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District Court Orders Plaintiff to Produce Factual Support for Infringement Contentions Regardless of Work Product Doctrine

Huawei and Blackberry filed motions to compel seeking the factual material that the plaintiff, SPH, had relied upon to support its infringement contentions. SPH opposed the motion to compel, arguing that Defendants’ requests seek the universe of documents that SPH’s litigation counsel reviewed and considered to formulate the infringement contentions.

The district court believed that this overstated the Defendants’ requests and this requests were more appropriately directed at the documents upon which SPH relied. The district court stated that “Defendants are entitled to know the facts upon which SPH relies for its claims of infringement so they can respond to SPH’s infringement positions.”

In addition, the district court was not persuaded by SPH’s argument that the factual material were protected by the word product doctrine. “The materials sought are not the work product of counsel; instead, they are the facts SPH relied upon to contend that Defendants’ accused devices meet the claim limitations of the asserted patents.”

The district court also rejected SPH’s procedural objections. “SPH’s response indicating it was not withholding any responsive non-privileged documents, and then asserting responsive documents are in fact being withheld based upon the work-product doctrine was misleading to Huawei. Any delay in filing the motion was compounded by SPH’s less than candid discovery response.”

Accordingly, the district court granted the motion to compel.

SPH America, LLC v. Research in Motion, LTD d/b/a Blackberry, Case No. 13-CV-2320-CAB-KSC (S.D. Cal. Oct. 20, 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or