Having carefully considered the briefing, the supporting materials in the record, and argument presented by counsel during the recent hearing, the Court ORDERS that HP's motions (Dkt. No. 139 and Dkt. No. 163) and Abstrax's motion (Dkt. No. 164) are GRANTED-IN-PART, as stated below.

HP filed its first motion (Dkt. No. 139) on December 19, 2014. Therein, HP asks the Court to compel Abstrax to supplement various interrogatory responses, designate a 30(b)(6) witness (or witnesses) to testify with respect to various topics, and produce documents—including certain documents from prior litigations involving the patent-in-suit and documents that HP argues were improperly withheld under a claim of privilege. On January 9, 2015, HP filed a second motion to compel (Dkt. No. 163), expanding the list of allegedly deficient interrogatory responses, seeking to compel a second deposition of Abstrax's founder, John Vidalakis, and again alleging that Abstrax has withheld documents under an improper claim of privilege.

Because of the considerable overlap in HP's motions, as well as a competing motion filed by Abstrax (and discussed below), the Court conducted a hearing on January 21, 2015. At said hearing, counsel for HP stated that many of the issues originally presented in its motions had been resolved by agreement of the parties. However, several issues remained ripe for determination by the Court, including:

The Court addresses each of HP's requests below, all relief not expressly granted herein is denied.

With respect to the first issue listed above, this is a complex case, and Mr. Vidalakis—as a co-founder of Abstrax and one of two designated corporate representatives—will undoubtedly provide testimony crucial to Abstrax's evidence at trial. In this context, the Court is persuaded that Abstrax should produce Mr. Vidalakis for a second deposition. However, the court is concerned by HP's failure to request additional time to depose Mr. Vidalakis, ex ante, and the tactical considerations such a delay implies. Similarly, the Court agrees with Abstrax that HP could have used its time more productively during the first deposition. Accordingly, the Court ORDERS Abstrax to produce Mr. Vidalakis for a second deposition, at a time and place to be agreed upon by the parties. However, the Court further ORDERS that such second deposition will be strictly limited to five (5) hours of testimony.

*2 HP has also moved the Court to compel Abstrax to produce a 30(b)(6) representative to testify with respect to numerous topics. See Dkt. No. 139 at 8-10; Dkt. No. 180 at 2-5. Following a review of HP's briefing and the argument presented during the January 21 hearing, the Court understands that a dispute exists with respect to the following categories and topics:

Category Document Retention Valuation of the Patent-in-Suit or other Assets Communications regarding HP and/or this Lawsuit Injunctive Relief “Software Implementation” Third Party Manufacturing Software Elements of the Asserted Claims Known in the Prior Art Topics Topic 1: “Your retention and/or destruction of documents and things produced by any party to the Prior Abstrax Litigations” Topic 2: “Your production and/or withholding of documents in the current litigation” Topic 44: “Abstrax's document retention policies and document retention protocols, including without limitation policies and protocols regarding emails and other electronic documents generated by Abstrax's employees” Topic 10: “The portion of value contributed by any claim of the Patent-in-Suit to each Product or process that Abstrax contends embodies or embodied any claim of the Patent-in-Suit” Topic 36: “The basis for Abstrax's belief as to the approximate total value of its assets and business, including but not limited to Abstrax's equipment, raw materials, inventory, intellectual property, and potential for future business” Topic 16: “Abstrax's internal communications regarding HP, the Accused Processes, the Patent-in-Suit, negotiations with HP, and/or this lawsuit” Topic 51: “Your contentions that Abstrax is entitled to an injunction in this litigation” Topic 52: “Your efforts to pursue an injunction in any prior Abstrax litigation, if any.” Topic 57: “Abstrax's contentions as to whether any claim recites a software implementation of an abstract idea” Topic 58: “Abstrax's contentions as to whether any claim recites a software implementation of using a fill-in-the blank template of assembly instructions” Topic 62: “Abstrax's understanding of third party manufacturing software” Topic 63: “Abstrax's contentions as to how and to what degree any claim improve over third party manufacturing software” Topic 64: “Abstrax's contentions as to whether any third party manufacturing software infringes any claim in its Patent-in-Suit” Topic 65: “An identification of the elements in any claim that were known prior to the earliest alleged priority date”

HP argues that Abstrax has failed to produce a witness for any of the topics listed above. See Dkt. No. 180 at 2-5. Abstrax counters, arguing that (1) the topics listed above are duplicative and have been the subject of extensive testimony during prior depositions; (2) many of the topics call for expert testimony; and that (3) many of the topics call for privileged information. See Dkt. No. 157 at 7-12.

The Court has considered the parties' arguments, and ORDERS as follows:

In order to avoid confusion as to the scope of this order, the Court provides an additional point of clarification. The Court has ordered Abstrax to produce a 30(b)(6) witness for an additional five (5) hours. The Court has also ordered Abstrax to produce a 30(b)(6) witness to testify with respect to certain topics, as stated above. At the hearing, both parties indicated that Mr. Vidalakis would likely serve as Abstrax's corporate representative for the disputed topics. However, to the extent that Mr. John LaLonde (or some other corporate representative) is better suited to provide testimony on any of the topics listed above, Abstrax shall so designate Mr. LaLonde, and HP is granted leave to use up to one (1) hour of its additional time in such a deposition. However, HP shall limit the total time spent in additional 30(b)(6) depositions to five (5) hours.

HP's motions originally sought to compel supplemental responses to numerous of HP's interrogatories. However, at the January 21 hearing, counsel for both parties—to their credit—informed the Court that the interrogatory issues presented in HP's motions had since been resolved by agreement. Accordingly, the Court ORDERS that, to the extend HP's motions (Dkt. Nos. 139 and 163) sought to compel supplemental response to HP's interrogatories, the motions are DENIED-AS-MOOT.

*4 At the January 21 hearing, counsel for Abstrax informed the Court that all material in Abstrax's possession has been produced, with the exception of certain videos from inspections takes in the prior cases.

After a review of the parties' briefing, the Court is not persuaded that the production of video-taped inspections of the Dell and Sun facilities is likely to lead to the production of admissible evidence. To the contrary, inspections of third-party manufacturing facilities—not accused of infringement in this case—would almost certainly be excluded at trial. Moreover, the Court is cognizant that Dell and Sun, who are not represented in this dispute, would likely object to a competitor's acquisition of video capturing their manufacturing processes; and, the Court is likewise convinced that compelling the production of such video tapes may well compel a violation of protective orders entered by this Court and sister courts in the Northern District of California. Accordingly, HP's motion to compel the production of video-taped inspections from the prior litigations is DENIED.

With respect to the remaining, disputed material from the prior litigation—including any deposition exhibits or transcripts, or any pleadings—Abstrax has represented to the Court that all such material has been produced.[3]Accordingly, the Court ORDERS Abstrax to conduct a further search of its records and either: (1) produce any non-privileged material in its possession, custody or control; or (2) serve on HP a sworn and verified statement confirming that all material has been produced.

At the January 21 hearing, HP advised the Court that it had substantially narrowed the dispute with respect to materials withheld under an allegedly defective assertion of the attorney-client privilege or work-product protections. At that time, the Court informed the parties that it would carry the narrowed dispute pending submission of additional briefing and in camera review of the disputed material. In the interim, HP notified the Court and Abstrax that it would no longer press its motions to compel in this respect. Accordingly, the Court ORDERS that, to the extend HP's motions (Dkt. Nos. 139 and 163) sought to compel the production of material withheld under a claim of privilege, the motions are DENIED-AS-MOOT.

In the instant motion (Dkt. No. 164) Abstrax argues that despite the Court's December 11 Order, and despite various conferences between the parties and counsel, HP continues to shirk its obligations. Specifically, Abstrax argues that HP has failed to provide complete responses to interrogatories, comply with document requests and provide adequate 30(b)(6) testimony. Having considered the parties briefing, the evidence in the record (including the transcripts of the Depositions of HP's 30(b)(6) representatives Michail Laschkow and Mike Mixon), and the argument presented at the January 21 hearing, the Court agrees.

Moreover, the Court is persuaded that many of the disputes currently before the Court date back to the parties' prior discovery disputes, and should have been resolved by the hearing held on December 11, 2014. At that hearing, the ordered HP to supplement its responses to Abstrax's interrogatories and its production of documents. See Dkt. No. 140 at 22, 24. The Court took such action because, at that time, HP had clearly failed to abide by the discovery schedule set out in this Court's Docket Control Order (Dkt. No. 75).[4] However, rather than issue any form of sanction at that juncture, the Court granted HP a “grace period” in which to complete its production and provide other discovery. See Dkt. No. 140 at 21-22. That grace period expired on January 4, 2015. Id.

*5 At the hearing, the Court further cautioned the parties—and HP in particular—against withholding discovery based on a subjective interpretation of what material would be admissible at trial. See id. at 9 (“I do not want the Defendants to substitute their personal judgment for the ultimate admissibility as a part of this production) and at 27 (“I think I've made it clear that it's the Court's view that at this stage of the process that it is wholly improper for either party to substitute their own subjective views of ultimate admissibility into the production process”).

Despite this specific guidance from the Court, and in contravention of the orders issued from the bench on December 11, 2014, HP has engaged in what it calls an “iterative process” of responding to interrogatories, producing documents, and designating representatives to be deposed. The discovery process is always “iterative,” however the Court is persuaded that HP failed to commence discovery in earnest until after the deadlines set out in the Court's original and amended Docket Control Orders (Dkt. No. 75, Dkt. No. 110). Such delay is unacceptable, and is only exacerbated by the Fact that HP's document production and other discovery efforts remain incomplete, despite the grace period previously extended by the Court. See Dkt. No. 175 at 14.

For all the reasons above, and in order to ensure that this case remains on schedule, the Court ORDERS as follows.

1) HP shall to produce all of the patent licenses or settlement agreements that it has previously identified in response to Abstrax's requests for production within forty-eight (48) hours of the issuance of this order. HP is further ORDERED to conduct a search for and produce all patent licenses or settlement agreements meeting one or more of the following criteria, whether or not such licenses have previously been collected in response to Abstrax's discovery requests:

Any such licenses shall be produced within ten (10) days of the issuance of this order.

7) HP shall supplement its response to Abstrax's interrogatory No. 1, sub-parts 1 and 3, to identify:

All such supplemental responses shall be served within ten (10) days of the issuance of this order.

Based on the representations from both parties' counsel at the January 21 hearing, the Court understands that numerous depositions have been taken or are scheduled to be taken in the near future—including the deposition of Mr. Rowe (source code), Mr. McGee (HP financials), Mr. Ullah (metrics, non-infringing alternatives, and HP's ODMs), Ms. French and Mr. Hickey (HP's knowledge of Abstrax and the Patent-in-Suit). Dkt. No. 188 59-78. To the extent such depositions have not been taken or scheduled, the Court ORDERS HP to meet and confer with Abstrax, and to schedule such depositions within five (5) days of the completion of the production and supplementation ordered above—unless the parties agree to an alternative schedule.

Although the Court finds that HP has disregarded the deadlines set in this Court's original and amended DCO, and that HP has failed to comply with the orders delivered from the bench at the December 11, 2014 hearing, Abstrax has not moved for any form of sanctions. Accordingly, the Court will issue no sanctions. Further, the Court will not allow the prospect of sanctions for this conduct to be a sword of Damocles held over HP's head. That ship has now sailed. However, the Court cautions HP that, should its actions require the Court to intervene in the discovery process again, the above conduct will factor into the Court's determinations of culpability and appropriateness with respect to potential future sanctions.

*7 The Court ORDERS that HP's motions (Dkt. No. 139 and Dkt. No. 163) and Abstrax's motion (Dkt. No. 164) are GRANTED-IN-PART, as stated above.

All relief not granted herein is denied.

So ORDERED and SIGNED this 28th day of January, 2015.