Magma patent. That said, Synopsys has mostly already provided these documents. 6 The court adopts Synopsys’s proposal: it will search for “Magma’s documents that were created 7 by or for Magma, preceding Synopsys’[s] acquisition, that concern whether Magma had its own 8 valuation of its intellectual property.”6 9 Fourth, Siemens seeks damages documents, such as expert reports, from Synopsys’s litigations 10 against Extreme DA and Magma before it acquired those companies. Siemens contends that these 11 documents are relevant at least to the apportionment aspect of damages in this case. Finjan, Inc. v. 12 Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 4272870, at *4 (N.D. Cal. July 14, 2015) 13 (apportionment refers to distinguishing between an accused product’s patented and unpatented 14 features). Synopsys counters essentially that Siemens did not carry its burden of explaining any 15 further.7 16 As for the Magma litigation, the documents are relevant for the same reason that Magma’s 17 own technology valuations are relevant, so the court orders production of the documents listed by 18 Siemens.8 19 As for the Extreme DA litigation, the relevance is unclear from the current briefing. Siemens 20 mentions apportionment, but apportionment focuses on the accused product, which here is 21 Siemens’ own product Aprisa. The task of valuing Aprisa’s patented and unpatented features may 22 not be helped by any valuations from the Extreme DA litigation, given that unlike the Magma 23 litigation, the Extreme DA litigation did not involve any of the asserted patents here (that the court 24 is aware of). Synopsys distinguishes between Extreme DA’s technology and the routing 25 26 6 Id.
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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 San Francisco Division 11 SYNOPSYS, INC., Case No. 20-cv-04151-WHO (LB)
12 Plaintiff, DISCOVERY ORDER 13 v. Re: ECF Nos. 265-2, 269, 270 14 SIEMENS INDUSTRY SOFTWARE INC., 15 Defendant. 16 17 The parties have three discovery disputes. Fact discovery closed on August 31, 2023, but the 18 disputes were raised within seven days of that date. See N.D. Cal. Civ. L.R. 37-3. The court can 19 decide the disputes without oral argument. N.D. Cal. Civ. L.R. 7-1(b). 20 21 1. Siemens’ Sixteenth Interrogatory 22 Siemens contends that Synopsys should respond further to Siemens’ sixteenth interrogatory. 23 That interrogatory requests “communications with any third party, including Synopsys customers 24 or potential customers, in which [Synopsys] alleged or suggested that Aprisa infringed any 25 Synopsys patent or copyright, or referred to this Action or the ATopTech Action.” Aprisa is 26 Siemens’ accused software product in this case, and the “ATopTech Action” was a lawsuit by 27 Synopsys alleging that ATopTech (which at the time owned Aprisa) infringed certain Synopsys 1 2023. Synopsys partly objected, though, and the parties now dispute whether Synopsys must 2 produce (1) oral or other non-email communications about interrogatory sixteen’s subject matter, 3 (2) communications about patents and copyrights at issue in the ATopTech case but not this case, 4 and (3) certain emails as to which Synopsys allegedly waived its privilege.1 5 First, the non-email communications would be overly burdensome because, as Synopsys 6 points out, it would have to interview many individual sales representatives.2 Fed. R. Civ. P. 7 26(b)(1). 8 Relatedly, the interrogatory asks for communications, so it is logically answered in the form of 9 document productions, given the difficulty of determining whether oral communications occurred. 10 See Fed. R. Civ. P. 33(d). Under the parties’ ESI protocol, “Siemens was able to choose specific 11 Synopsys custodians and propose search terms,” and Synopsys then produced communications 12 responsive to interrogatory sixteen. Synopsys now represents that it has “provided all relevant, 13 non-privileged information of which it is aware after a reasonable search.”3 That said, to the extent 14 Siemens’ proposed search terms did not capture all of interrogatory sixteen’s subject matter and 15 Synopsys did not otherwise perform a full search for responsive documents, then Synopsys must 16 perform the remainder of the search. (That remainder excludes the communications discussed in 17 the next paragraph.) The issue is preserved and the parties may raise any further disputes with the 18 court. 19 Second, Synopsys need not produce communications related to patents and copyrights at issue 20 in the ATopTech case but not this case. It is communications about the asserted patents that are 21 relevant here (including with respect to damages issues). See Phoenix Sols. Inc. v. Wells Fargo 22 Bank, N.A., 254 F.R.D. 568, 582 (N.D. Cal. 2008). 23 24 25 1 Joint Disc. Letter Br. – ECF No. 267-4; Am. Compl. – ECF No. 199 at 3 (¶ 5) (describing ATopTech 26 and Aprisa). Citations refer to material in the Electronic Case File (ECF); pinpoint citations are to the ECF-generated page numbers at the top of documents. 27 2 Joint Disc. Letter Br. – ECF No. 267-4 at 4. 1 Third, Synopsys did not waive its privilege when it referenced a previously produced 2 document by bates number (a document that, six days later, Synopsys clawed back). 3 Under Fed. R. Evid. 502(b), the disclosure of a privileged document in a federal proceeding 4 “does not operate as a waiver” if: “(1) the disclosure is inadvertent; (2) the holder of the privilege 5 or protection took reasonable steps to prevent disclosure; and (3) the holder promptly took 6 reasonable steps to rectify the error, including (if applicable) following Federal Rule of Civil 7 Procedure 26(b)(5)(B).” Fed. R. Civ. P. 502(b). Siemens asserts inadvertent disclosure and thus 8 has the burden of proving these elements. Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 9 F.2d 18, 25 (9th Cir. 1981). 10 Synopsys’s privilege was not waived because referencing the bates number is not an 11 independent disclosure of the actual document, the error was promptly rectified, and in any case 12 Siemens did not carry its burden. 13 14 2. Synopsys’s Document Productions 15 The parties also raise various disputes about Synopsys’s document productions.4 16 First, the court already resolved the issue of whether Synopsys waived its privilege over a 17 document by referencing its bates number in an interrogatory response. 18 Second, Siemens contends that it is entitled to documents related to Synopsys’s acquisition of 19 Extreme DA Corp. According to Siemens, those documents “are relevant to damages in this action 20 because they relate to the valuation of technology in the same field as the patents asserted in this 21 litigation.”5 But the valuation of “technology in the same field” is a very broad conception of what 22 is relevant to patent-infringement damages. See N.D. Cal. Patent L.R. 3-8(a). A reasonable-royalty 23 analysis, for example, would be more closely tailored to the asserted patents (or analogous 24 inventions). Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 25 1970). Also, documents “related to” an acquisition could be unrelated to technology valuation. On 26
27 4 Joint Disc. Letter Br. – ECF No. 268-5. 1 this briefing, the court denies the motion to compel these documents — but as explained below, 2 the court will allow supplemental briefing. 3 Third, the result is different for documents related to Magma Automation’s valuation of its 4 intellectual property before Synopsys acquired Magma, because one of the asserted patents was 5 originally a Magma patent. That said, Synopsys has mostly already provided these documents. 6 The court adopts Synopsys’s proposal: it will search for “Magma’s documents that were created 7 by or for Magma, preceding Synopsys’[s] acquisition, that concern whether Magma had its own 8 valuation of its intellectual property.”6 9 Fourth, Siemens seeks damages documents, such as expert reports, from Synopsys’s litigations 10 against Extreme DA and Magma before it acquired those companies. Siemens contends that these 11 documents are relevant at least to the apportionment aspect of damages in this case. Finjan, Inc. v. 12 Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 4272870, at *4 (N.D. Cal. July 14, 2015) 13 (apportionment refers to distinguishing between an accused product’s patented and unpatented 14 features). Synopsys counters essentially that Siemens did not carry its burden of explaining any 15 further.7 16 As for the Magma litigation, the documents are relevant for the same reason that Magma’s 17 own technology valuations are relevant, so the court orders production of the documents listed by 18 Siemens.8 19 As for the Extreme DA litigation, the relevance is unclear from the current briefing. Siemens 20 mentions apportionment, but apportionment focuses on the accused product, which here is 21 Siemens’ own product Aprisa. The task of valuing Aprisa’s patented and unpatented features may 22 not be helped by any valuations from the Extreme DA litigation, given that unlike the Magma 23 litigation, the Extreme DA litigation did not involve any of the asserted patents here (that the court 24 is aware of). Synopsys distinguishes between Extreme DA’s technology and the routing 25 26 6 Id. at 4. 27 7 Id. at 2, 4–5. ] functionalities at issue in this case.’ Another consideration is that if damages documents from the 2 || Extreme DA litigation have relevance, then any technology-valuation documents from Synopsys’s 3 acquisition of Extreme DA could be relevant too. 4 The existing letter brief does not resolve these questions, but of course space was limited. So if 5 Siemens wants to press the point, it may submit a seven-page brief within seven days. If Siemens 6 || does so, Synopsys may submit a seven-page opposition seven days later. 7 Fifth, regarding Synopsys’s financial records, the court adopts Synopsys’s proposal: it will 8 “provid[e] a final supplement of its financials spreadsheet to include ‘ship-to-location’ for each 9 || customer.”!? 10 11 3. Siemens’ Document Productions 12 The parties’ third dispute appears to be premature. The parties discussed alleged deficiencies 13 in Siemens’ document productions on the seventh day after the close of fact discovery. In the letter 14 || brief, Siemens said it “has already, or will be[,] producing the requested materials.” The court 3 15 deems the issue preserved and the parties may raise any continuing dispute. 16 This resolves ECF Nos. 265-2, 269, and 270. i 17 IT IS SO ORDERED. EC 18 Dated: September 22, 2023 Let LAUREL BEELER 19 United States Magistrate Judge 20 21 22 23 24 25 || ” Id. at 3-4. 27 '0 Td. at 5. 28 '! Joint Disc. Letter Br. — ECF No. 265-2.