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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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 TESSERA, INC., Plaintiff, 5 6 7 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 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., 19 20 21 22 23 24 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, 17 18 No. C 05-4063 CW v. MOTOROLA, INC.; QUALCOMM, INC.; FREESCALE SEMICONDUCTOR, INC.; and ATI TECHNOLOGIES, ULC, Defendants. ________________________________/ AND ALL RELATED COUNTERCLAIMS / Defendants Siliconware Precision Industries Co., Ltd. and 25 Siliconware USA, Inc., STATS ChipPAC, Inc., STATS ChipPAC (BVI) 26 Limited and STATS ChipPAC, Ltd., Freescale Semiconductor, Inc., 27 Advanced Micro Devices, Inc., ATI Technologies ULC, Spansion, LLC, 28 Spansion, Inc., Spansion Technology, Inc., ChipMOS U.S.A., Inc., 1 ChipMOS Technologies, Inc., STMicroelectronics, Inc. and 2 STMicroelectronics N.V. object to a nondispositive discovery order 3 of the Special Master issued on October 24, 2012, which addresses 4 disclosure of confidential information to overseas experts. 5 Court considers Defendants’ objections de novo and OVERRULES them. 6 Docket Nos. 1098 in Case No. 05-4063 and 228 in Case No. 12-692. 7 The Defendants challenge the Special Master’s order on three 8 bases. First, they argue that section 7.8 of the stipulated 9 interim protective order precludes counsel from sending United States District Court For the Northern District of California 10 confidential information outside the United States to anyone, 11 including to experts, and does not just limit its transmission to 12 foreign attorneys. 13 only counsel from taking, removing, or accessing confidential 14 documents outside of the United States, and does not address 15 whether experts may access confidential information located on a 16 secure ftp site while they are outside the United States. 17 placing the material on a secure ftp site located in the United 18 States, counsel does not “take, access or remove (via electronic 19 means or otherwise)” the material outside the United States, 20 although if foreign attorneys working on the cases were to access 21 confidential information on the ftp site while outside of the 22 United States, this may constitute a violation of section 7.8. 23 However, by its terms, section 7.8 restricts By Further, section 7.5 supports the Special Master’s 24 interpretation. In that section, the parties clearly prohibited 25 certain material from being “removed, accessed, taken or allowed 26 to be taken outside the United States” by anyone. 27 could have, but did not, make this provision broad enough to 28 encompass all confidential material, or material produced by one 2 The parties 1 party that, by contract with a third party, was restricted from 2 removal outside of the United States. 3 read as Defendants contend it should be, separate references to 4 “export controlled” material, including section 7.8, would be 5 rendered surplusage. 6 Further, if section 7.8 is Second, Defendants argue that the Special Master erred by 7 applying section 7.6, which deals with objections to experts 8 themselves, to this dispute, and ignoring section 7.8. 9 argue that section 7.6 is inapplicable, because they were not Defendants United States District Court For the Northern District of California 10 objecting to the use of the foreign experts in their entirety and 11 that section deals with “resolving disputes involving objections 12 to experts themselves.” 13 merely are arguing that much of the discovery material cannot be 14 given to the foreign experts for analysis. 15 Mot. at 4. Instead, they state that they The Special Master correctly found that section 7.6 is 16 applicable here. According to its title, section 7.6 sets forth 17 “procedures for approving disclosure of ‘confidential,’ ‘highly 18 confidential--attorneys’ eyes only,’ or ‘highly confidential 19 financial--attorneys’ eyes only’ information or items to experts,” 20 precisely what Tessera seeks here. 21 disclosure of confidential material to an expert is inappropriate 22 for a variety of reasons. 23 “disclosure is not reasonably necessary for this litigation” as 24 required by section 7.2(c). 25 disclosure of confidential material is governed by the procedures 26 outlined in section 7.6, even if another section is also relevant 27 to the dispute. 28 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 3 Finally, even if Defendants’ 1 characterization of this section were accepted, in practical 2 terms, their objection would mean that Tessera is unable to use 3 certain individuals as experts in these cases. 4 Third, Defendants contend that the Special Master improperly 5 ignored the issue of providing notice to third parties regarding 6 the possible disclosure of their information overseas. 7 argue that these third parties had “a legitimate expectation that 8 their [confidential business information] would be protected 9 pursuant to Section 7.8 and other sections of the” protective Defendants United States District Court For the Northern District of California 10 order. However, as stated above, other than for “export 11 controlled” information, these third parties did not have a 12 reasonable expectation that their information would never be taken 13 outside the United States under any circumstances whatsoever. 14 Further, although Defendants generally aver that there are such 15 entities, they never specifically identify any such third parties, 16 who were not also parties to this case and who had not received 17 notice and an opportunity to be heard. 18 7.4 of the protective order, when Defendants believed that their 19 disclosure of information to Tessera might violate a 20 confidentiality obligation owed to a nonparty, they were required 21 to provide written notification to the nonparty, and then inform 22 Tessera if they received a response to the notification. 23 Defendants may not have believed that their disclosure of this 24 material to Tessera violated such an obligation at the time it was 25 initially provided, if Defendants reasonably believed that 26 disclosure did so after Tessera informed them of its 27 interpretation of the protective order, Defendants could have 28 provided notice to the nonparties. 4 In addition, under section Although Defendants have offered no 1 evidence that they have done so or that they have received any 2 objections from the nonparties. 3 not ignore the potential concerns of the third parties. 4 specifically found that the security procedures identified by 5 Tessera “are reasonable to preserve the confidentiality of the 6 information, including defendants own information and any 7 information from their clients that is contained therein.” 8 No. 1095 in Case No. 05-4063, 3. 9 United States District Court For the Northern District of California 10 Finally, the Special Master did He Docket Defendants’ objections are overruled. IT IS SO ORDERED. 11 12 13 Dated: November 21, 2012 CLAUDIA WILKEN United States District Judge 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5

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