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District Court Orders Search of Inventors Emails and Finds That Discovery Is Proportional to Needs of Case Because Search Terms Would Be Used

In this patent infringement action, T-Mobile sought email discovery from seventeen named inventors of the asserted patents and the licensing executives involved in the parties’ FRAND negotiations. T-Mobile asserted that the discovery could reveal the inventors’ contemporaneous understanding of the invention and whether T-Mobile is an unwilling FRAND licensee. T-Mobile also proposed limiting the email discovery by specific search terms.

Huawei raised two arguments in support of its objections to producing the requested documents. First, Huawei contended that T-Mobile had not shown that the e-mail discovery would be necessary or proportional to the needs of the case. Second, T-Huawei argued that T-Mobile delayed in seeking the discovery warranted denying the requested relief.

In analyzing the arguments, the district court was not persuaded by either of Huawei’s arguments. “As other courts have explained in complex case such as this, Huawei’s proposed limitations on e-discovery or the number of email custodians is not typically warranted. See Knauf Insulation, LLC v. Johns

Manville Corp., No. 1:15-CV-00111-WTL, 2015 WL 7089725, at *3 (S.D. Ind. Nov. 13, 2015). The emails from the inventors and licensing executives appear to at least meet the “reasonably calculated” standard articulated in Rule 26(b)(1). Finally, Huawei’s proportionality argument is not persuasive because T-Mobile provides adequate limitations on the discovery by requiring particular search terms.”

The district court also rejected Huawei’s second argument. “Huawei’s second argument is that T-Mobile’s delay in finalizing an ESI Order warrants denying the requested email discovery. Without getting into the details of Huawei’s argument, the Court notes that the deadline to complete fact discovery and file motions to compel has not yet passed. . . . While the substantial document production deadline has passed, the Court is not persuaded that the emails T-Mobile seeks would place an impossible burden on Huawei.  Finally, Huawei does not cite any persuasive authority suggesting that T-Mobile’s delay in finalizing an ESI Order is itself sufficient to preclude potentially significant email discovery.”

Accordingly, the district court allowed the discovery to proceed.

Huawei-Technologies Co. LTD v. T-Mobile US, Inc., Case No. 2:16-CV-00052-JRG-RSP (E.D. Tex. May 22, 2017)

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

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