DISPLAYLINK CORPORATION, Plaintiff, v. MAGIC CONTROL TECHNOLOGY CORPORATION, Defendant No. C07-01998 RMW (HRL).Docket No. 67 United States District Court, N.D. California, San Jose Division July 23, 2008 Counsel James Chung-Yul Yoon, Monica Mucchetti Eno, Robin Lynn Brewer, Ryan R. Smith, Stefani Elise Shanberg, Wilson Sonsini Goodrich &amp; Rosati, P.C. Palo Alto, CA, Brian Dietzel, Woo J. Kim, Wilson Sonsini Goodrich &amp; Rosati, A Professional Corp., for Plaintiff. Richard F. Cauley, Erick Packard Wolf, Franklin Eugene Gibbs, Wang, Hartmann, Gibbs &amp; Cauley, P.C., Newport Beach, CA, for Defendant. Lloyd, Howard R., United States Magistrate Judge ORDER GRANTING IN PART PLAINTIFF'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS *1 Plaintiff Displaylink Corporation (“Displaylink”) filed the instant action, seeking declaratory judgment that its products do not infringe MCT's U.S. Patent No. 7,203,788 (“the ′788 patent”). Defendant Magic Control Technology (“MCT”) filed a counterclaim for infringement. Presently before this court is Displaylink's motion to compel the production of documents. The requests at issue were served in July 2007; and, upon review of the moving and responding papers, it appeared that there was no serious dispute as to the relevance of the discovery sought. The only apparent point of contention was the timing of MCT's production. In view of MCT's representation that it would be producing additional responsive documents by June 24, 2008, this court continued the motion hearing and directed the parties to file a status report identifying what issues (if any) remained for the court to resolve. MCT reportedly produced additional documents on June 25, 26, 28 and July 11, 2008. The parties now advise that there is no longer an issue with respect to Displaylink's Request Nos. 10 and 23. Accordingly, the motion as to those requests is deemed moot. As for those items remaining in dispute, this court rules as follows: A. Research, Design and Development of MCT's Display Adapter Technology (Request Nos. 3, 4, 16 and 17) Displaylink seeks the following documents: • internal communications emails in Mandarin or English that contain substantive discussion about the actual design, development or manufacture of the products MCT claims incorporate the ′788 patent; • emails from or to the named inventor and MCT president, James Liu; and • engineering notebooks, engineering test reports (from the development phase) and source code for its Display Adapter Technology. At the motion hearing, MCT's counsel represented to the court that MCT has produced all responsive documents within its possession, custody or control. Further, MCT confirmed that it has no engineering notebooks from the “development phase” or otherwise. Based on MCT's representations, plaintiff's motion is deemed moot as to these documents. As for the requested source code, MCT now contends that the discovery sought was never properly requested and is irrelevant in any event. Insofar as plaintiff seeks source code to determine whether MCT's products use “FIFO,” MCT says that information is available in product specifications which have already been produced. With respect to claimed damages, MCT argues that plaintiff does not need its source code to determine whether MCT's products practice the claimed invention, citing Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1548 (Fed.Cir.1995) (“Whether a patentee sells its patented invention is not crucial in determining lost profits damages.”). For its part, Displaylink says that MCT has asserted that its products practice the claimed invention. To the extent MCT will rely on that assertion for any purpose at trial, plaintiff says it is entitled to discovery of MCT's source code to verify MCT's contentions. Additionally, plaintiff asserts that MCT's source code may contain notes or comments which bear upon the design and development of MCT's products and the claimed invention. *2 The requested source code is encompassed by Displaylink's document requests, and Displaylink's motion specified source code as one of the items sought. (Mot. at p. 7). MCT said little in opposition to the motion, except to say that it was in the process of producing all responsive documents. In any event, this court finds that the requested source code is relevant or reasonably calculated to lead to the discovery of admissible evidence. FED.R.CIV.P. 26(b)(1). Moreover, there is a stipulated protective order in place which addresses confidentiality concerns. Accordingly, Displaylink's motion to compel the production of source code is granted. MCT shall produce the requested source code no later than August 6, 2008. B. Prior Art to the ′788 Patent (Request Nos. 6, 19, and 33-36) Displaylink moves to compel the production of file histories for the foreign patent applications MCT has identified as related to the ′788 patent. The applications in question were filed in Taiwan, China, Japan, Germany, Korea, the Netherlands, United Kingdom and France. MCT agrees to produce the requested documents and says it will do so when the documents are received from its foreign counsel. Accordingly, Displaylink's motion as to the file histories for the foreign patent applications related to the ′788 patent is granted. MCT shall produce the requested documents no later than August 6, 2008. C. Conception, Reduction to Practice or Development of the ′788 Patent (Request Nos. 12-13) Displaylink seeks production of the following documents: • internal emails in Mandarin or English that contain substantive discussions related to the development of the ′788 patent, including emails from or to the named inventor and MCT president, James Liu; • emails for the period January 2000 through mid-October 2001, including emails from or to the named inventor and MCT president, James Liu; • emails between and among VinChip, Targus and MCT from early 2000 through September 2003; • the executed agreements governing MCT's joint development work with VinChip, Cypress and Targus, including but not limited to written documents and possibly draft agreements about who would own the intellectual property arising from the parties' joint development work; • engineering notebooks, engineering test reports (from the development phase) and source code for its Display Adapter Technology; and • planning documents (i.e., milestone timelines), meeting agendas and/or meeting minutes. Displaylink believes that there must be more documents to produce. However, as noted above, MCT's counsel represented to the court that MCT has produced all responsive documents within its possession, custody or control and that there are no more responsive documents to be produced. Based on MCT's representations, plaintiff's motion is, for the most part, deemed moot. Nevertheless, as discussed above, Displaylink's motion to compel production of MCT's source code is granted, and the requested source code shall be produced by August 6, 2008. D. Sale, Market for and Marketing of MCT's Products (Request Nos. 7, 16, 25, 26, 31 and 32) *3 Displaylink seeks the following documents: • distributorship agreements between MCT and its distributors, including Tritton; • marketing presentations (including Powerpoint presentations); and • competitive analysis documents and/or documents related to market share. With respect to the requested distributorship agreements, MCT says that no such documents exist because its usual business practice is to enter into only mutual, non-written distributorship agreements. It therefore appears that there are no documents to compel. Nevertheless, no later than August 6, 2008, MCT shall produce declaration(s) from competent person(s) at the company attesting to its reported business practice re distributorship agreements. At oral argument, MCT represented that it has produced all responsive marketing presentations. As for “competitive analysis documents and/or documents related to market share,” MCT initially stated that no documents exist because it never conducted any “formal” analyses. However, at the motion hearing, MCT confirmed that it has produced all competitive analyses and documents related to market share, whether formal or informal. Based on MCT's representations, plaintiff's motion is deemed moot as to these documents. SO ORDERED. Footnotes  The identified countries include those which Displaylink says were discovered from MCT's documents produced after June 24, 2008.