Memorandum Opinion and Order Denying Amazon's Motion for Protective Order and Granting-In-Part Semcon's Motion to Compel.
Before the Court is Defendant Amazon.com, Inc.’s (“Amazon”) Motion for Protective Order (the “Motion for Protective Order”) (Dkt. No. 70) and Plaintiff Semcon IP, Inc.’s (“Semcon”) Motion to Compel Amazon.com, Inc. to Provide Discovery (the “Motion to Compel”) (Dkt. No. 71). Having considered the parties’ arguments and relevant authorities, the Court hereby DENIES Amazon’s Motion for Protective Order, GRANTS-IN-PART Semcon’s Motion to Compel, with the remainder of Semcon’s Motion to Compel CARRIED, all for the reasons stated herein.
I. Discovery Regarding Accused Products
Semcon sued Amazon for patent infringement on May 9, 2018. (Dkt. No. 1.) The Patents-in-Suit are U.S. Patent Nos. 7,100,061; 7,596,708; 8,566,627; and 8,806,247, and generally cover methods and apparatuses for conserving power and resources used by a computer. (Id. ¶ 14.) Semcon alleges that certain non-parties, such as Qualcomm Inc., Texas Instruments Inc., and Amlogic, Inc., sell products which embody System-on-a-Chips (“SoCs”), “which . . . perform [a type of power management technique called] Dynamic Voltage and Frequency Scaling or ‘DVFS,’ (sometimes alternatively referred to as Dynamic Clock and Voltage Scaling and ‘DCVS’).” (Id. ¶ 15.) According to Semcon, certain Amazon products infringe the Patents-in-Suit because they “utilize SoCs and associated software that perform DCVS or DVFS for power management.” (Id. ¶ 16.)
Pursuant to those allegations, Semcon served discovery on Amazon seeking information about “Amazon Products,” which it defined as, inter alia, “all products that include or utilize adaptive power control and/or dynamic voltage frequency scaling (‘DVFS’).” (Dkt. No. 82-2 at 2; see, e.g., id. at 9 (Interrogatory No. 1, Semcon’s First Set of Interrogatories, November 20, 2018).) Amazon provided Semcon with a “chart listing [only] the Amazon devices identified in Semcon’s Infringement Contentions.” (Dkt. No. 70 at 6.) Consistent with its initial request, Semcon asked Amazon to supplement its response to include all products that perform DVFS. (Dkt. No. 71-2 (February 5, 2019 Letter from Semcon to Amazon).) Amazon explained that “it could not perform searches for products that perform DVFS,” but that it would investigate any products that Semcon believes does perform such power saving techniques. (Dkt. No. 70 at 6; see also Dkt. No. 71-3 (March 7, 2019 Email from Semcon to Amazon).) The parties continued to meet-and-confer on the issue, with Amazon ultimately not producing any of the requested information. (Dkt. No. 70-2 (April 11, 2019 Letter from Semcon to Amazon).)
On June 13, 2019, Semcon deposed Pushkar Gejji, an Amazon Rule 30(b)(6) witness. (Dkt. No. 71-4 (Rough Deposition Transcript of Mr. Gejji deposition).) Mr. Gejji testified that certain Amazon products, such as Amazon Kindle e-readers, use NXP/Freescale SoCs that perform DVFS, and that he was not aware of any public documents that would uncover the same. (Id.) Semcon argues that this testimony shows that “Amazon’s representation—that it would be impossible to search for Amazon Products that include or utilize adaptive power control and/orDVFS—[is] false” and now seeks an order compelling Amazon to produce discovery about any products that use DVFS. (Dkt. No. 71 at 3.) Specifically, Semcon seeks an order compelling Amazon to “(1) inquire of NXP regarding whether each of the Amazon Products containing NXP/Freescale SoCs include or use adaptive power control and/or DVFS [collectively, the “DVFS Products”]; (2) supplement its responses to Interrogatory Numbers 1 through 4, and 9 to include [information about the DVFS Products];” (3) supplement its document production to include [information about the DVFS Products];” and (4) produce a Rule 30(b)(6) witness to testify regarding Topic Numbers 1 through 13 as they relate to NXP/Freescale SoCs.” (Dkt. No. 71 at 3–4.)
Amazon opposes Semcon’s request and separately moves for a protective order precluding discovery on its Kindle e-readers. (Dkt. No. 70.) Amazon argues that Semcon did not specifically identify Kindle e-readers with NXP/Freescale SoCs in its contentions and that “Semcon’s accusations against different Amazon products, that use different SoCs from different suppliers, do not provide notice that Kindle e-readers with NXP/Freescale SoCs are accused.” (Id. at 3.) Amazon also argues that Semcon failed to diligently pursue the discovery it now seeks to compel. (Id. at 3–7.) Amazon points to various websites that allegedly show that “the existence of Amazon’s Kindle e-readers, their relevant source code, and the fact that they used NXP/Freescale SoCs, was all publicly [available].” (Id. at 4.) Finally, Amazon contends that permitting the requested discovery would be “highly prejudicial.” (Id. at 7.) Since the accused SoCs are provided by third-parties, Amazon would have to independently investigate how those chips work to adequately prepare a defense. Amazon would not have sufficient time to do such given that fact discovery closes on June 28, 2019. (Id.)
Considering the above arguments and the parties’ briefing, the Court finds that Semcon is entitled to discovery regarding Amazon products that utilize DVFS, including Amazon’s Kindle e-reader with NXP/Freescale SoC. Discovery is not limited to only those products specifically identified in the plaintiff’s initial infringement contentions. FED. R. CIV. P. 26(b)(1) (“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense . . .”); GeoTag, Inc. v. Frontier Commc’ns Corp., No. 2:10-cv-00265-JRG, 2013 WL 12141427, at *2 (E.D. Tex. June 26, 2013) (allowing discovery into products that were “reasonably similar” to those identified in the parties’ contentions). A plaintiff may also seek discovery concerning products that are “reasonably similar” to the accused products in the case if (1) the infringement contentions gave notice of a specific theory of infringement, and (2) the products it seeks discovery of operate in a manner reasonably similar to that theory. GeoTag, 2013 WL 12141427, at *2. Amazon does not contest that Semcon’s theory of infringement for the Kindle e-reader with NXP/Freescale SoCs would be reasonably similar to the theory disclosed in Semcon’s contentions for the other accused products. (Dkt. No. 70 at 3 (“Setting aside the first two hurdles Semcon would have to clear, Semcon cannot demonstrate the requisite diligence . . .”).)1
Also, the Court is not persuaded that Semcon failed to diligently pursue such discovery. Semcon notified Amazon about any alleged deficiencies in discovery as early as February 5, 2019—well in advance of the June discovery deadline—and both parties continually met and conferred in an effort to resolve the issues. (Dkt. No. 71-2 (February 5, 2019 Letter from Semcon to Amazon); Dkt. No. 71-3 (March 7, 2019 Email from Semcon to Amazon); Dkt. No. 70-2 (April 11, 2019 Letter from Semcon to Amazon); Dkt. No. 71-5 (June 14, 2019 Email from Semcon to Amazon).) Responding to Semcon’s discovery requests, Amazon stated that it could not search for any products that use DVFS, but that it would investigate any such products that Semcon believed did use DVFS. (Dkt. No. 70 at 6.) The Court finds that it was reasonable for Semcon to rely on those representations as Amazon, and not Semcon, would be in the best position to determine whether Amazon possessed any products that use DVFS. However, after learning in the deposition of Mr. Gejji that Amazon does potentially make such products (e.g., the Amazon Kindle e-reader), Semcon promptly sought additional discovery. Semcon has not been dilatory or laid behind the log.
Accordingly, the Court finds that Amazon’s Motion for Protective Order should be denied and Semcon is entitled to pursue discovery regarding Amazon products that perform DVFS, including Amazon’s Kindle e-reader with NXP/Freescale SoCs.
II. Discovery Regarding Pre-Suit Notice of Infringement
Semcon also moves for an order compelling Amazon to provide discovery on “Amazon’s knowledge of the patents-in-suit and notice of its infringement.” (Dkt. No. 71 at 1.) While Amazon states that it first became aware of the Patents-in-Suit when the instant suit was filed, “Semcon contends that Amazon may have been put on notice [much earlier] through communications with Intellectual Ventures and/or through receipt of a subpoena in Semcon IP Inc. v. Huawei Device USA Inc., et al., No. 2:16-cv-00437-JRG-RSP (E.D. Tex.).” (Id. at 4.) Semcon explains that Amazon’s Rule 30(b)(6) witness, Mr. Scott Hayden, testified that (1) “Amazon did not search for or investigate whether Amazon communicated with Intellectual Ventures regarding any of the patents-in-suit” and (2) “that he was informed internally about a June 17, 2017 subpoena to Amazon concerning the same patents-in-suit in the Semcon v. Huawei case,” but that Amazon did not investigate whether it became aware of the Patents-in-Suit at that time. (Id. at 5.) Semcon argues that “Amazon’s position evinces willfulness blindness” and thus discovery about its communications with Intellectual Ventures and response to the Huawei subpoena are relevant to this case. (Id.)
Amazon argues that Semcon’s Motion violates Local Rule CV-7(h). The local rules provide that parties must meet-and-confer in good faith and conclude that such discussions have ended in an impasse before filing an opposed discovery motion. LR. CV-7(h). Amazon explains that “[w]hen Semcon filed its Motion, the parties were not at an impasse on th[e] issue [of notice.]” (Dkt. No. 84 at 5.) According to Amazon, at the parties’ June 28, 2019 meet-and-confer, “Amazon agreed to investigate and follow-up regarding its first awareness of the patents-in-suit,” and “Semcon gave no indication it was filing a motion to compel.” (Id.) The next day, Semcon emailed Amazon, stating that it believed the parties had reached an impasse and filed the instant Motion. (Dkt. No. 84-9 (June 19, 2019 Email from Semcon to Amazon).) Amazon subsequently responded that (1) it understood that the parties had not yet reached an impasse; (2) it had “agreed [during the meet-and-confer to] go back and confirm [its prior statement that it first learned of the Patents-in-Suit at the time suit was filed]; and  [that it] is currently looking into this topic further.” (Id. (June 20, 2019 Email from Amazon to Semcon).) Amazon contends that this correspondence shows that the parties have not reached an impasse, and as such, it was improper for Semcon to file the instant Motion.
Having reviewed the parties’ briefing and correspondence attached thereto, the Court concludes that it does not have all of the requisite information before it to make a final determination at this time. Accordingly, the Court hereby CARRIES this portion of Semcon’s Motion to Compel pending the hearing set on July 22, 2019. Both parties are directed to use their continuing best efforts to resolve this issue prior to the hearing date through their continuing meet-and-confer efforts.
Based on the foregoing, the Court hereby DENIES Amazon’s Motion for Protective Order (Dkt. No. 70), and GRANTS-IN-PART Semcon’s Motion to Compel Amazon.com, Inc. to Provide Discovery (Dkt. No. 71). It is ORDERED that Amazon shall (1) inquire of NXP regarding whether each of the Amazon Products containing NXP/Freescale System-on-a-Chips include or use adaptive power control and/or Dynamic Voltage and Frequency Scaling; (2) supplement its responses to Semcon’s Interrogatory Numbers 1 through 4, and 9 to include Amazon Products containing NXP/Freescale System-on-a-Chips that include or use adaptive power control and/or Dynamic Voltage and Frequency Scaling; (3) supplement its document production to include Amazon Products containing NXP/Freescale System-on-a-Chips that include or use adaptive power control and/or Dynamic Voltage and Frequency Scaling; and (4) produce a Federal Rule of Civil Procedure 30(b)(6) witness to testify regarding Semcon’s Topic Numbers 1 through 13 as they relate to NXP/Freescale System-on-a-Chips.
The Court CARRIES the remaining portion of Semcon’s Motion to Compel regarding discovery on Amazon’s knowledge of the patents-in-suit and notice of its infringement pending the hearing set on July 22, 2019.
Case No. 2:18-cv-00192