Magistrate Judge Williams issues order compelling discovery of potentially infringing products made by third parties.
Magistrate Judge Karen M. Williams, of the District of New Jersey, sitting by designation, recently ruled on a dispute regarding the scope of permissible discovery into devices made by third parties. Tessera Inc. v. Sony Electronics, Inc., et al., C.A. No. 10-0838-RMB-KMW (D. Del. Nov. 15, 2012). At issue was alleged infringement of the plaintiff’s patents relating to “semiconductor products where multiple chips are stacked, one on top of another, typically for the purpose of facilitating their use in electronic devices where space is at a premium.” Id. at 2. A dispute arose after the plaintiff served discovery seeking information about accused products not identified in the complaint, or in an initial phase of discovery. Id. at 3. The defendant argued, among other things, that the discovery request improperly sought information not only about its products that incorporated its own infringing chips, but also about its “products that use chips made by third parties.” Id. at 8-9. The court found that because the plaintiff’s complaint alleged infringement based on the defendants’ making, using, selling, offering for sale in, or importing into the United States infringing chips, the plaintiff’s “claims purport to include not only chips manufactured by [the defendants] and products using [the defendant's] chips, but also potentially [the defendant's] products including chips manufactured by other third party companies that allegedly infringe [the] patents.” Id. at 10-11. The court held that the plaintiff’s discovery was permissible under Rule 26, which allows “[p]arties [to] obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense.” Id. at 9, 11. The court also found that Rule 26 permitted the plaintiff to seek discovery not only about products the defendant knew were being made, used, sold, offered for sale in, or imported into the United States, but also about any products the defendant “had reason to believe were being made, used, sold, offered for sale in or imported into the United States.” Id. at 11.