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Motion to Compel Patent Licenses Granted; Ruling Reserved As To Admissibility

By Michael C. Smith

LML Patent Corporation v. JP Morgan Chase & Co., et. al., 2:08cv00448 (E.D. Tex. 1/28/11)

Judge: David Folsom

Holding: Plaintiff's Motion to Compel GRANTED

Plaintiff sought to compel production of unredacted copies of all of the defendants' patent licenses with DataTreasury, and the corresponding transaction volume information, and provide a 30(b)(6) witness on this topic.

Judge Folsom granted the motion, holding that "Plaintiff has sufficiently shown that the amounts paid in the DataTreasury licenses, as well as any associated transaction volumes, are ?relevant to any party?s claim or defense.? Fed. R. Civ. P. 26(b)(1). In particular, the amounts and volumes may be relevant to Plaintiff?s Georgia-Pacific analysis because, at least for purposes of discoverability, the DataTreasury patents and the patent-in-suit in the above-captioned case relate to sufficiently similar fields of invention. . . . [thus] this Court finds here as in DataTreasury that discovery on transaction volumes and ?the negotiations surrounding th[e]se licenses? is permissible."

But the Court was careful to note that its ruling was as to discoverability, not admissibility.  "As to admissibility, Plaintiff?s motion is a discovery motion, and although the parties have touched on some of the Georgia-Pacific factors, the briefing has not fully addressed Plaintiff?s damage model. Further, although the parties touch on whether the ResQNet decision can be applied to licenses on patents other than the patent-in-suit in the above-captioned case, that issue is also better addressed at the admissibility stage. Therefore, the Court is not in a position to rule on admissibility at this time. This Order should only be read to address discoverability."

From Docket Navigator.

Full post as published by Eastern District of Texas Federal Court Practice on February 02, 2011 (boomark / email).