Powertech Technology Inc v. Tessera, Inc.

Filing 255

ORDER by Judge Claudia Wilken DENYING PTIS 220 MOTION TO STAY PENDING RESOLUTION OF PETITION FOR WRIT OF MANDAMUS AND GRANTING PTIS 239 MOTION TO FILE A RESPONSE TO TESSERAS OBJECTION TO REPLY EVIDENCE. (ndr, COURT STAFF) (Filed on 3/20/2013)

1

IN THE UNITED STATES DISTRICT COURT

2

FOR THE NORTHERN DISTRICT OF CALIFORNIA

3
4

POWERTECH TECHNOLOGY INC.,
Plaintiff,

5

TESSERA, INC.,
Defendant.

8
9

United States District Court
For the Northern District of California

10

ORDER DENYING
PTI’S MOTION TO
STAY PENDING
RESOLUTION OF
PETITION FOR WRIT
OF MANDAMUS
(Docket No. 220)
AND GRANTING PTI’S
MOTION TO FILE A
RESPONSE TO
TESSERA’S
OBJECTION TO REPLY
EVIDENCE (Docket
No. 239)

v.

6
7

No. C 11-6121 CW

________________________________/
AND ALL RELATED COUNTERCLAIMS
/

11
12

Plaintiff Powertech Techology, Inc. (PTI) has filed a

13

petition for a writ of mandamus with the Ninth Circuit Court of

14

Appeals seeking review of this Court’s January 18, 2013 order

15

affirming the December 14, 2012 order of the Special Master which

16

addressed whether documents sought by Defendant Tessera, Inc. were

17

protected by the attorney-client privilege.

18

the December 14, 2012 and January 18, 2013 orders while its

19

mandamus petition remains pending.

20

stay.

21

For the reasons set forth below, the Court DENIES PTI’s motion to

22

stay (Docket No. 220).

PTI now seeks to stay

Tessera opposes the motion to

The Court took the motion under submission on the papers.

23

“[T]he power to stay proceedings is incidental to the power

24

inherent in every court to control the disposition of the causes

25

on its docket with economy of time and effort for itself, for

26

counsel, and for litigants.”

27

254 (1936).

28

injury might otherwise result.”

Landis v. N. Am. Co., 299 U.S. 248,

“A stay is not a matter of right, even if irreparable
Nken v. Holder, 556 U.S. 418, 427

1

(2009) (citation and internal quotation marks omitted).

2

it is “an exercise of judicial discretion,” and “the propriety of

3

its issue is dependent upon the circumstances of the particular

4

case.”

5

marks omitted).

6

justifying the exercise of that discretion.

7

Instead,

Id. at 433 (citation and internal quotation and alteration
The party seeking a stay bears the burden of
Id. at 433-34.

The factors considered “in determining whether a stay pending

8

petition for writ of mandamus is warranted are the same as a stay

9

pending appeal . . .”

Durand v. Stephenson, 2012 U.S. Dist. LEXIS

United States District Court
For the Northern District of California

10

154968, at *2-3 (E.D. Cal.)

11

citation omitted).

12

is likely to succeed on the merits, that he is likely to suffer

13

irreparable harm in the absence of relief, that the balance of

14

equities tip in his favor, and that a stay is in the public

15

interest.”

16

(9th Cir. 2009).

17

most critical.”

18

satisfied, courts then assess “the harm to the opposing party” and

19

weigh the public interest.

20

(internal quotation marks and

“A party seeking a stay must establish that he

Humane Soc. of U.S. v. Gutierrez, 558 F.3d 896, 896
The first two factors of this standard “are the
Nken, 556 U.S. at 434.

Once these factors are

Id. at 435.

An alternative to this standard is the “substantial

21

questions” test, which requires the moving party to demonstrate

22

“serious questions going to the merits and a hardship balance that

23

tips sharply towards the plaintiff,” along with a “likelihood of

24

irreparable injury.”

25

622 F.3d 1045, 1053 (9th Cir. 2010) (internal quotation marks

26

omitted); see also Golden Gate Rest. Ass’n v. City & Cnty. of

27

S.F., 512 F.3d 1112, 1116 (9th Cir. 2008).

Alliance for the Wild Rockies v. Cottrell,

28
2

1

PTI has not met its burden to show that it is likely to

2

succeed on the merits of its mandamus petition or that there are

3

substantial questions going to the merits.

4

“Elpida’s legal advisers, while not expressly licensed or members

5

of a bar association, are authorized to give in-house legal

6

counsel by implication in Japan.”

7

provides no authority or evidence for this assertion.

8

Welfare Rights Org. v. Crisan, 33 Cal. 3d 766 (1983), to argue

9

that the “California Supreme Court has embraced a practical

PTI states that

Mot. at 4.

However, PTI
PTI cites

United States District Court
For the Northern District of California

10

approach to finding privilege by implication.”

11

that case, the court found that a “privilege comparable to the

12

attorney-client [privilege] is impliedly provided by statute,”

13

where various statutory and regulatory provisions authorized the

14

lay representation of welfare recipients at certain hearings.

15

Crisan, 33 Cal. 3d at 769-72.

16

referred to the role of Japanese patent advisers, as the Court

17

found in the January 18, 2013 order, it did not offer any evidence

18

whatsoever that the four particular individuals in question are

19

actually authorized in any jurisdiction to provide legal advice or

20

representation to Elpida Memory Inc. or that Elpida had a

21

reasonable belief that they were so authorized.

22

Mot. at 4.

In

Here, although PTI generally

PTI’s citation to Renfield Corp. v. E. Remy Martin & Co.,

23

S.A., 98 F.R.D. 442 (D. Del. 1982), is not to the contrary.

24

that case, which did not involve California law, the court

25

considered whether the attorney-client privilege applied to the

26

defendants’ French in-house counsel.

27

argued that the privilege was unavailable because the French in-

28

house counsel were not members of a bar.
3

Id. at 444.

Id.

In

The plaintiff

The court examined

1

the French legal system, found that “there is no clear French

2

equivalent to the American ‘bar’” and concluded that these

3

individuals were competent to render legal advice and permitted by

4

law to do so.

5

corresponding showing that the particular persons here were

6

permitted by law to give legal advice.

7

Id.

As stated previously, PTI has not made any

Because PTI has not shown that it is likely to succeed on the

8

merits of its mandamus petition and has not raised serious

9

questions going to the merits, the Court need not compare the

United States District Court
For the Northern District of California

10

hardships involved in the granting or denial of the stay or

11

address the balance of equities.

12

Thomas, 89 F.3d 554, 558 (9th Cir. 1996).

13

See Mount Graham Coalition v.

Accordingly, the Court denies PTI’s motion to stay (Docket

14

No. 220).

15

notwithstanding the reply evidence and argument to which Tessera

16

objects, the Court grants PTI’s motion to file a response to

17

Tessera’s objection (Docket No. 239) and overrules the objection.

Because the Court reaches the same result

18
19
20
21
22
23
24
25
26
27
28
4

1

Pursuant to Federal Rule of Appellate Procedure 8(a)(2), PTI

2

may seek a stay from the Ninth Circuit Court of Appeals.

3

it has obtained one within seven days from the date of this Order,

4

it shall immediately produce the documents.

5

the Ninth Circuit subsequently grants PTI’s petition for a writ of

6

mandamus, Tessera shall immediately destroy the documents and

7

shall not rely on their contents in any way.

8

Circuit has resolved the mandamus petition, Tessera’s counsel

9

shall restrict access to the documents to outside counsel only.

United States District Court
For the Northern District of California

10

Unless

If it does so, and

Until the Ninth

IT IS SO ORDERED.

11
12
13

Dated: 3/20/2013

CLAUDIA WILKEN
United States District Judge

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
5