ORDER ON DISCOVERY DISPUTE

Re: Dkt. No. 176

WILLIAM H. ORRICK, District Judge.

Currently before me is EON's motion to compel Apple to produce documents responsive to EON's second request for production of documents. As narrowed on this motion, EON seeks documents relating to APNs1, iMessage, or FaceTime that were created, filed, or used at trial in three prior patent infringement cases where Apple was a party: VirnetX Inc. v. Apple Inc., No. 6:12-cv-00855-RWS (E.D.Tx.); Unwired Planet, LLC v. Apple Inc., No. 13-cv-04134-VC (N.D.Cal); SimpleAir, Inc. v. AWS Convergence Technologies, Inc., et. al., No. 2-09-cv-00289 (E.D.Tx.).

In this District, "the appropriate standard for determining the relevance of documents from those other cases turned on the similarity between the patents in the disputes. To satisfy the standard, the other case must involve `the patents-in-suit or patents covering the same or similar technologies, features, or designs as the patents-in-suits.' . . . . [T]he starting point of the `technological nexus' inquiry is the patents at issue, not the products at issue. And so, to ascertain the degree to which the technology overlaps, the necessary comparison here is between the patents involved in this case and the patents in the earlier disputes." Apple Inc. v. Samsung Elecs. Co., No. 12-CV-0630-LHK PSG, 2013 WL 3246094, at *20 (N.D. Cal. June 26, 2013). "The failure to meet the technological nexus standard, however, does not preclude discovery from other litigation. The party seeking discovery instead must show that each category of documents it seeks is relevant under the traditional Rule 26(b) standard." Id.

EON contends that the "technological nexus" between the patents at issue in this case and the patents at issue in the VirnetX, Unwired Planet, and SimpleAir cases "are methods and systems for the establishment and transmission of data to subscriber units over data connections." Dkt. No. 179 at 2. Apple counters that EON's definition of nexus is far too broad, impermissibly relies on the '101 Patent (which Apple asserts does not mention or accuse APNs, iMessage, or FaceTime), and is inconsistent with EON's prior representations about the scope of the '491 Patent claims at issue. Apple's version of the technological nexus is much narrower: "a system that determines whether Path A is impaired and then transfers communication to Path B as a result." Dkt. No. 180 at 4.

In my prior Order requiring supplemental briefing on this dispute (Dkt. No. 178), I directed EON to show — through citation to specific portions of the dockets in the VirnetX, Unwired Planet, and SimpleAir cases — where the claims actually litigated in those cases overlap with the patent claims/technology at issue here. Dkt. No. 178. EON failed to do so (other than a citation to the Markman Order in the SimpleAir case). However, EON did cite to portions of the dockets in those three cases to explain the relevance under the general Rule 26(b) standard, in particular where data transmission and the FaceTime and APNs instrumentalities accused in this case were discussed. Dkt. No. 179 at 5-7.

While Apple complains of burden and lack of proportionality, as well as the difficultly of handling other parties' confidential information under the protective orders in those cases, Apple's concerns can be accommodated. I ORDER that:

If, after reviewing the production required by this Order, EON has a good faith basis for seeking additional categories of information (e.g., pleadings or discovery responses), it may do so, but only if supported by specific citations to materials already produced to demonstrate relevance.

IT IS SO ORDERED.