Following consideration of the parties’ letters and a discovery conference on the issues, Judge Richard G. Andrews ordered that (i) the number of claims plaintiff may assert be limited to eight (8) per patent, and that (ii) defendant submit a proposed order and supporting letter specifying the documents, which are in the possession of a third party, that plaintiff be required to produce. Agincourt Gaming LLC v. Zynga Inc., C.A. No. 11-720-RGA (D. Del. May 14, 2014). The parties’ redacted letters filed on these issues highlight the parties’ disputes. See D.I. 127 (Defendant’s Redacted Opening Letter); D.I. 130 (Plaintiff’s Redacted Responsive Letter).
As to the issue regarding the number of asserted claims, plaintiff had initially asserted fifty-five (55) claims across three patents. (D.I. 127 at 2.) Defendant claimed that plaintiff had represented that it did not intend to present all of those 55 claims to the jury. (D.I. 127 at 2.) Plaintiff agreed that it would consider dropping certain claims depending on the number of claim terms defendant identified for construction. (D.I. 127 at 3; D.I. 130 at 3.) Defendant identified 40 terms for construction, but plaintiff found many of the identified terms were non-technical, and therefore had no “intrinsic basis for specialized definition.” (D.I. 130 at 3.) Plaintiff thereafter requested that defendant pick twenty (20) of the (40) identified terms, and further asserted it would “elect claims to get to 10.” (D.I. 130 at 3.)
At that point, the parties reached an impasse. Defendant requested that the Court order plaintiff to narrow the number of claims to “5 per patent” before the “parties expend resources on claim construction for claims that will be dropped.” (D.I. 127 at 3.) Following the discovery conference, Judge Andrews granted defendant’s request in part, ordering that plaintiff may elect “no more than eight claims from each of the asserted patents.” (D.I. 125). Judge Andrews did note in the Court’s Order, however, that “[u]pon a showing of diligence, and with due consideration for prejudice, Plaintiff may request to alter the election of claims.” Order at 1.
The discovery issue addressed whether plaintiff would be required to produce documents in the possession of a third party, Bally Gaming, Inc. (“Bally”), from whom plaintiff acquired a portion of its multi-patent family. (See D.I. 127 at 1-2; D.I. 130 at 1-2.) On this issue, the parties’ dispute centered around whether plaintiff had “control” over Bally—that is, the legal right to obtain the documents required on demand—based on the Patent Sale Agreement (“PSA”) plaintiff and Bally entered into. (See D.I. 127 at 1-2; D.I. 130 at 1-2.) Defendant asserted that plaintiff’s reliance on a “restrictive definition” of the term “Documents” found in the PSA was improper. (D.I. 127 at 2.) Following the discovery conference, Judge Andrews provided a very specific order:
“The Defendant should submit a proposed order that specifies what the Plaintiff should be ordered to produce. The Defendant should consider the proposed order as an ‘all-or-nothing’ request. If the Court decides it is overbroad, the Court may well deny it in its entirety just for that reason. The Defendant should also submit a separate letter that explains, in as much detail as is necessary, why it wants the information and how it is related to any of the disputed issues in the case.”
Order at 1. Judge Andrews also gave plaintiff and defendant an opportunity to submit responsive and reply letters on the issue, respectively. (D.I. 125.)