DMass Requires Production of Communication with Licensees

The District of Massachusetts, Judge Casper presiding, in Koninklijke Philips N.V. v. Wangs Alliance Corp., Civil Action 14-12298-DJC (D. Mass. Jan. 2, 2018) granted Wang Alliance Corp.'s ("WAC") motion to compel production of certain documents related to prior licensees.[1]

WAC requested "all of [Koninklijke Phillips N.V.'s (Philips)] discussions with actual and prospective licensees relating to invalidty and/or infringement of the patents-in-suit." Philips argued it was "unduly burdensome to require [it] to produce correspondence from its licensees." The court granted WAC's motion to compel, holding that "Philip's contention that it would be unduly burdensome … is unavailing." The court noted that [o]ther courts have required patent holders to produce correspondence with licensees, given that such correspondence is relevant not only for invalidty and infringement but also damages," citing High Point SARL v. Sprint Nextel Corp., No. 09-cv-2269-CM-DJW, 2011 WL 3241432, at *5 (D. Kan. July 29, 2011) (collecting cases).

[1] WAC's motion also requested from Philips additional documents related to prior art (denied) and invalidity charts (allowed).