MediaTek Inc. v. Freescale Semiconductor, Inc.

Filing 266

ORDER RE: FREESCALES DISCOVERY LETTER BRIEF RE: PRODUCTION OF DOCUMENTS RELATED TO MEDIATEKS ACQUISITION OF THE PATENTS IN SUIT (Dkt. No. 191-3). Signed by Magistrate Judge Jacqueline Scott Corley on 9/23/2013. (ahm, COURT STAFF) (Filed on 9/23/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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Northern District of California

United States District Court

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MEDIATEK, INC.,
Plaintiff,
v.

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FREESCALE SEMICONDUCTOR, INC.,

Case No. 11-5341 YGR (JSC)
ORDER RE: FREESCALE’S
DISCOVERY LETTER BRIEF RE:
PRODUCTION OF DOCUMENTS
RELATED TO MEDIATEK’S
ACQUISITION OF THE PATENTS IN
SUIT (Dkt. No. 191-3)

Defendant.

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Now pending before the Court is Defendant Freescale Semiconductor Inc.’s
(“Freescale”) discovery letter brief regarding production of documents related to Plaintiff
MediaTek, Inc.’s (“MediaTek”) acquisition of the patents in suit. (Dkt. No. 191-3.) Although
Freescale failed to submit the dispute as a joint letter brief in accordance with this Court’s
Standing Order, the Court agreed at the August 29, 2013 hearing to consider the motion if the
parties met and conferred and MediaTek had the opportunity to file an opposition, which it
has (Dkt. No. 243).
Freescale seeks an order compelling MediaTek to produce three categories of
documents related to the patents in suit: (1) documents related to a processor which
implemented the technology discussed in the ‘845 patent, (2) documents in the possession of

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MediaTek’s Rule 30(b)(6) designee MH Shieh, and (3) documents in the possession of

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MediaTek’s Rule 30(b)(6) designee Richard Yang. 1
With respect to the first category of documents, MediaTek represents that following

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the deposition of Joern Soerensen, one of the named inventors of the ‘845 patent, it conducted

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a further search for related documents and produced all responsive documents. Absent a

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showing, which Freescale has not made, that there are particular documents which have not

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been produced, the Court relies on MediaTek’s representation that it has produced all

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responsive documents.

his deposition testimony gives rise to questions regarding whether he conducted an adequate

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Northern District of California

As for the second category of documents, those of Mr. Shieh, Freescale contends that

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United States District Court

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search for responsive documents. In particular, Freescale points to Mr. Shieh’s testimony that

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he did not search for responsive documents until the day before his deposition and seeks

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documents such as datasheets and roadmaps for certain products, organization charts, and

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documents related to certain customers. (Dkt. No. 191-3 citing Dkt. No. 191-15 at 38:3-7.)

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MediaTek counters that this testimony was limited to Mr. Shieh’s search of email files citing

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earlier deposition testimony. (Dkt. No. 243 citing Dkt. No. 191-6 at 32:6; 33:4-5.) It is not

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clear from the excerpts of Mr. Shieh’s testimony provided to the Court whether his testimony

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regarding the documents referenced at page 38 of his transcript, which he had just provided to

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counsel, were in fact the same email files he was testifying about five pages earlier.

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Accordingly, MediaTek is ordered to produce responsive documents to the extent that they

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have not already been produced and are not excluded under the Court’s ESI Order (Dkt. No.

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97).
Finally, Freescale likewise takes issue with the document collection efforts of Mr.

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Yang. However, MediaTek’s opposition represents that all of Mr. Yang’s “non-email

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documents have been searched and his non-privileged responsive documents have been

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produced.” (Dkt. No. 243 at 2.) Further, MediaTek contends that the documents referenced

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A fourth category of documents related to the MT8135 product family is no longer relevant
given the Court’s denial of MediaTek’s motion to amend its infringement contentions to
include this product family. (Dkt. No. 232.)
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during Mr. Yang’s deposition were all electronic documents and he was similarly not

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designated as an email custodian in accordance with the Court’s ESI Order. The Court has

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reviewed the three pages of Mr. Yang’s testimony provided and concludes that he does

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appear to be referencing electronic documents only. Absent a showing that these documents

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are not covered by the ESI Order, which Freescale has not made, it appears that MediaTek

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has produced all responsive documents.

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Accordingly, Freescale’s motion to compel further production of documents is

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DENIED except as to any responsive documents in Mr. Shieh’s possession which have not

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already been produced.

Northern District of California

This Order disposes of Docket Nos. 191-3 and 243.

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United States District Court

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IT IS SO ORDERED.

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Dated: September 23, 2013
_________________________________
JACQUELINE SCOTT CORLEY
UNITED STATES MAGISTRATE JUDGE

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