Parallel Networks Licensing, LLC v. International Business Machines Corporation, C.A. No. 13-2072-SLR-SRF, August 20, 2015.

Fallon, M. J.  Plaintiff’s motion to compel documents is granted in part and denied in part. Its motion to correct and amend its motion to compel is denied as moot. Its motion to amend its complaint is denied as moot. Its motion to correct claims of the patents-in-suit is denied.

The disputed technology relates to systems and methods for managing dynamic web page generation requests.  After reexam proceedings, the PTO issued an ex parte certificate cancelling claims 1-11 and adding new claims 12 – 49. Those new claims as printed in the certificate were the wrong set of claims and a certificate of correction issued in October, 2012.  With respect to the second patent-in-suit, the PTO cancelled all 29 of the original claims and confirmed patentability of new claims 30 – 85, which were also incorrect.  A certification of correction issued in September 2012. Defendant argues that the information sought in discovery requests served in 2014 prior to 2012 is irrelevant as to infringement but it produced information relating to knowledge of the patents-in-suit but refused to produce financial documents. Judge Robinson ruled that she could not correct the errors in the patents and held that plaintiff may not recover damages occurring prior to the issuance of the certificates of correction.  Plaintiff’s motion to compel discovery prior to 2012 is denied to the extent it is based on arguments already raised. However, the motion is granted to the extent it seeks core technical documents and design and development documents pre- or post-2012. Pre-2012 discovery is not relevant to defendant’s laches defense.  A request for financial documents for 6 years prior to infringement is too broad and denied.