Avago Technologies General IP (Singapore) Pte. Ltd. v. ASUSTeK Computer, Inc. et al

Filing 140

ORDER re 122 Letter of Request filed by Avago Technologies General IP (Singapore) PTE Ltd. Signed by Judge Edward M. Chen on 12/9/15. (bpf, COURT STAFF) (Filed on 12/10/2015)

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
AVAGO TECHNOLOGIES GENERAL IP
(SINGAPORE) PTE. LTD.,
Case No. 3:15-CV-04525-EMC

Plaintiff,
v.
ASUSTEK COMPUTER INC. and ASUS
COMPUTER INTERNATIONAL,
Defendants.

REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
(LETTER OF REQUEST)

TO THE APPROPRIATE JUDICIAL AUTHORITY OF CHINA:
The United States District Court for the Northern District of California presents its
compliments to the Appropriate Judicial Authority of China, and requests international
assistance to obtain evidence to be used in a civil proceeding before this Court in the abovecaptioned matter. The Court requests the assistance described herein in the interests of justice.
The civil proceeding captioned above is a patent infringement action now pending in the
United States District Court for the Northern District of California, in which Plaintiff Avago
Technologies General IP (Singapore) PTE. Ltd. (“Avago”) filed suit against Defendants
ASUSTeK Computer Inc. and ASUS Computer International (collectively “ASUS”) seeking a
judgment that ASUS infringes U.S. Patent Nos. 5,670,730, 5,870,087, 5,982,830, 6,188,835,
6,430,148, 6,744,387, and 6,982,663 (collectively, the “Asserted Patents”). Avago seeks an
award of damages from ASUS to compensate for the alleged patent infringement. The
technology described and claimed in the Asserted Patents relates to, among other things:

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decoding electronic video and/or audio files (e.g., MPEG); storing audio files (e.g., MP3) on an
integrated circuit chip; reading data from an optical disc (e.g., DVD or Blu-ray disc); and use of
or compatibility with the IEEE 802.11 wireless standard. Through its investigation, Avago has
determined that FuZhou Rockchip Electronics Co., Ltd., (“FuZhou”) makes components that
are used in the allegedly infringing devices made and sold by ASUS. Thus, it appears that
FuZhou possesses information of relevance to Avago’s claims of infringement in this patent
litigation which is necessary for the purposes of justice and for the due determination of the
issues in the dispute between the parties in the above-captioned matter.
The undersigned as a United States District Judge of the United States District Court for
the Northern District of California (located at the United States District Court, 450 Golden Gate
Avenue, San Francisco, CA 94102 and with phone number [phone]), hereby issues this
Letter of Request for judicial assistance to the Competent Authority of China in accordance
with the Hague Convention of March 18, 1970, on the Taking of Evidence Abroad in Civil or
Commercial Matters, as follows:
1.

Sender

The Honorable Edward M. Chen
United States District Court of the Northern District of
California
450 Golden Gate Avenue,
San Francisco, CA 94102

2.

Central Authority of the
Requested State

Ministry of Justice
International legal Cooperation Center (ILCC)
6, Chaoyangmen Nandajie
Chaoyang District
Beijing
P.C. 100020
People’s Republic of China

2

3.

Person to whom the
executed request is to be
returned

Kilpatrick Townsend & Stockton LLP
Matthew C. Holohan
1400 Wewatta Street, Suite 600
Denver, CO, 80202
USA
Telephone: [phone]
Facsimile: (303) 571- 4321
E-mail: [e-mail]

4.

Specification of the date
by which the requesting
authority requires receipt
of the response to the
Letter of Request

As soon as practicable.

IN CONFORMITY WITH ARTICLE 3 OF THE CONVENTION, THE UNDERSIGNED
APPLICANT HAS THE HONOUR TO SUBMIT THE FOLLOWING REQUEST:
5.
a.

The Honorable Edward M. Chen
United States District Court of the Northern District of
California
450 Golden Gate Avenue,
San Francisco, CA 94102

b.

To the competent
authority of
(Article 3, a)

Ministry of Justice
International legal Cooperation Center (ILCC)
6, Chaoyangmen Nandajie
Chaoyang District
Beijing
P.C. 100020
People’s Republic of China

c.

6.

Requesting
judicial authority
(Article 3, a)

Names of the case
and any
identifying
number

Avago Technologies General IP (Singapore) Pte. Ltd. v.
ASUSTeK Computer Inc. et al., Case No. 3:15-cv-04525EMC (N.D. Cal.)

Names and addresses of
the parties and their
representatives (including
representatives in the
requested State (Article 3,
b)
a.
Plaintiff

Avago Technologies General IP (Singapore) Pte. Ltd.

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Representatives

ASUSTek Computer Inc. and ASUS Computer
International
Alston & Bird LLP
2828 North Harwood Street, Suite 1800
Dallas, TX 75201

Other parties

Not applicable

Representatives

c.

Defendants

Representatives

b.

Kilpatrick Townsend & Stockton LLP
1400 Wewatta Street, Suite 600
Denver, CO 80202

Not Applicable

Nature of the
proceedings
(divorce,
paternity, breach
of contract,
product liability,
etc.) (Article 3, c)

This legal dispute is an existing civil action that
commenced on February 20, 2015. On that date, Plaintiff
Avago Technologies General IP (Singapore) Pte. Ltd.
("Avago") filed a complaint in the United States District
Court for the Eastern District of Texas, alleging
infringement of United States Patent Nos. 5,670,730;
5,870,087; 5,982,830; 6,188,835; 6,430,148; 6,744,387;
and 6,982,663 (collectively the "Asserted Patents") by
Defendants ASUSTek Computer Inc. and ASUS
Computer International (collectively "ASUS"). The case
was then transferred to the Northern District of California
on September 25, 2015, and was assigned to Judge
Edward M. Chen.

7.
a.

Through an investigation, Avago has determined that
FuZhou Rockchip Electroncis Co., Ltd. (“FuZhou”) makes
components that are used in the allegedly infringing
devices made and sold by ASUS. Thus, it appears that
FuZhou possesses information of relevance to Avago's
claims of infringement in this patent litigation. As such,
Avago respectfully requests permission to obtain
documents from FuZhou, as set forth in Exhibit A.
Avago understands that a subpoena will be required to
obtain these documents. Avago seeks these documents to
obtain evidence that is anticipated to be used at trial.
8.
a.

Evidence to be

The evidence requested herein consists of documents from
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obtained or other
judicial act to be
performed (Article
3, d)
b.

FuZhou relating to the Asserted Patents. Plaintiff
anticipates that this evidence will be used at trial.

Purpose of the
evidence or
judicial act sought

The evidence sought from FuZhou will be covered by the
Protective Order in this action, attached hereto as Exhibit
C, and is anticipated that this evidence will be used at
trial. Through an investigation, Plaintiff has determined
that FuZhou makes components that are used in the
allegedly infringing devices made and sold by ASUS.
Thus, it appears that FuZhou possesses information of
relevance to Avago's claims of infringement in this patent
litigation.

9.

Identity and address of
any person to be
examined (Article 3, e)

10.

Questions to be put to the
persons to be examined or
statement of the subjectmatter about which they
are to be examined
(Article 3, f)
Documents or other
property to be inspected
(Article 3, g)

11.

12.

13.

14.

FuZhou Rockchip Electronics Co., Ltd.
Building No. 18, A District, Fuzhou Software Park,
89 Soft Avenue
Tongpan Road Gulou District
Fuzhou, Fujian Province 350003
China

FuZhou will also be asked to produce the documents listed
in Exhibit A.

Any requirement that the
evidence be given on oath
or affirmation and any
special form to be used
(Article 3, h)
Special methods or
procedure to be followed
(e.g. oral or in writing,
verbatim, transcript or
summary, crossexamination, etc.)
(Articles 3, i and 9)
Request for notification

Kilpatrick Townsend & Stockton LLP
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of the time and place for
the execution of the
Request and identity of
any person to be notified
(Article 7)

Matthew C. Holohan
1400 Wewatta Street, Suite 600
Denver, CO, 80202
USA
Telephone: [phone]
Facsimile: (303) 571- 4321
E-mail: [e-mail]

15.

Request for attendance or
participation of judicial
personnel of the
requesting authority at the
execution of the Letter of
Request (Article 8)

Plaintiff requests that counsel for Plaintiff and Defendants,
and/or local counsel based in China, be allowed to attend
and participate in the examination, if any.

16.

Specification of privilege
or duty to refuse to give
evidence under the law of
the State of origin (Article
11, b)

Under the laws of the United States, a witness has a
privilege to refused to provide evidence if the evidence
discloses a confidential communication between that
witness and an attorney for that witness that was made for
the purpose of obtaining legal advice.
United States law also recognizes a privilege against
criminal self-incrimination.
Outside the strict area of privilege, certain limited
immunities are available that may place restriction on the
giving of evidence, such as the limited protection of
documents crated as the work product of attorneys during
or in anticipation of litigation.

17.

The fees and costs
incurred which are
reimbursable under the
second paragraph of
Article 14 or under
Article 26 of the
Convention will be borne
by

Plaintiff

6

DERED

O OR
IT IS S

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S
UNIT
ED

RT
U
O

December 9,2015

H

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RT

FO

NO

Hon. Edward M. Chen
United States District Judge
United States District Court for thedNorthern District of
. Chen
dwar M
California
Judge E
450 Golden Gate Avenue,
San Francisco, CA 94102
ER
United States of America
C

A

Dated:

S DISTRICT
TE
C
TA

N

7

F
D IS T IC T O
R

EXHIBIT A
DOCUMENTS REQUESTED
DEFINITIONS AND INSTRUCTIONS
DEFINITIONS
1.

“Defendants” shall mean and refer to Defendants ASUSTeK Computer Inc. and

ASUS Computer International, and all predecessors, successors, subsidiaries, divisions, parents,
and affiliates thereof, past or present, joint ventures, and other legal entities that are or were
wholly owned or controlled by Defendants, either directly or indirectly, and all past or present
directors, officers, owners, employees, agents, representatives, consultants, attorneys, and others
acting for or on behalf of these same entities.
2.

“Plaintiff” or “Avago” shall mean and refer to Avago Technologies General IP

(Singapore) Pte. Ltd., its officers, directors, employees, partners, corporate parent, subsidiaries,
or affiliates, and any persons or entities who are, or at any time to which the Letter relates were
acting on behalf of Avago.
3.

“FuZhou,” “You,” “you,” “Your,” or “your” shall mean and refer FuZhou

Rockchip Electronics Co., Ltd., and all predecessors, successors, subsidiaries, divisions, parents
and affiliates thereof, past or present, joint ventures, and other legal entities that are or were
wholly or partially owned or controlled by FuZhou, either directly or indirectly, and all past or
present directors, officers, owners, agents, attorneys, and others acting for or on behalf of these
same entities.
4.

The “’730 Patent” means U.S. Patent No. 5,670,730.

5.

The “’087 Patent” means U.S. Patent No. 5,870,087.

6.

The “’830 Patent” means U.S. Patent No. 5,982,830.

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7.

The “’835 Patent” means U.S. Patent No. 6,188,835.

8.

The “’148 Patent” means U.S. Patent No. 6,430,148.

9.

The “’387 Patent” means U.S. Patent No. 6,744,387.

10.

The “’663 Patent” means U.S. Patent No. 6,982,663.

11.

The term “Patents-in-Suit” means and refers to, individually and collectively, the

’730 Patent, the ’087 Patent, the ’830 Patent, the ’835 Patent, the ’148 Patent, the ’387 Patent,
and the ’663 Patent.
12.

The term “Audio Component(s)” means any component adapted to or capable of

decoding electronic audio files or audio data streams (e.g., MPEG-2, Layer III, etc.), including,
without limitation, FuZhou Part No. TFBGA453LD.
13.

The term “Video Component(s)” means any component adapted to or capable of

encoding or decoding electronic video files or video data streams (e.g., MPEG-2, MPEG4/H.264, etc.), including, without limitation, FuZhou Part No. TFBGA453LD.
14.

The term “Component(s)” means Audio Components and Video Components,

individually and collectively.
15.

“Accused Product(s)” means any activity, product, process, method, system,

apparatus, or thing made, used, sold, or offered for sale by Defendants or imported into the
United States by Defendants that infringes one or more claims of the Patents-in-Suit, including,
without limitation, ASUS Model Nos. T100TAF, G751JM, M11BB-B07, X102BA, and/or
TF701T. “Accused Product(s)” includes but is not limited to Defendants’ products containing
Components.
16.

“Source Code” means computer source and/or object code (e.g., RTL, HDL,

VHDL, Verilog, etc.), whether in printed or electronic form.

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17.

“Third Party” means anyone other than Plaintiff or Defendants.

18.

The “Litigation” means the action styled Avago Technologies General IP

(Singapore) Pte. Ltd. v. ASUSTeK Computer Inc. et al., Case No. 3:15-cv-04525-EMC (N.D.
Cal.).
19.

“USPTO” means the United States Patent and Trademark Office.

20.

The term “Document” or “document” is used in its customary broad sense

pursuant to Federal Rules of Civil Procedure 26 and 34 and includes, without limitation, the
following items, whether handwritten, printed, recorded, filmed, or produced by any other
mechanical or electronic process, including computer tapes, disks, ROM, CD-ROM or any other
data storage media (whether or not it is in machine-readable form), whether or not asserted to be
privileged or immune from discovery and whether master or original or copy: agreements;
communications, including intracompany communications and communications between
individual corporate respondents; correspondence; cablegrams, radiograms, telegrams, telexes,
and telecopies; notes and memoranda, summaries and minutes of conferences; summaries and
records of personal conversations or interviews; books, manuals, publications, brochures and
diaries; time logs, daily planners, and log books; laboratory and engineering reports and
notebooks; specifications or bills of materials; charts; plans; sketches; diagrams and drawings;
blueprints and other engineering drawings; foils, slides, negatives; promotional proposals;
photographs; reports and/or summaries of investigations; opinions and reports of consultants;
patents, design registrations, and applications for any of them; patent appraisals and patentability
or validity searches and studies; opinions of counsel; sales records, including purchase orders
and invoices; reports and summaries of negotiations; pamphlets; catalogs and catalog sheets;
advertisements; circulars; trade letters; press, publicity, trade and product releases; drafts of, or

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original, preliminary notes or marginal notations appearing on any document; other reports and
records; computer tapes or cards, electronic mail and any other information-containing paper or
other medium. A draft of a non-identical copy is a separate document within the meaning of this
term.
21.

The term “Thing” or “thing” means any tangible object other than a Document

including without limitation objects of every kind and nature, as well as prototypes, models,
drafts, or specimens thereof.
22.

The term “Communication” or “communication” includes all instances in which

information has been transmitted from one person or entity to another in the form of facts, ideas,
inquiries, and otherwise, including but not limited to, telephone conversations, meetings,
conferences, correspondence, other mailings, telexes, cables, telecopied transmissions,
facsimiles, e-mails or other data transmissions of any type or nature, whether oral, electronic or
written.
23.

“Concerning” means regarding, relating to, concerning, pertaining to, referring to,

describing, discussing, reflecting, stating, mentioning, comprising, containing, including,
summarizing, explaining, providing context to, commenting upon, embodying, showing,
demonstrating, evidencing, constituting, consisting of, supporting, contradicting, resulting from,
or to be in any way logically or factually connected with the matter specified.
24.

The term “Person” or “person” refers to natural persons (living or deceased), to

corporate or other business entities (whether or not in the employ of the plaintiff), and to legal
and governmental entities or associates. The acts and knowledge of a person are defined to
include the acts and knowledge of a corporate or other business entity’s directors, officers,
members, employees, representatives, agents, and attorneys.

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25.

The words “and” and “or” shall be construed conjunctively or disjunctively,

whichever makes the request more inclusive.
26.

The singular shall be deemed to include the plural, the plural to include the

singular, and words in the masculine, feminine, or neuter shall include each of the other genders
as necessary to make the Request inclusive rather than exclusive.
INSTRUCTIONS
1.

In responding to the following document requests, furnish all available

documents in the possession, custody, or control of FuZhou.
2.

If you lack the ability to comply with a particular document request, specify

whether the inability to comply is because the particular document or category of documents
requested never existed; has been destroyed; has been lost or misplaced; has been stolen; or has
never been or is no longer in your possession, custody, or control. If the particular document or
category of documents is no longer in your possession, custody, or control, identify the name
and address of any person or entity known or believed by you to have possession, custody, or
control of that document or category of documents.
3.

If you contend a particular document or category of documents contains trade

secret or other confidential research, development, or commercial information, please mark the
document or documents as such, as required by the protective order attached to this Letter of
Request as Exhibit C.
DOCUMENT REQUESTS
1.

Documents sufficient to identify each of Your products or Components sold or

otherwise provided to Defendants (including those products or Components sold or otherwise
provided to any entities participating or involved in the design, manufacture, assembly, or testing
of any product of Defendants) into any product of Defendants since 2009.

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2.

For each of Your products or Components identified in response to Request No.

1, documents sufficient to identify the product name, model and revision number, and product
family.
3.

For each of Your products or Components identified in response to Request No.

1, documents sufficient to describe the identification and meaning of all chip or die markings or
codes, such as model number, lot code, and the like.
4.

Documents sufficient to identify each product of Defendants into which any of

your products or Components are incorporated.
5.

For each of Your products or Components identified in response to Request No.

1, Documents sufficient to show the supply, manufacturing, and distribution chain for each of
Your products or Components, from their point(s) of manufacture to their point(s) of
incorporation into any product of Defendants.
6.

For each of Your products or Components identified in response to Request No.

1, all Documents Concerning the design, layout, operation, and/or function of any such product
or Components, including but not limited to, manufacturing drawings, datasheets, blueprints or
other technical diagrams, design and engineering specifications, computer modeling information,
Source Code, and development and testing information.
7.

All Source Code designed, written, compiled, produced and/or used by You

Concerning any Component used in any product sold by or for the benefit of Defendants, and all
Documents Concerning such Source Code.
8.

All Documents relating to testing and/or certification of any of Your products

and/or Components used in any product sold by or for the benefit of Defendants, including
Documents relating to compliance with any standard.

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9.

All Documents and Communications with Defendants Concerning the Accused

Products.
10.

All Documents and Communications with Defendants Concerning any

Component(s).
11.

All Documents and Communications with Defendants Concerning Avago, the

Litigation, the Patents-in-Suit, or the Letter.
12.

All Documents and Communications with Defendants Concerning the Patents-in-

13.

All Documents and Communications Concerning any and all agreements or

Suit.

negotiations for agreements between You and Defendants for the design, manufacture, use, sale,
offer for sale, and/or importation of any product or Component for use in any Accused Product.
14.

All Documents Concerning the purchase, sale and/or pricing of any product or

Component sold to Defendants for use in any Accused Product.
15.

All Documents Concerning supply agreements, statements of work, plans of

record, purchase orders, engineering requirement specifications, mechanical outlines, and/or the
pricing of Components and associated technology between You and Defendants or between You
and any Third-Party for any product or Component used in any Accused Products.
16.

Documents sufficient to identify on a monthly basis products or Components sold

and/or shipped to Defendants.
17.

All Documents Concerning any Communications, contacts, licenses, or

agreements between You and Defendants Concerning any of the Patents-in-Suit or the subject
matter thereof.

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18.

All Documents Concerning any Communications, contacts, licenses, or

agreements between You and any Third-Party Concerning any of the Patents-in-Suit or the
subject matter thereof.

67631535V.3

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