Tessera, Inc. v. Advanced Micro Devices, Inc. et al
Filing
1109
ORDER OVERRULING (228 in 4:12-cv-00692-CW) (1098 in 4:05-cv-04063-CW) DEFENDANTS' OBJECTIONS TO NONDISPOSITIVE ORDER OF THE SPECIAL MASTER. Signed by Judge Claudia Wilken on November 21, 2012. (cwlc2, COURT STAFF) (Filed on 11/21/2012)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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TESSERA, INC.,
Plaintiff,
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United States District Court
For the Northern District of California
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v.
ADVANCED MICRO DEVICES, INC.;
SPANSION, LLC; SPANSION, INC;
SPANSION TECHNOLOGY, INC.;
ADVANCED SEMICONDUCTOR
ENGINEERING, INC.; ASE (U.S.),
INC.; CHIPMOS TECHNOLOGIES, INC.;
CHIPMOS U.S.A., INC.; SILICONWARE
PRECISION INDUSTRIES CO., LTD.;
SILICONWARE USA, INC.;
STMICROELECTRONICS N.V.;
STMICROELECTRONICS, INC.; STATS
CHIPPAC, INC.; STATS CHIPPAC
(BVI), LTD.; and STATS CHIPPAC,
LTD.,
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ORDER OVERRULING
DEFENDANTS’
OBJECTIONS TO
NONDISPOSITIVE
ORDER OF THE
SPECIAL MASTER
(Docket Nos. 1098
in Case No.
05-4063 and 228 in
Case No. 12-692)
Defendants.
________________________________/
TESSERA, INC.,
No. C 12-692 CW
Plaintiff,
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No. C 05-4063 CW
v.
MOTOROLA, INC.; QUALCOMM, INC.;
FREESCALE SEMICONDUCTOR, INC.;
and ATI TECHNOLOGIES, ULC,
Defendants.
________________________________/
AND ALL RELATED COUNTERCLAIMS
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Defendants Siliconware Precision Industries Co., Ltd. and
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Siliconware USA, Inc., STATS ChipPAC, Inc., STATS ChipPAC (BVI)
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Limited and STATS ChipPAC, Ltd., Freescale Semiconductor, Inc.,
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Advanced Micro Devices, Inc., ATI Technologies ULC, Spansion, LLC,
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Spansion, Inc., Spansion Technology, Inc., ChipMOS U.S.A., Inc.,
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ChipMOS Technologies, Inc., STMicroelectronics, Inc. and
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STMicroelectronics N.V. object to a nondispositive discovery order
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of the Special Master issued on October 24, 2012, which addresses
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disclosure of confidential information to overseas experts.
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Court considers Defendants’ objections de novo and OVERRULES them.
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Docket Nos. 1098 in Case No. 05-4063 and 228 in Case No. 12-692.
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The
Defendants challenge the Special Master’s order on three
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bases.
First, they argue that section 7.8 of the stipulated
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interim protective order precludes counsel from sending
United States District Court
For the Northern District of California
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confidential information outside the United States to anyone,
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including to experts, and does not just limit its transmission to
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foreign attorneys.
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only counsel from taking, removing, or accessing confidential
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documents outside of the United States, and does not address
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whether experts may access confidential information located on a
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secure ftp site while they are outside the United States.
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placing the material on a secure ftp site located in the United
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States, counsel does not “take, access or remove (via electronic
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means or otherwise)” the material outside the United States,
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although if foreign attorneys working on the cases were to access
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confidential information on the ftp site while outside of the
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United States, this may constitute a violation of section 7.8.
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However, by its terms, section 7.8 restricts
By
Further, section 7.5 supports the Special Master’s
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interpretation.
In that section, the parties clearly prohibited
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certain material from being “removed, accessed, taken or allowed
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to be taken outside the United States” by anyone.
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could have, but did not, make this provision broad enough to
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encompass all confidential material, or material produced by one
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The parties
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party that, by contract with a third party, was restricted from
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removal outside of the United States.
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read as Defendants contend it should be, separate references to
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“export controlled” material, including section 7.8, would be
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rendered surplusage.
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Further, if section 7.8 is
Second, Defendants argue that the Special Master erred by
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applying section 7.6, which deals with objections to experts
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themselves, to this dispute, and ignoring section 7.8.
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argue that section 7.6 is inapplicable, because they were not
Defendants
United States District Court
For the Northern District of California
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objecting to the use of the foreign experts in their entirety and
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that section deals with “resolving disputes involving objections
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to experts themselves.”
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merely are arguing that much of the discovery material cannot be
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given to the foreign experts for analysis.
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Mot. at 4.
Instead, they state that they
The Special Master correctly found that section 7.6 is
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applicable here.
According to its title, section 7.6 sets forth
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“procedures for approving disclosure of ‘confidential,’ ‘highly
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confidential--attorneys’ eyes only,’ or ‘highly confidential
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financial--attorneys’ eyes only’ information or items to experts,”
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precisely what Tessera seeks here.
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disclosure of confidential material to an expert is inappropriate
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for a variety of reasons.
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“disclosure is not reasonably necessary for this litigation” as
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required by section 7.2(c).
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disclosure of confidential material is governed by the procedures
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outlined in section 7.6, even if another section is also relevant
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to the dispute.
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Master, section 7.8 is inapplicable.
A party may object that
For example, a party may argue that
However, any objection to the
Further, as discussed above and by the Special
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Finally, even if Defendants’
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characterization of this section were accepted, in practical
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terms, their objection would mean that Tessera is unable to use
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certain individuals as experts in these cases.
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Third, Defendants contend that the Special Master improperly
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ignored the issue of providing notice to third parties regarding
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the possible disclosure of their information overseas.
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argue that these third parties had “a legitimate expectation that
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their [confidential business information] would be protected
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pursuant to Section 7.8 and other sections of the” protective
Defendants
United States District Court
For the Northern District of California
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order.
However, as stated above, other than for “export
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controlled” information, these third parties did not have a
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reasonable expectation that their information would never be taken
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outside the United States under any circumstances whatsoever.
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Further, although Defendants generally aver that there are such
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entities, they never specifically identify any such third parties,
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who were not also parties to this case and who had not received
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notice and an opportunity to be heard.
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7.4 of the protective order, when Defendants believed that their
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disclosure of information to Tessera might violate a
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confidentiality obligation owed to a nonparty, they were required
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to provide written notification to the nonparty, and then inform
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Tessera if they received a response to the notification.
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Defendants may not have believed that their disclosure of this
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material to Tessera violated such an obligation at the time it was
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initially provided, if Defendants reasonably believed that
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disclosure did so after Tessera informed them of its
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interpretation of the protective order, Defendants could have
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provided notice to the nonparties.
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In addition, under section
Although
Defendants have offered no
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evidence that they have done so or that they have received any
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objections from the nonparties.
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not ignore the potential concerns of the third parties.
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specifically found that the security procedures identified by
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Tessera “are reasonable to preserve the confidentiality of the
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information, including defendants own information and any
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information from their clients that is contained therein.”
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No. 1095 in Case No. 05-4063, 3.
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United States District Court
For the Northern District of California
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Finally, the Special Master did
He
Docket
Defendants’ objections are overruled.
IT IS SO ORDERED.
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Dated: November 21, 2012
CLAUDIA WILKEN
United States District Judge
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