Advanced Micro Devices, Inc. et al v. LG Electronics, Inc. et al

Filing 227

ORDER GRANTING AMD'S MOTION SEEKING PERMISSION TO DISCLOSE SOURCE CODE AND TECHNICAL DOCUMENTS 208 . (Illston, Susan) (Filed on 7/17/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ADVANCED MICRO DEVICES, INC., et
al.,
Plaintiffs,

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v.
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LG ELECTRONICS, INC., et al.,

United States District Court
Northern District of California

Defendants.

Case No. 14-cv-01012-SI
ORDER GRANTING AMD'S MOTION
SEEKING PERMISSION TO DISCLOSE
SOURCE CODE AND TECHNICAL
DOCUMENTS
Re: Dkt. No. 208

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Before the Court is AMD’s motion seeking permission to disclose third-party Imagination

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Technologies, LLC’s source code and technical documents to AMD’s two technical experts, Dr.

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William Mangione-Smith and Dr. Andrew Wolfe. Dkt. No. 208. Pursuant to Civil Local Rule 7-

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1(b), the Court determines that this matter is appropriate for resolution without oral argument and

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VACATES the hearing scheduled for July 28, 2017.

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GRANTS AMD’s motion.

For the foregoing reasons, the Court

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BACKGROUND

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This is a patent infringement suit between plaintiffs Advanced Micro Devices, Inc. and

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ATI Technologies ULC (collectively, “AMD”) and defendants LG Electronics, Inc., LG

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Electronics U.S.A., Inc., and LG Electronics Mobilecomm U.S.A., Inc. (collectively, “LG”). In

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Fall 2016, AMD and LG entered into a protective order for this litigation. Dkt. No. 120. The

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protective order states that certain highly confidential information may be disclosed to experts

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only if: (i) “reasonably necessary” for the litigation; (ii) the experts agree to be bound by the

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protective order; and (iii) the party who wishes to disclose highly confidential materials to its

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expert first makes a written request to the designating party.

Id. ¶¶ 7.3(b); 7.4(a)(2).

The

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designating party has 14 days from receipt of the request to object to disclosure, and if the parties

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cannot resolve an objection through meet and confer, the party seeking disclosure may file a

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motion requesting court permission to disclose the information to its expert. Id. ¶¶ 7.4(b)-(c).

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Similar procedures govern disclosure of source code. See id. ¶ 9.

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The parties filed an addendum to the protective order to include non-party Imagination

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Technologies LLC’s (“Imagination’s”) confidential materials. See Dkt. No. 152. According to

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AMD, 125 LG accused products in this case utilize Imagination graphics processors. Fahrenkrog

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Decl. (Dkt. No. 208-1) ¶ 3. AMD seeks to disclose certain Imagination source code and technical

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documents to two of its experts to aid AMD’s infringement analysis as to these products.
On February 10 and 15, 2017, pursuant to the protective order, AMD notified Imagination

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United States District Court
Northern District of California

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of its intent to disclose Imagination’s technical documents and source code to AMD’s two

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technical experts, Drs. Mangione-Smith and Wolfe. See Fahrenkrog Decl., Exs. E, F (Dkt. Nos.

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208-6, 208-7).

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disagreement through the meet and confer process.

Imagination objected and the parties have been unable to resolve their

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Since 2009, Dr. Mangione-Smith has provided “[c]onsulting and intellectual property

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services” as the sole proprietor of Phase Two LLC. Fahrenkrog Decl., Ex. G (Dkt. No. 208-8).

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He is a named inventor on dozens of patents, and has served as an expert consultant in a range of

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intellectual property matters. Id. As an expert, Dr. Mangione-Smith has recently been retained by

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organizations such as Future Link Systems, TiVo, Innovative Memory Solutions, Advanced

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Silicon Technologies, Ericsson, and many others. See id. He most often provides expert services

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on behalf of patent plaintiffs in suits against companies like Apple, Samsung, Cisco, Google,

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Verizon, Dell, and others. See id.

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Since 2002, Dr. Wolfe has consulted on “processor technology, computer systems,

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consumer electronics, software, design tools, and intellectual property issues.” Fahrenkrog Decl.,

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Ex. H (Dkt. No. 208-9). His sample clients include IBM, Dell, Motorola, Samsung, HTC,

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Huawei, Nvidia, and more. Id. Dr. Wolfe has also served as an expert witness in an array of

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patent cases. See id.

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AMD seeks an order from the Court granting AMD permission to disclose Imagination’s
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documents and source code to Drs. Mangione-Smith and Wolfe. See Mot. (Dkt. No. 208).

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LEGAL STANDARD

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“In the ordinary course of litigation, a party is owed some degree of deference ‘in retaining

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and preparing an expert with the relevant industry experience and availability.’” GPNE Corp. v.

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Apple Inc., 12-cv-2885-LHK (PSG), 2014 WL 1027948, at *1 (N.D. Cal. Mar. 13, 2014) (quoting

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Apple Inc. v. Samsung Elecs. Co., No. 11-cv-1846-LHK (PSG), 2011 U.S. Dist. LEXIS 147515, at

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*2 (N.D. Cal. Dec. 22, 2011)). In some cases, however, “that interest must be balanced against an

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increased risk of improper use or disclosure . . . .” GPNE Corp., 2014 WL 1027948, at *1. In

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cases where a proposed expert’s work in the field “creates a substantial risk” of misusing the

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United States District Court
Northern District of California

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information, disclosure may be permitted only where the expert “possesses unique expertise[.]”

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See Symantec Corp. v. Acronis Corp., No. 11-cv-5310-EMC (JSC), 2012 WL 3582974, at *3

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(N.D. Cal. Aug. 20, 2012).

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DISCUSSION

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Imagination does not object to disclosure of its materials to any expert, it objects only to

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disclosure to AMD’s two chosen experts. The Court must determine whether, on this record,

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disclosure of Imagination’s highly confidential information to Drs. Mangione-Smith and Wolfe

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presents a concrete risk of misuse. The Court concludes that it does not.

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Imagination argues that both experts present a substantial risk of subconsciously misusing

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Imagination confidential information given their active patent consulting businesses. Imagination

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contends that once Drs. Mangione-Smith and Wolfe have performed the necessary analysis of

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Imagination’s documents and source code, knowledge of that sensitive information will be

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“infused throughout their subsequent . . . activities in th[e] field.” Opp’n (Dkt. No. 216) at 3-4.

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Imagination further argues that the experts will use the information “[i]n any subsequent activity

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involving Imagination,” including an ITC investigation in which Drs. Mangione-Smith and Wolfe

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have been designated as experts.1 Id. at 4. Imagination further argues that Drs. Mangione-Smith

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and Wolfe are prolific inventors, and thus present an even greater risk of subconsciously using

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Imagination’s confidential information going forward.

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Imagination argues that it should not be required to allow disclosure of its information to Drs.

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Mangione-Smith and Wolfe.

As a non-party to this litigation,

AMD, on the other hand, argues that Imagination’s claims of potential harm are highly

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speculative. AMD argues that Imagination cannot point to any specific consulting activity either

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expert performs for Imagination competitors, nor can Imagination identify a connection between

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the experts’ inventive activity and the technology at issue in this case. AMD states that neither

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expert has filed a patent with a priority date falling within the past six years. Reply (Dkt. No. 225)

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United States District Court
Northern District of California

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at 4. AMD points out that Imagination made similar objections in an unrelated ITC matter, ITC

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Investigation No. 337-TA-984, and those objections were overruled. See Fahrenkrog Decl. Exs. I,

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J (Dkt. Nos. 208-10, 208-11). In overruling Imagination’s objections, Administrative Law Judge

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Thomas Pender stated that the parties’ protective order provided “a sufficient deterrent against

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unauthorized use or disclosure,” and found “little risk of misuse” given the experts were not

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“involved in competitive decision-making or product development in the same [graphics

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processing] field . . . .” Fahrenkrog Decl. Ex. J, Order Overruling Objection; see also Fahrenkrog

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Supp. Decl. Ex. M, ITC Hearing Tr. (Dkt. No. 225-2) at 12-13 (“The fact that the disputed experts

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previously served as litigation experts in connection with graphics processing technology is

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insufficient to disqualify them, as it would also disqualify any person who has ever served as a

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consulting or testifying expert in any litigation involving graphics processors.”).

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The Court agrees with AMD. Disclosure of Imagination’s materials to Drs. Mangione-

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Smith and Wolfe does not pose an unreasonable risk of commercial harm.

Indeed, Drs.

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Mangione-Smith and Wolfe are active consultants in the intellectual property space, and serve as

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expert witnesses in patent cases with some regularity. They are both inventors and writers in their

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Imagination states that “the parties to this case are also involved in a co-pending ITC
Investigation numbered 337-TA-1044.” Opp’n at 2. Imagination provides little detail about the
ITC matter, stating that the investigation involves “different patents[,] but the same Imagination
products.” Id. at 4.
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respective fields of expertise. However, neither one works directly for an Imagination competitor,

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and Imagination has provided no concrete evidence that either one engages in or assists with

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competitive decision-making at an Imagination competitor. The Court finds it unlikely that AMD

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would be able to select an expert in this space who does not consult, publish, teach, or invent in

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the relevant field. The experts’ roles in this case – to review “thousands of files, hundreds of

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thousands of lines of code, all having a particular organization describing particular hardware

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structures,” Opp’n at 3 – do not pose a concrete risk of misuse. Under these circumstances,

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AMD’s choice of testifying experts will not be disturbed.
Having determined that, on this record, there is no concrete risk of misuse, the Court need

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not decide whether Drs. Mangione-Smith and Wolfe have unique expertise. The Court GRANTS

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United States District Court
Northern District of California

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AMD’s motion and OVERRULES Imagination’s objections. AMD may disclose the information

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subject to the provisions of the protective order, as amended. See Dkt. Nos. 120, 152.

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CONCLUSION

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For the foregoing reasons, AMD’s motion is GRANTED. Imagination’s objections to

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AMD’s disclosure of Imagination documents and source code to Drs. Mangione-Smith and Wolfe

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are OVERRULED.

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This order resolves Dkt. No. 208.

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IT IS SO ORDERED.
Dated: July 17, 2017
______________________________________
SUSAN ILLSTON
United States District Judge

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