In re: Subpoena to Sigma Designs, Inc.

Filing 19

ORDER DENYING MOTION TO TRANSFER AND SETTING HEARING ON MOTION TO ENFORCE SUBPOENA. Motion Hearing set for 8/17/2016 09:30 AM in Courtroom A, 15th Floor, San Francisco before Magistrate Judge Sallie Kim. Signed by Magistrate Judge Sallie Kim on 8/3/2016. (mklS, COURT STAFF) (Filed on 8/3/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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PERSONALIZED MEDIA
COMMUNICATIONS, LLC,
Plaintiff,

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v.

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TOP VICTORY ELECTRONICS
(TAIWAN) CO. LTD., et al.,
Defendants.

United States District Court
Northern District of California

Case No. 16-mc-80122-SK
ORDER DENYING MOTION TO
TRANSFER AND SETTING HEARING
ON MOTION TO ENFORCE
SUBPOENA
Regarding Docket Nos. 1, 18

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Before the Court is a motion brought by Plaintiff Personalized Media Communications

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(“PMC”) to either transfer the enforcement of a subpoena to the Eastern District of Texas or to

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enforce a subpoena against non-party Sigma Designs, Inc. (“Sigma”), domiciled in the Northern

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District of California. Having reviewed the parties’ briefs and the documentation filed in support,

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the Court hereby DENIES the motion to transfer on the grounds that PMC failed to establish

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exceptional circumstances warranting the transfer of the motion. The Court further sets a hearing on

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the issue of enforcement of PMC’s subpoena for August 17, 2016 at 9:30 a.m. PDT in Department

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A, 15th Floor, 450 Golden Gate Avenue, San Francisco, California. Out of state counsel may appear

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by telephone, if requested. Counsel must make a written request to appear by telephone.

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A.

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Background
In this patent infringement case involving Vizio digital televisions, PMC seeks to obtain

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discovery from third party supplier Sigma, which allegedly supplied systems-on-a-chip or “chips”

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to Defendant Vizio, Inc. PMC served a subpoena on Sigma in February 2016, in response to

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which Sigma submitted objections and produced documents. PMC contests Sigma’s objections

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and moves to compel further production. In addition, pursuant to Federal Rule of Civil Procedure

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45(f), PMC moves the Court to transfer its motion to the issuing court, the United States District

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Court for the Eastern District of Texas, Marshall Division. PMC contends that exceptional

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circumstances exist that warrant transferring the motion to the issuing court.
PMC’s motion was filed with this Court on June 7, 2016. (Dkt. 1) Subsequently, this Court

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granted three extensions for Sigma to respond while the parties met and conferred to resolve their

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dispute. (Dkts. 13, 15, 17.) On July 29, 2016, Sigma filed a response, asking the Court to deny

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PMC’s motion to transfer, and to quash or modify the subpoena. (Dkt. 18.)

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B.

Motion to Transfer

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1.

Legal Standard

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Federal Rule of Civil Procedure 45 provides that subpoenas are issued from the court where
the action is pending. Fed.R.Civ.P. 45(a)(2). Compliance is addressed by the court where

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United States District Court
Northern District of California

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compliance occurs; if compliance is required elsewhere, compliance may be transferred to the

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issuing court if the subject of the subpoena “consents or if the court finds exceptional

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circumstances.” Fed. R. Civ. P. 45(f).

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The notes of the Advisory Committee provide guidance as to when “exceptional

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circumstances” exist. The primary consideration should be to avoid “burdens on local nonparties

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subject to subpoenas and it should not be assumed that the issuing court is in a superior position to

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resolve subpoena-related motions.” Advisory Committee Note to 2013 Amendments of

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Fed.R.Civ.P. 45. The Advisory Committee acknowledged that there may be some circumstances

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where “transfer may be warranted in order to avoid disrupting the issuing court’s management of the

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underlying litigation, as when the court has already ruled on issues presented by the motion or the

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same issues are likely to arise in discovery in many districts.” Id. Transfer is only appropriate if

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such interests outweigh the interests of the nonparty in having the subpoena resolved locally. Id.

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PMC argues that the enforcement of the subpoena should be transferred because it would

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promote judicial economy and because there is a risk of inconsistent rulings between this Court, the

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Eastern District of Texas, and the Central District of California, where another subpoena has been

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issued. PMC relies on what sounds like a motion to dismiss certain claims against Vizio pending in

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the Eastern District of Texas which allegedly turns on production of documents from Vizio,

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including documents involving Sigma supplied chips. However, PMC has not cited to any
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previously court-determined discovery decision or issue with which this Court is at risk of

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conflicting. As to the issue of judicial economy, such a risk would be inherent in any motion to

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compel determined by an issuing court. Yet, the Advisory Committee clearly states that the

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primary consideration is burden on the local nonparty.
PMC has not provided sufficient factual support for its conclusion that Sigma will not be

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burdened by the transfer of the motion to the issuing court. PMC argues that Sigma is coordinating

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its production with PMC and that there is a policy from the Advisory Committee encouraging judges

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to allow telephonic appearances. However, the Court finds these arguments inadequate. “[L]ocal

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nonparties should be burdened as little as practicable by litigation in which they are not involved,

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and local resolution of the motion will typically impose a lighter burden.” Woods ex del. U.S. v.

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United States District Court
Northern District of California

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SouthernCare, Inc., 303 F.R.D. 405, 407-408 (N.D. Ala 2014). Given that PMC has not established

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exceptional circumstances, Plaintiff’s motion to transfer is DENIED.

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C.

Motion to Compel

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According to the Declaration of Karen Hu, submitted in support of Sigma’s response, after

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PMC filed its motion, Sigma produced over 600 pages of technical documents on July 1, 2016, 90

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additional documents on July 15, 2016, and over 200 pages on July 28, 2016. (Dkt. 18-1, PP 5, 6,

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7.) Based on the Bates stamp numbers, Sigma has produced 1433 pages to date — much of which

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was provided after PMC filed its current motion. The Court wishes to hear from both parties as to

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the remaining issues in dispute. Therefore, the Court sets this issue for hearing on August 17,

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2016 at 9:30 a.m. No further pleadings are necessary.

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IT IS SO ORDERED.
Dated: August 3, 2016
______________________________________
SALLIE KIM
United States Magistrate Judge

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