1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 DNA GENOTEK INC., Case No.: 21cv516-DMS-LL

12 Plaintiff,

ORDER ON CROSS MOTIONS TO

13 v. COMPEL

14 SPECTRUM SOLUTIONS L.L.C., [ECF Nos. 46, 51] 15 Defendant. 16

AND RELATED COUNTERCLAIMS

17 18 19 Defendant and Counter Claimant Spectrum Solutions L.L.C. (“Spectrum”) moves 20 the Court for an order compelling Plaintiff and Counter Defendant DNA Genotek Inc. 21 (“Genotek”) to produce arbitration documents and document retention policies. ECF No. 22 46. Genotek, in turn, moves to compel Spectrum to produce financial information, 23 valuation documents, and documents about manufacturing location and labeling. ECF No. 24 51. Both parties filed responses in opposition [ECF Nos. 55, 56] and replies [ECF Nos. 58, 25 60]. For the below reasons, Spectrum’s Motion to Compel [ECF No. 46] is GRANTED. 26 Genotek’s Motion to Compel [ECF No. 51] is GRANTED IN PART and DENIED IN 27 PART. 28 1 LEGAL STANDARD 2 “A district court is vested with broad discretion to permit or deny discovery.” Laub 3 v. U.S. Dep’t of Interior, 342 F.3d 1080, 1093 (9th Cir. 2003). Unless otherwise limited by 4 court order, the scope of discovery under the Federal Rules of Civil Procedure is as 5 follows: 6 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 7 case, considering the importance of the issues at stake in the action, the 8 amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and 9 whether the burden or expense of the proposed discovery outweighs its likely 10 benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable. 11

12 Fed. R. Civ. P. 26(b)(1). Courts must limit the frequency or extent of discovery if it 13 determines that: 14 (i) the discovery sought is unreasonably cumulative or duplicative, or can be 15 obtained from some other source that is more convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample opportunity 16 to obtain the information by discovery in the action; or (iii) the proposed 17 discovery is outside the scope permitted by Rule 26(b)(1).

18 Fed. R. Civ. P. 26(b)(2)(C). 19 “[A] party may move for an order compelling disclosure of discovery.” Fed. R. Civ. 20 P. 37(a)(1). “The party seeking to compel discovery has the burden of establishing that its 21 request satisfies the relevancy requirement of Rule 26(b)(1).” La. Pac. Corp. v. Money 22 Mkt. 1 Inst. Inv. Dealer, 285 F.R.D. 481, 485 (N.D. Cal. 2012). “The party who resists 23 discovery has the burden to show discovery should not be allowed, and has the burden of 24 clarifying, explaining, and supporting its objections.” Blankenship v. Hearst Corp., 519 25 F.2d 418, 429 (9th Cir. 1975). 26 BACKGROUND 27 Genotek’s Second Amended Complaint alleges that Spectrum’s saliva collection 28 devices infringe U.S. Patent Nos. 10,619,187 (“the ’187 patent”) and 11,002,646 (“the ’646 1 patent”). ECF No. 20. Specifically, Genotek alleges that Spectrum’s SDNA-1000 and 2 SDNA-2000 saliva collection devices infringe the ’187 patent. As a result, Genotek seeks 3 a royalty. Id. In response, Spectrum filed counter claims for inequitable conduct, 4 monopolization, and attempted monopolization. ECF No. No. 27. Genotek’s motion to 5 dismiss these counter claims is currently pending. ECF No. 41. Both parties now seek 6 orders to compel the other to produce certain discovery. 7 DISCUSSION 8 I. Spectrum’s Request for Arbitration Materials 9 According to Spectrum, in 2015, Genotek sued Ancestry.com DNA LLC 10 (“Ancestry”) and Spectrum for alleged patent infringement and breach of contract. ECF 11 No. 46-1. At the time, Spectrum was Ancestry’s manufacturer. Spectrum also sold small 12 amounts of the same product it made for Ancestry. Genotek asserted the ’115 patent, which 13 is a parent of the ’187 patent, and both patents share a common specification. In 2017, 14 Genotek, Ancestry, and Spectrum entered into a Settlement and License Agreement (the 15 “Settlement Agreement”) resolving that litigation. Thereafter, Genotek and Ancestry 16 disputed whether the Settlement Agreement covered certain new Ancestry products and 17 commenced a binding arbitration to resolve the dispute. Id. at 7. In February 2020, an 18 arbitration panel found the Ancestry products did not infringe Genotek’s asserted patents. 19 Ancestry then initiated a second arbitration with Genotek. In March 2021, Genotek and 20 Ancestry settled the second arbitration. Thereafter, on March 24, 2021, Genotek filed this 21 lawsuit against Spectrum. 22 In Spectrum’s Request for Production (“RFP”) Nos. 24, 25, 26, 27, and 34, Spectrum 23 requested pleadings, contentions, briefs, transcripts, discovery, and other documents from 24 the Ancestry arbitrations. ECF No. 46-8. Specifically, Spectrum requested: 25 REQUEST FOR PRODUCTION NO. 24: All pleadings and contentions from any litigation or arbitration concerning the Asserted Patents or any 26 Related Applications, including any arbitration involving Ancestry.com 27 DNA, LLC.

28 1 REQUEST FOR PRODUCTION NO. 25: All pleadings and contentions from any litigation or arbitration concerning any Related Applications. 2

3 REQUEST FOR PRODUCTION NO. 26: All pleadings, contentions, briefing, hearing transcripts, depositions transcripts, discovery requests and 4 responses thereto, and the February 2020 decision of the arbitration panel in 5 Your arbitration with Ancestry.com DNA, LLC regarding “whether certain new Ancestry products are covered by the Licensed Patents” as referenced in 6 Your 2020 annual report. 7 REQUEST FOR PRODUCTION NO. 27: All pleadings, contentions, 8 briefing, hearing transcripts, deposition transcripts, discovery requests and responses thereto, and decisions of the arbitration panel in the arbitration 9 initiated by Ancestry.com DNA, LLC in the third quarter of 2020 as 10 referenced in Your 2020 annual report.

11 REQUEST FOR PRODUCTION NO. 34: All contentions, including 12 infringement, non-infringement, validity, and invalidity contentions, served by any party in any contentious matter, arbitration, mediation, or demand 13 letter regarding the Asserted Patent or Related Application, including any 14 arbitration involving Ancestry.com DNA, LLC.

15 Id. 16 Genotek refused to provide the materials because “[u]nder Section 10.5 of the 17 Settlement and License Agreement, to which Spectrum is a party, all arbitrations between 18 DNA Genotek and Ancestry are confidential[.]” ECF No. 46-11 at 10–11. Genotek further 19 responded that “Spectrum contractually agreed that any arbitrations between DNA 20 Genotek and Ancestry would remain confidential” and “[t]he contract among Spectrum, 21 Ancestry, and DNA Genotek makes no exception to that agreement if Spectrum and DNA 22 Genotek are later in litigation with one another.” ECF No. 46-15 at 5. 23 In its motion, Spectrum argues the arbitration materials are relevant because: (1) the 24 Ancestry arbitrations “involved” the asserted ’187 patent and related patents; (2) the 25 materials “will reveal Genotek’s positions regarding the scope and interpretation of the 26 asserted claims as they relate to a product ‘not colorably different’ from the accused 27 product in this case;” (3) “Genotek may be judicially estopped from taking positions 28 inconsistent with those it took in the arbitrations;” (4) “the settlement of the second 1 arbitration between Genotek and Ancestry may have resulted in a license under the ’187 2 patent to Ancestry [which] would plainly be relevant to the determination of a reasonable 3 royalty rate in the present case. ECF No. 46-1 at 11. Spectrum also notes that it did not 4 request all documents produced in the Ancestry arbitrations, but only those “concerning 5 litigations or arbitrations involving the asserted ’187 patent and its direct parent.” Id. at 10. 6 Genotek does not meaningfully dispute the relevancy of the requested arbitration 7 materials. Genotek merely argues, in footnotes, “that Spectrum incorrectly states that the 8 three prior and separate lawsuits among DNA Genotek, Ancestry, and Spectrum are closely 9 connected to the arbitrations.” ECF No. 56 at 7 n.1. Genotek further argues: 10 The first of the two arbitrations did not involve the same patents asserted in 11 this litigation. The second arbitration has an overlapping patent, but was resolved without an arbitration decision. Because there is no overlap between 12 the patents in the first arbitration and the present case, discovery from the first 13 arbitration is especially irrelevant and not proportional to the needs of this case. 14

15 Id. at 11 n.3. However, arguing that the lawsuits are not “closely connected” and pointing 16 out that the second arbitration involving “an overlapping patent” was resolved without an 17 arbitration decision, is not the same as arguing that all of Spectrum’s requests seek 18 irrelevant information. Regardless, Spectrum concedes it is not requesting all documents 19 produced in the Ancestry arbitrations, only those “concerning litigations or arbitrations 20 involving the asserted ’187 patent and its direct parent” that are “likely to contain 21 substantive information relevant to this lawsuit.” ECF No. 46-1 at 10 n.4. To the extent the 22 first arbitration did not involve the asserted ’187 patent and its direct parent, Spectrum is 23 apparently not requesting those documents.1 Accordingly, Spectrum has shown the 24 25 26 1 This concession by Spectrum also appears to address, at least to some degree, Genotek’s 27 complaint that “Spectrum has not narrowed these requests during any meet and confer” and that producing all documents relating to the arbitrations would not be proportional to 28 1 requested information is relevant if only because it relates to the asserted patents and may 2 reasonably lead to admissible evidence. 3 Genotek primarily argues that, in the Settlement Agreement, Spectrum agreed it 4 could not “access” any arbitration materials and that Spectrum agreed it “would not be 5 allowed to obtain confidential arbitration documents and later twist the private and 6 purposely simplified statements of the parties and arbitrators against DNA Genotek or 7 Ancestry in a separate proceeding.” ECF No. 56 at 6–7. Genotek claims the Settlement 8 Agreement: (1) “was an arrangement entered into in the context of litigation, which 9 specifically contemplated future disputes between the parties;” (2) “makes no exception to 10 the confidentiality requirement for future litigation discovery;” and (3) “was intended to 11 prevent” the production of the arbitration materials “‘in later litigation involve[ing] the 12 same parties to the Settlement Agreement.’” Id. at 7–8. Genotek therefore argues that “[b]y 13 moving to compel the production of these documents, Spectrum is reneging on its promise 14 to keep these documents confidential.” Id. at 7. 15 Genotek does not, however, quote any specific language from the Settlement 16 Agreement supporting its argument. Rather, Genotek generally cites the arbitration clause 17 at paragraph 10.5, which provides in pertinent part: 18 The decision rendered by the arbitrators will be final and binding upon the Parties, and judgment upon the binding decision may be entered by any court 19 of competent jurisdiction. . . . Except as otherwise required by law, all 20 communications, whether oral, written or electronic, in any arbitration pursuant to this Section, and any result thereof, will be treated as confidential. 21

22 ECF No. 48-1 at 27.2 This language does not, as Genotek argues, expressly prohibit 23 24 2 Genotek also cites clause 8.4, the survival clause, which provides: 25 Section[] . . . . 10 will survive the expiration and any termination of this 26 Agreement. Except as otherwise provided in this Section 8.4, all ongoing 27 rights and obligations of the parties under this Agreement will terminate upon the expiration or termination of this Agreement; provided that, upon 28 1 Spectrum from accessing the materials generated by an arbitration through discovery in a 2 subsequent lawsuit between Genotek and Spectrum. Genotek has not shown: (1) that the 3 term “parties” was necessarily intended to include Spectrum; (2) that the “[e]xcept as 4 otherwise required by law” provision was intended to exclude disclosures in response to a 5 proper discovery request by Spectrum or any other party to a subsequent lawsuit; or 6 (3) that the parties’ agreement to treat arbitration materials as “confidential” in the 7 Settlement Agreement is inconsistent with Spectrum’s obligation and agreement to treat 8 discovery materials designed by Genotek as “confidential” or “highly confidential” under 9 the Protective Order. See ECF No. 34-1 at 4–9. 10 Although Genotek argues that “[w]hile a protective order is a tool used to protect a 11 party’s sensitive information from disclosure, it is not a means to undo a contract between 12 the litigants,” [ECF No. 56 at 11], Genotek does not point to any specific language in the 13 Settlement Agreement, or any other evidence or authority, suggesting that the disclosure 14 of arbitration materials subject to the conditions in the Protective Order would “undo” any 15 part of the Settlement Agreement. Moreover, although Genotek points out that “after the 16 arbitration agreement was signed, separate disputes have arisen between Ancestry and 17 Spectrum on the one hand, and DNA Genotek and Spectrum, on the other hand,” [id. at 8], 18 it does not claim that Spectrum ever acted as if it agreed with Genotek’s current 19 interpretation of paragraph 10.5 in engaging in these disputes. Ultimately, Genotek’s 20 arguments with respect to paragraph 10.5 are not rooted in the text of the agreement or the 21 behavior of the parties, and do not sufficiently account for the protections contained in the 22 Protective Order. 23 Genotek secondarily argues that Spectrum should be denied access to the arbitration 24

25 26 waive any right of any Party or release any Party of any obligation hereunder that arose, matured or accrued prior to the effective date of such termination. 27

28 ECF No. 48-1 at 23. 1 materials through discovery based on the public policy and law of Delaware, which 2 governs the Settlement Agreement. ECF No. 56 at 9–10. While Genotek cites several cases 3 articulating the policy in favor of protecting the confidentiality of arbitration materials in 4 order to promote alternative dispute resolution, id. at 10, Genotek does not attempt to 5 compare the facts of any such case with the facts here, unique as they may be, including 6 the terms of paragraph 10.5. Moreover, none of the cases cited by Genotek address whether 7 protective orders containing terms similar to those in the Protective Order are insufficient 8 to protect the public policy interest recognized under Delaware law. 9 Genotek’s remaining arguments are also unavailing. First, Genotek argues that 10 Spectrum’s judicial estoppel argument is not persuasive because judicial estoppel only 11 prevents a party who successfully maintains a position from later assuming a contrary 12 position. ECF No. 56 at 12. The Court agrees, but notes that this is just one of the cited 13 reasons Spectrum claims the arbitration materials are relevant. If the materials contain the 14 information Spectrum hopes they do, it is not hard to see how that information might be 15 useful to Spectrum in anticipating Genotek’s position and crafting defenses. Second, 16 Genotek argues that “Spectrum’s contention that the documents will show Ancestry’s prior 17 defenses fares no better” because “[p]rior art can be discovered from publicly available 18 sources or alternative discovery requests.” Id. Again, however, it does not appear based on 19 the parties’ filings that discovery of prior art will provide the same information contained 20 in the arbitration materials, and even if there was some overlap, that the information would 21 be unreasonably redundant or cumulative. Finally, Genotek argues that “Spectrum’s 22 argument that its requests would be relevant to patent license royalty rates . . . . is without 23 merit” because “[t]he requests at issue in Spectrum’s motion do not seek license 24 agreements on their face” and “Genotek has already agreed to produce licenses relating to 25 the ’187 patent in response to a different document request.” Id. If Spectrum is correct that 26 “the settlement of the second arbitration . . . . resulted in a license under the ’187 patent to 27 Ancestry, [ECF No. 46-1 at 11], the Court agrees this information would be relevant to the 28 determination of a reasonable royalty rate in the present case, if only to determine whether 1 the license and royalty rate was the result of protracted arbitration. To the extent the 2 information might be cumulative because Genotek has already agreed to provide licensing 3 information, Genotek has not shown that it would be unreasonably cumulative. 4 Accordingly, based on the above, Spectrum’s Motion to Compel responses to RFP Nos. 5 24, 25, 26, 27, and 34 is GRANTED. The parties shall promptly meet and confer on the 6 timeframe in which Genotek will respond. 7 II. Spectrum’s Request for Document Retention Policies 8 In RFP No. 69, Spectrum requested “[d]ocuments sufficient to show your document 9 and record retention policies from 2002 to the present, including procedures and facilities 10 for generating, maintaining and disposing of records, including electronic records, files, 11 and messages.” ECF No. 46-1 at 14. Genotek objected on the grounds of relevancy and 12 declined to produce the documents. Id. Genotek subsequently agreed only to produce its 13 most recent document retention policy from 2020, despite having represented that it did 14 not have emails from before 2008. Id. Spectrum argues that “[e]mails before 2008 are 15 relevant, for example, to Spectrum’s invalidity and inequitable conduct defenses because 16 those allegations relate to the invention, filing, and prosecution of the ‘187 patent, which 17 Genotek claims began in 2002.” Id. at 15. 18 In support of this argument, Spectrum cites McMorrow v. Mondelez Int’l, Inc., Case 19 No.: 17-cv-02327-BAS (JLB), 2019 WL 3852498, at *3 (S.D. Cal. Apr. 19, 2019), in which 20 the court found: 21 Courts in this Circuit have . . . . found that document retention policies may be relevant under Rule 26. . . . [C]ourts which have found that document 22 retention policies may be relevant have taken different approaches to 23 determining when it is appropriate to order production. On one end of the spectrum, some courts permit discovery of document retention policies 24 without any preliminary showing by the moving party of spoliation or 25 discovery misconduct. On the opposite end of the spectrum, some courts refuse to allow discovery of document retention policies unless the movant 26 first establishes that spoliation is a legitimate issue in the case. In the middle 27 of the spectrum, some courts permit discovery of document retention policies without a showing of spoliation or discovery misconduct, but only in 28 1 circumstances where the non-moving party has claimed that requested discovery documents are unavailable, or when there are indicia that the 2 discovery process was not thorough, reliable, or transparent. 3 Id. (internal citations and quotation marks omitted). The court went on to find that a 4 showing of spoliation or discovery misconduct is not necessary before requiring production 5 of a party’s document retention policies, and “the moving party need only demonstrate that 6 production of the non-moving party’s document retention policies would enable it to 7 determine the universe of responsive documents, evaluate the completeness of the existing 8 document production, identify any gaps in document production, and craft targeted 9 discovery requests to efficiently obtain any missing records.” Id. (citations omitted). The 10 court concluded, “[a] showing that certain requested documents have been deemed 11 ‘unavailable,’ or that there are indicia that the discovery process was not thorough, reliable, 12 or transparent, may be sufficient for the moving party to meet its burden.” 13 Here, Spectrum argues the pre-2020 document retention policies are relevant and 14 should be produced because Genotek represented that some emails generated prior to 2008 15 are unavailable. ECF No. 60 at 5. Specifically, Spectrum points to a statement in the Joint 16 Discovery Report that “DNA Genotek has informed Spectrum that its email servers have 17 archives dating back only to 2008.” ECF No. 46-1 at 18. In its opposition, Genotek 18 explains: 19 DNA Genotek never represented that it has no emails predating 2008. Rather, 20 it explained that its current servers do not store pre-2008 emails in a readily 21 searchable manner. It is unremarkable that a growing life sciences company would outgrow one email system and start a new email system. DNA Genotek 22 did not destroy all old emails. In fact, DNA Genotek has already produced 23 dozens of emails from before 2008 in this case, including key emails that may be relevant to the conception and reduction to practice of the invention 24 claimed in the ’187 patent. 25 Moreover, Spectrum has not made any particularized claim that DNA 26 Genotek’s discovery responses are deficient. Such a claim would not be possible, considering the parties have not even begun formal discovery into 27 emails. 28 1 ECF No. 56 at 4 (internal citations to the record omitted). In reply, Spectrum does not 2 dispute these assertions and states that “Spectrum must take Genotek at its word regarding 3 unavailability of emails from before 2008.” ECF No. 60 at 5. Based on the above, Spectrum 4 has sufficiently shown that some pre-2008 emails might not be available. It also appears as 5 if the production of Genotek’s earlier document retention policies would assist Spectrum 6 in determining the universe of responsive documents, evaluate the completeness of existing 7 or subsequent document production, identify any gaps in document production, and craft 8 targeted discovery requests to efficiently obtain any missing records. Accordingly, 9 Spectrum’s Motion to Compel a response to RFP No. 69 is GRANTED. The parties shall 10 promptly meet and confer on the timeframe in which Genotek will respond. 11 III. Genotek’s Request for Financial Information 12 In RFP No. 75, Genotek requested “Spectrum’s quarterly and annual financial 13 statements (including but not limited to income statements, balance sheets, cash flow 14 statements, profit and loss statements, income register, expense register, and periodic 15 financial statements) since January 1, 2014.” ECF No. 51-1 at 7. Spectrum responded: 16 Spectrum . . . . objects to this Request to the extent that it seeks documents that are not relevant to any party’s claims or defenses, not proportional to the 17 needs of the case, or beyond the scope of this litigation, including for example, 18 because it seeks financial information that is unrelated to the SDNA-1000 or SDNA-2000, and financial information dated prior to April 14, 2020. 19 Spectrum has responded to other document requests seeking financial 20 information relating to the accused SDNA-1000 or SDNA-2000 products. Spectrum further objects to this Request as overly broad and unduly 21 burdensome. Spectrum further objects to this request to the extent it seeks 22 documents containing confidential, proprietary, and/or trade secret information prior to the Court’s entry of a Protective Order. 23

24 Subject to and without waiving these objections, Spectrum intends to produce responsive, non-privileged sales forecasts and projections, if any, for the 25 SDNA-1000 and SDNA-2000 made after April 14, 2020 by October 18, 2021 26 or within thirty (30) days after the entry of a Protective Order, whichever is later. 27

28 ECF No. 51-4 at 13-14. 1 Genotek argues that Spectrum’s financial statements are relevant and proportional 2 to Genotek’s damages calculation because: (1) “[w]hile Spectrum produced sales figures 3 pertaining to the accused products, production of company wide sales information will 4 show the impact of these sales on other associated products;”3 (2) “company-wide sales 5 figures will show the importance of the accused products to the company as a whole;” 6 (3) “[t]hese standard corporate financial statements are a discrete set of documents that are 7 readily available to Spectrum and would take very little time to collect and produce;” and 8 (4) “the protective order adequately protects its interest in confidentiality.” ECF No. 51-1 9 at 8-9. Genotek further argues that “earlier information is relevant because comparing pre- 10 issuance and pre-infringement company-wide sales data with later data can show how the 11 patented technology drove Spectrum’s other sales, which is relevant to the damages 12 analysis.” ECF No. 58 at 3. 13 In opposition, Spectrum argues the request is too broad because: (1) it “encompasses 14 financial statements regarding all of Spectrum’s business, including products not at issue 15 in this lawsuit and products wholly unrelated to the accused products;” (2) “[i]t also seeks 16 such expansive financial information for five years before Spectrum even launched the 17 accused products in late 2019, and six to seven years before the asserted patents issued in 18 2020 and 2021;” (3) Spectrum “noted that it was producing sales and profit information for 19 the accused products;” (4) “Genotek’s motion does not simply seek financial statements 20 for products related to the accused products, but insists Genotek is entitled to company- 21 wide financial information without limitation;” and (5) “Genotek failed to identify products 22 or services having a ‘functional relationship’ with the accused products.” ECF No. 55 at 7- 23 8. Spectrum argues “Genotek’s unreasonably broad document request – and its insistence 24 that Genotek’s in-house counsel be allowed to view Spectrum’s most commercially 25

26 27 3 Spectrum states that “[d]uring the meet-and-confer process, Genotek never articulated a purported need for convoyed sales information. The first time Genotek raised convoyed 28 1 sensitive documents – suggests that Genotek is attempting to gain access to highly sensitive 2 competitive information to assess the financial health of its competition.” Id. at 9. Spectrum 3 therefore argue that “[a]t the very least, Genotek’s request should be limited in time to a 4 period beginning with the launch of the accused products in late 2019.” Id. at 8. 5 Here, both parties make undisputed points. Spectrum does not dispute that the 6 requested financial statements are standard documents that would be relatively easy to 7 collect and produce, or that the Protective Order issued by this Court on September 21, 8 2021 adequately protects its interest in confidentiality. Under the Protective Order, 9 Spectrum may designate information as “highly confidential – outside counsel eyes only” 10 if it is “among that considered to be most sensitive by the party, including but not limited 11 to trade secrets or other confidential research, development, financial or other commercial 12 information.” ECF 34-1 at 6. Genotek, in turn, does not dispute that it is essentially 13 requesting all of Genotek’s financial information, regardless of the relatedness of other 14 products, or that it failed to previously raise its functional relationship argument when it 15 met and conferred with Spectrum about this discovery dispute. Instead, in its reply, 16 Genotek argues it has “articulated a theory of why it needs company-wide financial data to 17 reveal information about Spectrum’s related products and services such as its custom 18 packaging services, kits, and other associated products.” ECF No. 58 at 2-3. 19 Based on the above, Genotek’s Motion to Compel a response to RFP No. 75 is 20 GRANTED IN PART and DENIED IN PART without prejudice. Unless otherwise 21 agreed by the parties, Spectrum shall provide quarterly and annual financial statements 22 (including but not limited to income statements, balance sheets, cash flow statements, profit 23 and loss statements, income register, expense register, and periodic financial statements) 24 since January 1, 2018 regarding the products at issue as well as related products and 25 services such as custom packaging services and kits. 26 IV. Genotek’s Request for Valuation Information 27 In RFP No. 80, Genotek requested “documents relating to valuations of Spectrum 28 Solutions, L.L.C., Spectrum Packaging, L.L.C., Spectrum Buyer, L.L.C., and Spectrum 1 Intermediate, L.L.C.” ECF No. 51-1 at 10. Spectrum responded: 2 Spectrum further objects to this Request to the extent that it seeks documents protected by the attorney-client privilege, work product doctrine, or any other 3 applicable privilege or immunity. Spectrum will log privileged documents, if 4 any, dated prior to the filing of the Complaint in this case. Spectrum further objects to this Request as overly broad, unduly burdensome, and oppressive 5 to the extent it calls for production of all documents related to a broad 6 category. Spectrum will not produce any documents where the burden to Spectrum to collect, review and produce is not proportional to the needs of 7 the case. Spectrum further objects to this Request to the extent that it seeks 8 documents that are not relevant to any party’s claims or defenses, not proportional to the needs of the case, or beyond the scope of this litigation. 9 Spectrum further objects to this Request to the extent that it seeks documents 10 that are not relevant to any party’s claims or defenses, not proportional to the needs of the case, or beyond the scope of this litigation, including for example, 11 valuations made prior to April 14, 2020. Spectrum further objects to this 12 request to the extent it seeks documents containing confidential, proprietary, and/or trade secret information prior to the Court’s entry of a Protective Order. 13

14 ECF No. 51-4 at 14–15. 15 Genotek argues: (1) “boilerplate objections provide no valid basis for Spectrum to 16 withhold documents;” (2) “[t]his information will be valuable to DNA Genotek’s 17 calculation of damages in this case; and (3) “Spectrum’s valuation is also relevant to DNA 18 Genotek’s defense against Spectrum’s antitrust counterclaims . . . . [because] . . . . “[i]f 19 Spectrum’s valuation has increased in recent years, then Spectrum may not be suffering 20 the anticompetitive harm that it so claims.” ECF No. 51-1 at 10–11. 21 In opposition, Spectrum argues: (1) “the accused products are not Spectrum’s only 22 product line, and Genotek has failed to show otherwise;” (2) “Genotek offers no 23 explanation, and provides no support, for the purported relevance of valuations of 24 Spectrum’s affiliate companies to Genotek’s damages analysis;” and (3) “Genotek never 25 explains why a valuation of Spectrum as a whole – much less the valuations of Spectrum’s 26 affiliates – will shed any light on Spectrum’s market share, ability to compete, or 27 anticompetitive harm in the specific alleged antitrust market, i.e., the market for clinical 28 whole saliva genetic test kits.” ECF No. 55 at 10. 1 Here, Genotek provides some support for its argument that valuation information is 2 relevant to damages. In Symantec Corp. v. Zscaler, Inc., Case No. 17-cv-04426-JST (TSH), 3 2019 WL 2288278, at *2 (N.D. Cal. May 29, 2019), the court found that although it is not 4 a “straight shot” from product valuation to patent infringement damages, “the valuation of 5 an accused product (and even more so the valuation of [the] company) includes the value 6 of the non-infringing aspects as well . . . . and these valuations meet [the relevance] 7 standard because they are an important input to the computation of damages.” Additionally, 8 Spectrum does not meaningfully dispute Genotek’s argument that the valuation 9 information is relevant to defend against Spectrum’s antitrust claim, which serves as an 10 additional reason to compel the production of the requested documents. Spectrum also does 11 not dispute that the Protective Order can adequately protect the confidentiality of the 12 information. In its Reply, however, Genotek does not explain the relevance of its request 13 for information on the value of Spectrum’s affiliate companies. See ECF No. 58. 14 Accordingly, Genotek’s Motion to Compel a response to RFP No. 80 is GRANTED 15 IN PART and DENIED IN PART without prejudice. Spectrum shall provide documents 16 relating to valuations of Spectrum Solutions, L.L.C., but to the extent the information can 17 be reasonably separated, Spectrum does not need to provide documents relating to 18 valuations of Spectrum’s affiliate companies including Spectrum Packaging, L.L.C., 19 Spectrum Buyer, L.L.C., and Spectrum Intermediate, L.L.C.” The parties shall promptly 20 meet and confer on the timeframe in which Spectrum will respond. 21 V. Genotek’s Request for Manufacturing and Labeling Information 22 In RFP Nos. 9, 69, 70, and 73, Genotek requested documents: (1) “relating to and/or 23 identifying the country of origin of each and every ingredient, component, and material 24 used in the manufacture of the accused products;” (2) “concerning the labeling of the 25 country of origin or manufacture of the accused products;” (3) “concerning the advertising 26 of any of the accused products as made, manufactured, or assembled in a particular 27 geographic location;” and (4) “concerning the design of the label of the accused products.” 28 ECF No. 51-1 at 12. Spectrum objected on the grounds of undue burden, over breadth, 1 oppression, and relevance. ECF No. 51-4 at 20–25. 2 In its motion, Genotek argues that “Spectrum should be required to produce 3 information about where it makes its products, especially in light of its documented history 4 of making false claims about this topic.” ECF No. 51-1 at 11. In support of this argument, 5 Genotek cites previous testimony from Spectrum’s co-founder indicating that an “old 6 device” that was labeled as “Made in the USA” was actually made in Malaysia. Id. at 11– 7 12. Spectrum includes pictures comparing the packaging from the old product to an 8 accused product, both of which appear similar, and argues that the accused products “make 9 the same claim as the fraudulently advertised products.” Id. at 14. Genotek also cites a five- 10 part standard applied in Davidson Pipe Co. v. Laventhol & Horwath, 120 F.R.D. 455, 462– 11 63 (S.D.N.Y. 1988) for determining whether discovery of information related to possible 12 impeachment should be allowed. 13 In opposition, Spectrum argues (1) there is no “history of making false claims” 14 because Genotek points to no ruling or decision finding that Spectrum made any false 15 claims, and the testimony is from a prior case in Delaware between Genotek and Spectrum 16 regarding a different Spectrum product that Spectrum no longer manufactures;” 17 (2) Genotek “has everything it needs regarding the alleged prior acts” of alleged 18 misrepresentations; and (3) “even if the country of manufacture were relevant, . . . 19 Spectrum labels the accused products as made in Malaysia, Mexico, and the United States.” 20 ECF No. 55 at 13–14. Spectrum does not, however, dispute that discovery for impeachment 21 purposes can be generally valid, or that discovery regarding the accuracy of the label for 22 the accused products might reasonably lead to admissible evidence for impeachment 23 purposes. The evidence put forth by Genotek is sufficient, at this stage, to allow for 24 discovery regarding the accuracy of any “Made in the USA” label for the accused products 25 for impeachment purposes. It is not for Spectrum to decide whether Genotek has all it needs 26 for this purpose, and the fact that the accused products are labeled as being manufactured 27 in a particular country does not confirm the label’s accuracy. 28 Spectrum focuses most of its remaining argument on the lack of relevance between 1 accuracy of the labels on the accused products to Genotek’s infringement claim. Id. at 2 || 11-14. As pointed out by Genotek, however, its direct patent infringement claim requires 3 to show the accused products were sold or otherwise made “within the United States” or 4 “import[ed] into the United States.” 35 U.S.C. § 271(a). Accordingly, to this end, 5 there is a least some minimal additional relevancy in obtaining discovery regarding the 6 || products’ country of origin. Regardless, Spectrum does not argue that a different standard 7 the one identified by Genotek should apply, and Spectrum cites no comparable cases 8 || supporting its position.* Accordingly, Genotek’s Motion to Compel a response to RFP Nos. 9 ||9, 69, 70, and 73 is GRANTED. The parties shall promptly meet and confer on the 10 ||/timeframe in which Spectrum will respond. 1] CONCLUSION 12 For the foregoing reasons, Spectrum’s Motion to Compel responses to RFP Nos. 24, 13 26, 27, and 34 is GRANTED. Spectrum’s Motion to Compel a response to RFP No. 14 ||69 is GRANTED. Genotek’s Motion to Compel a response to RFP No. 75 is GRANTED 15 |}, IN PART and DENIED IN PART without prejudice as discussed above. Genotek’s 16 || Motion to Compel a response to RFP No. 80 is GRANTED IN PART and DENIED IN 17 || PART without prejudice as discussed above. Genotek’s Motion to Compel a response to 18 || RFP Nos. 9, 69, 70, and 73 is GRANTED. 19 IT IS SO ORDERED. Dated: December 14, 2021 MO Nn TZ) 2 Honorable Linda Lopez 53 United States Magistrate Judge 24 25 8 8©=©)—”

27 ||* Genotek also argues that the location of Spectrum’s manufacturing is relevant to damages 28 because “[w]hether Spectrum does in fact make its products in the United States could have an impact on its costs and profits.” ECF No. 51-1 at 15. 17