Motion to Compel Settlement Agreements Denied Where Document Requests Only Requested License Agreements

Echostar Satellite L.L.C. (“Echostar”) moved to compel the production of settlement agreements from the plaintiff. Several issues arose on the motion, including whether the Magistrate Judge had jurisdiction to grant the motion even though the discovery cutoff date had passed, whether a party has an obligation to supplement its prior production with documents that were not created until after the discovery cutoff, and whether the settlement agreements were responsive to the prior document requests. Turning to the first issue, the court found that it had jurisdiction because of an extension due to a mediation date. “Ordinarily, any motion concerning discovery must be filed sufficiently in advances of the discovery cutoff to allow any production to be completed prior to the cutoff date. Here, however, the parties had obtained an extension of the mediation date from the District Judge in order to allow the instant motion to be decided before the mediation. The Court concludes that, given the foregoing, it has jurisdiction to entertain the instant motion.”

On the second issue, the court concluded that the parties’ obligation to provide supplemental production continues after the discovery cutoff and applies to document created after the discovery cutoff. “After reviewing the authorities cited by the parties, the Court concludes that the obligation to provide supplemental production pursuant to Rule 26 survives the discovery cutoff. Having made that determination, the Court further concludes that there is no principled basis for treating newly created documents differently from newly discovered documents.” The court then turned to the issue of whether the settlement agreements were responsive to the prior document requests. “After reviewing the prior document requests, the Court concludes that they were intended to address license agreements. Settlement agreements appear to have been contemplated by the requests only to the extent they included license agreements. The Court is persuaded by plaintiff’s contention that settlement agreements relating to expired patents are not sufficiently related to license agreements to be fairly within the contemplation of the discovery requests.” Accordingly, the court denied Echostar’s motion to compel. In re Katz Interactive Call Processing Litigation, Case No. 07-ML-1816 RGK (FFMx) (C.D. Cal. May 29, 2014) The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.

Stan Gibson, an experienced technology and IP trial lawyer, represents inventors, manufacturers, owners and others in litigation centering on complicated technology. Stan's practice is national in scope and he represents both plaintiffs and defendants and has litigated dozens of cases on behalf of his clients, taking many of them to trial. Although most cases settle, Stan's ability to take cases to trial enhances their value and drives favorable verdicts and settlements. Contact him at 310.201.3548 or SGibson@jmbm.com. Read More

Greg Cordrey, an experienced patent litigator and former flight test engineer, represents a wide range of industries including medical device, computer, e-commerce, semiconductor, automotive, aircraft, and consumer products. He has litigated patent cases nationwide and has practiced before the Federal Circuit and the U.S. Patent and Trademark office as a registered patent attorney with experience in concurrent litigation and patent reexamination proceedings. Greg is recognized as one of the "Best Lawyers in America" in IP Law, as well as a "Super Lawyer" and "Rising Star." Contact him at 949.623.7236 or GCordrey@jmbm.com. Read More

Rod Berman is recognized by the Daily Journal as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. Rod's practice focuses on patent, trademark, copyright, unfair competition and internet responsibilities and includes counseling, litigation, opinions, licensing and prosecution. In addition to being a registered patent attorney, Rod is a court-recognized expert in patent and trademark law, and has successfully argued before the Federal Circuit. Contact Rod at 310.201.3517 or RBerman@jmbm.com. Read More

Andrew Shadoff, is a litigation partner and a member of JMBM's Patent Litigation Group. He is experienced in handling patent, copyright and trademark infringement cases. He has obtained wins for his clients at the pleading stage and on summary judgment, and has authored multiple successful briefs in appeals before California's Second District Court of Appeal and the U.S. Court of Appeals for the Ninth Circuit. Contact him at 310.712.6856 or AShadoff@jmbm.com. Read More

Joe Mellema's practice focuses on litigation in federal and state courts, including the protection and enforcement of intellectual property rights, and business and commercial disputes. He has handled patent, trademark, copyright, trade secret, unfair business practices, antitrust, and business and commercial lawsuits in all phases of litigation and arbitration. In addition to a law degree, he has dual degrees in electrical engineering and physical sciences, and was formerly a systems engineer at Raytheon Company. Contact him at 949.623.7232 or at JMellema@jmbm.com.