I. INTRODUCTION

*1 On June 10, 2020, Defendant Google LLC (“Google”) filed a Motion to Compel Further Responses to Discovery against Plaintiff Pinn, Inc. (“Pinn”) (Dkt. 138, “Motion”) raising six separate issues, a Joint Stipulation of the parties (Dkt. 138-1, “Joint Stipulation” or “Jt. Stip.”) and supporting and opposing evidence (Dkt. 138-2 to 138-28), in this consolidated action.

On June 11, 2020, during a telephonic conference regarding, among other things, the Motion, counsel for Pinn agreed Pinn would supplement its responses as to three of the six issues raised in the Motion, identified as Sections III, IV, and VI of the Motion, rendering the Motion moot as to those three issues, leaving only the issues raised in Sections II, V, and VII of the Motion in dispute. See Dkt. 141.

On June 18, 2020, Google (Dkt. 154) and Pinn (Dkt. 155) filed Local Rule 37-2.3 supplemental memoranda in support of an in opposition to the Motion. The parties agreed that the issue raised in Section II of the Motion was no longer in dispute, leaving only the issues raised in Sections V and VII for determination. Dkt. 155 at 2, Dkt. 156 at 2. Based on the parties' representations, the Motion is denied as moot as to the issue raised in Section II.

With respect to the remaining issues in dispute, the Motion is fully briefed. The Court finds that the remaining issues raised in the Motion may appropriately be decided without oral argument. As a result, the hearing set for July 2, 2020 is vacated. For the reasons set forth below, the Court rules as follows on the Motion.

II. RELEVANT LAW

“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. (“Rule”) 26(b)(1). “Information within this scope of discovery need not be admissible in evidence to be discoverable.” Id. “Generally, the purpose of discovery is to remove surprise from trial preparation so the parties can obtain evidence necessary to evaluate and resolve their dispute.” Duran v. Cisco Sys., Inc., 258 F.R.D. 375, 378 (C.D. Cal. 2009) (citations omitted).

Pursuant to Rule 33, “[a]n interrogatory may relate to any matter that may be inquired into under Rule 26(b).” Rule 33(a)(2). “Each interrogatory must, to the extent it is not objected to, be answered separately and fully in writing under oath.” Rule 33(b)(3). “The grounds for objecting to an interrogatory must be stated with specificity.” Rule 33(b)(4). If the answer to an interrogatory may be determined by examining a party's business records, and “if the burden of deriving or ascertaining the answer will be substantially the same for either party,” the responding party may answer by specifying (and making available) the records in sufficient detail to allow the interrogating party to locate and them as readily as the propounding party. Rule 33(d). A propounding party may move for an order compelling an answer to an interrogatory if “a party fails to answer an interrogatory submitted under Rule 33.” Rule 37(a)(3)(B)(iii).

*2 “Upon a motion to compel discovery, the movant has the initial burden of demonstrating relevance. In turn, the party opposing discovery has the burden of showing that discovery should not be allowed, and also has the burden of clarifying, explaining and supporting its objections with competent evidence.” United States v. McGraw–Hill Cos., 2014 WL 1647385, at *8 (C.D. Cal. Apr. 15, 2014) (citations and internal quotation marks omitted); see also DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002) (“The party who resists discovery has the burden to show that discovery should not be allowed, and has the burden of clarifying, explaining, and supporting its objections.”); Oakes v. Halvorsen Marine Ltd., 179 F.R.D. 281, 283 (C.D. Cal. 1998).

III. DISCUSSION

A. Section V of the Motion, Interrogatory No. 4

In Section V of the Motion, the parties dispute the adequacy of Pinn's Response and Supplemental Response to Interrogatory No. 4, which asks:

Jt. Stip. at 29. Pinn's Response, after objections to the interrogatory “to the extent it requires expert testimony and analysis and may depend upon the Court's construction of certain claim terms,” limits the scope of the Response “to the issues raised in Defendants Invalidity Contentions, which identify the information relevant to the claims and defenses in the case,” and then purports to describe portions of the “'978 Application” with apparent paragraph references in brackets, using non-exclusive terms such as “for example” and “See, e.g.” See Jt. Stip. at 29-31. Pinn's Supplemental Response contains additional purported descriptions from the “'978 Application,” also using the non-exclusive term “for example” and includes a reference to the “Find feature claimed in the ‘198 and 66 Patents.” Id. at 31-32.

Google argues that Pinn's responses do not fairly answer the interrogatory as they did not purport to tie all of the claim limitations of the patents-in-suit at issue in the case to specific portions of the ‘978 Provisional Application that Pinn alleges provide priority and asserts that such ties are important because Pinn's priority claims based on the ‘978 Provision Application are “hotly disputed.” Jt. Stip. at 33-34.

Pinn counters that the interrogatory asked it to identify claims in the Asserted Patents entitled to priority from the ‘978 Provisional Application, and Pinn did so by responding that all asserted claims are entitled to such priority. Jt. Stip. at 35-36. Pinn asserts that Google withdrew its request for a “claim chart” but instead requested mapping with specific citations to the ‘978 Provisional Application tied to the claims in the Asserted Patents, which Pinn argues it did in its responses by citing “specific paragraphs in the ‘978 [Provisional Application] that support the claimed subject matter in the asserted patents that Defendants have challenged.” Id. at 36. Pinn's asserts its responses tie portions of the ‘978 Provisional Application to the categories/examples challenged Defendants in their Invalidity Contentions. Dkt. 155 at 3. Pinn argues the only issue to be decided in the Motion is whether Pinn's using the “rubric” of Defendants' Invalidity Contentions in responding to Interrogatory No. 4 is sufficient. See Dkt. 155 at 2-3.

*3 Google does not view the dispute as narrowly as Pinn. Google appears to contest Pinn's claim that it withdrew its request for a claim chart and challenges Pinn's claim that it has mapped each claim limitation in the asserted claims to a disclosure in the ‘978 Provisional Application. Dkt. 154 at 2-3 & n.4. Google further argues there is “no legal or rational basis” for Pinn's decision not to map all key elements to the ‘978 Provision Application upon which it bases its priority assertions. Id. at 2. Google argues that because Pinn has claimed priority for all its asserted claims based on the ‘978 Provisional Application, it should fully answer the interrogatory and map all such claims to the ‘978 Provisional Application.

As a threshold determination, the Court finds that the information sought by Interrogatory No. 4, in asking Pinn to, for each asserted claim of the Assert Patents for which Pinn claims priority based on the ‘978 Provision Application, tie the claim limitation to the portion of the ‘978 Provisional Application upon which priority is based, meets the low threshold of relevance for discovery purposes under Rule 26(b)(1). As Interrogatory No. 4 seeks relevant information, the burden falls on Pinn to, by competent evidence, justify its objection and unilateral limitation of the scope of its responses. See McGraw–Hill Cos., 2014 WL 1647385, at *8; see also DIRECTV, Inc., 209 F.R.D. at 458.

In stating it limited its response using the “rubric” applied by Defendants in their Invalidity Contentions, Pinn seems to argue that requiring it to conduct a claim-by-claim tie between the claims in the Asserted Patents at issue here and the provisions of the ‘978 Provisional Application providing priority for those claims would result in a disproportionate burden upon it, arguing if using the “rubric” used by Defendants “was sufficient for Defendants' invalidity contentions[,] it should be sufficient for Pinn's interrogatory response.” Dkt. 155 at 3. The Court finds Pinn's limitation is not warranted.

First, the adequacy of Defendants' Invalidity Contentions is not before the Court; the issue is the adequacy of Pinn's response to Interrogatory No. 4. In addition, the Court does not agree that Pinn's citation to one paragraph from Defendants' Invalidity Contentions in Pinn's Supplemental Memorandum fairly depicts the full nature of Defendants' position regarding the priority, or lack of priority, to be given to the ‘978 Provisional Application. Compare Dkt. 155 (containing a three-sentence excerpt) at 3 with Dkt. 138-12 (Defendants' Disclosure of Preliminary Invalidity Contentions) at 113-20.

Second, Pinn has provided no evidentiary basis for the Court to weigh the asserted burden in tying portions of the ‘978 Provisional Application with the claims in the Asserted Patents at issue for priority purposes. In alleging the Asserted Patents claim priority based in part on the ‘978 Provisional Application (see Dkt. 96, Second Amended Complaint, ¶¶ 16, 25, 38), Pinn had to have had a factual basis. See Rule 11(b). Interrogatory No. 4 asks Pinn to trace that factual basis from the ‘978 Provisional Application to the claims at issue in the Asserted Patents here, with citations to paragraphs or page numbers. Pinn has offered no evidence that such a tracing would be difficult for it to conduct, or that it would cause it a disproportionate burden, “considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Rule 26(b)(1). Pinn's unilateral limitation of its response to Interrogatory No. 4 is unwarranted.

*4 For the foregoing reasons, Pinn shall, within 14 days from the date of this Motion, provide a verified, further supplemental response that responds to Interrogatory No. 4 in its entirety, consistent with the foregoing, except that instead of providing a “claim chart,” Pinn may instead identify the specific claims at issue in the action for which it is claiming priority under the ‘978 Provisional Application, including describing where the basis for each claim's alleged priority is found in the ‘978 Provisional Application (see Dkt. 138-2, ¶ 10(c)).

A. Section VII of the Motion, Interrogatory No. 15

In Section VII of the Motion, the parties dispute the adequacy of Pinn's Response and Supplemental Response to Interrogatory No. 15, set forth below in their entirety.

Jt. Stip. at 44. Google argues Pinn has not fully responded to the interrogatory. Id. at 44-46; Dkt. 154 at 3-4. Pinn argues it has, except for privileged communications that the parties agree are not called for by the interrogatory. Jt. Stip. at 46-47; Dkt. 155 at 4.

Excluding privileged discussions, which are not at issue, Pinn has twice answered that it has not “received an offer to purchase the Asserted Patents or a valuation of the Asserted Patents.” However, Interrogatory 15 asks a different question, directing Pinn to: “Detail any investigation and/or evaluation regarding the monetary valuation of any of the Asserted Patents and/or Related Patents, including the dates such activities took place, the Persons or entities involved in such activities, and the nature of such activities.” Pinn has not answered that question.

Pinn shall, within 14 days, shall provide a verified answer to Interrogatory No. 15, excluding privileged communications.

IV. CONCLUSION AND ORDER

For the reasons set forth above, the Motion (Dkt. 138) is granted in part and denied in part, as follows:

IT IS SO ORDERED.