Semicaps PTE Ltd v. Hamamatsu Corporation et al

Filing 103

Letter of Request for International Judicial Assistance to Depose and Request Documents From IPFA. Signed by Magistrate Judge Donna M. Ryu on 7/1/2020. (dmrlc1, COURT STAFF) (Filed on 7/1/2020)

Model for Letters of Request recommended for use in applying the Hague Convention of
18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters
Request for International Judicial Assistance pursuant to the Hague Convention of
18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters
N.B. Under the first paragraph of Article 4, the Letter of Request shall be in the language of the
authority requested to execute it or be accompanied by a translation into that language.
However, the provisions of the second and third paragraphs may permit use of English, French
or another language.
In order to avoid confusion, please spell out the name of the month in each date.
Please fill out an original and one copy of this form (use additional space if required).
1. Sender

David Eiseman
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
U.S.A.
[phone]

2. Central Authority of
the Requested State

Supreme Court of Singapore
1 Supreme Court Lane
Singapore 178879
+(65) 6336 0644

3. Person to whom the
executed request is
to be returned

David Eiseman
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
U.S.A.
[phone]

4. Specification of the date by which the requesting authority requires receipt of the
response to the Letter of Request
Date
Reason for urgency*

_______________________
* Omit if not applicable.

June 30, 2020

All depositions and document productions in this
litigation must be completed by the deadline for the
close of fact discovery. Pursuant to the Case
Management Order attached hereto as Attachment A,
the deadline for the close of fact discovery is the later of
June 30, 2020 or 90 days after the Claim Construction
Order (CCO). See Attachment A at 3.

IN CONFORMITY WITH ARTICLE 3 OF THE CONVENTION, THE UNDERSIGNED
APPLICANT HAS THE HONOUR TO SUBMIT THE FOLLOWING REQUEST:
5. a

b

Requesting judicial
authority (Article 3,a))

The Honorable Donna M. Ryu
United States District Court
Northern District of California
Ronald V. Dellums Federal Building & United States
Courthouse
1301 Clay Street
Oakland, California 94612
U.S.A.

The Republic of Singapore
To the competent
authority of (Article 3, a)) Supreme Court of Singapore
1 Supreme Court Lane
Singapore 178879
+(65) 6336 0644

c

Names of the case
and any identifying
number

Semicaps PTE, Ltd. v. Hamamatsu Corp., et al.,
Case No. 17-cv-03440-DMR

6. Names and addresses of the
parties and their representatives (including representatives in the requested State*)
(Article 3, b))
a

SEMICAPS Pte, Ltd.
28 Ayer Rajah Crescent
#03-01
Singapore 139959

Representatives

b

Plaintiff

Ryan Marton & Hector Ribera
Marton Ribera Schumann & Chang LLP
548 Market Street, Suite 36117
San Francisco, California 94104, U.S.A.

Defendant

Representatives

c

Other parties

Representatives

_______________________
* Omit if not applicable.

The names and addresses of the Defendants are
provided in Attachment B.

The names and addresses of the Representatives for
the Defendants are provided in Attachment B.

N/A.

N/A.

7. a

Nature of the
proceedings (divorce,
paternity, breach of
contract, product
liability, etc.)
(Article 3, c))

Alleged patent infringement under the patent
laws of the United States, 35 U.S.C. § 1 et seq.,
specifically including 35 U.S.C. § 271(a), (b), and
(c).

b

Summary of complaint

Plaintiff alleges that Defendants infringe U.S.
Patent No. 7,623,982 (the “’982 patent”), entitled
“Method of Testing an Electronic Circuit and
Apparatus Thereof.”

c

Summary of defence
and counterclaim*

Defendants assert, inter alia, that they do not
infringe any of the claims of the ’982 patent; that
the claims of the ’982 patent are invalid and
unenforceable under at least 35 U.S.C. §§ 101,
102, 103, 112, 116, and/or 256 and due to
inequitable conduct; and that Plaintiff's claims are
barred due to equitable estoppel and/or because
Defendants are licensed under the '982 patent.

d

8. a

b

Other necessary information
or documents*

Evidence to be obtained
or other judicial act to
be performed (Article 3, d))

Purpose of the evidence
or judicial act sought

This litigation is subject to a Protective Order,
which governs the disclosure of confidential
documents, testimony, and any other evidence in
connection with this action. A copy of the
Protective Order is attached hereto as
Attachment C.

Defendants request the deposition of the
International Symposium on the Physical and
Failure Analysis of Intergrated Circuits ("IPFA")
and documents from the IPFA that are relevant to
Defendants' claims and defences.
The requested evidence will be used to support
Defendants' claims and defences.

9. Identity and address of
any person to be examined
(Article 3, e))*

International Symposium on the Physical and
Failure Analysis of Integrated Circuits
Conference Secretariat
Blk 121 Paya Lebar Way
#03-2801
Singapore 381121

10. Questions to be put to the
persons to be examined or
statement of the subjectmatter about which they are
to be examined (Article 3, f))*

A list of deposition topics pertaining to the
subject matter of the IPFA's deposition are
provided in Attachment D.

_______________________
* Omit if not applicable.

11. Documents or other property
to be inspected
(Article 3, g))*

A list of documents that Defendants request from
the IPFA are provided in Attachment E.

12. Any requirement that the
evidence be given on oath
or affirmation and any
special form to be used
(Article 3, h))*

Any evidence and deposition testimony shall be
given under oath in the presence of an officer
duly authorized to administer oaths in Singapore.

13. Special methods or procedure
to be followed (e.g. oral or
in writing, verbatim,
transcript or summary,
cross-examination, etc.)
(Articles 3, i) and 9)*

Defendants, by and through their attorneys, will
take the deposition upon oral examination of the
IPFA. Plaintiff, by and through its attorneys, may
conduct an oral cross-examination of the IPFA.
The deposition shall be recorded using audio
visual equipment, including interactive, real time
transcription. The deposition shall be recorded
and transcribed verbatim. A verbatim transcript
of the deposition shall be created and provided to
the IPFA to review and certify the truth and
accuracy of the transcription. The deposition shall
take place from day-to-day until completed.

14. Request for notification of
the time and place for the
execution of the Request
and identity and address of
any person to be notified
(Article 7)*

Defendants respectfully request that the IPFA be
notified of the time and place for this Request to
be executed. The IPFA's address is as follows:

15. Request for attendance or
participation of judicial
personnel of the requesting
authority at the execution
of the Letter of Request
(Article 8)*

_______________________
* Omit if not applicable.

In the event that evidence and deposition
testimony is not provided in the manner
requested, such evidence and deposition
testimony shall be taken in such manner as
provided by the laws of Singapore.

International Symposium on the Physical and
Failure Analysis of Integrated Circuits
Conference Secretariat
Blk 121 Paya Lebar Way
#03-2801
Singapore 381121

N/A.

16. Specification of privilege
or duty to refuse to give
evidence under the law of
the State of origin
(Article 11, b))*

The following privileges shall apply to the
evidence and testimony provided: attorney-client
privilege; attorney work product immunity;
common interest privilege; and/or other privilege
or immunity applicable to the evidence and
testimony provided.

17. The fees and costs incurred
which are reimbursable under
the second paragraph of
Article 14 or under
Article 26 of the Convention
will be borne by*

David Eiseman
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
U.S.A.

DATE OF REQUEST

SIGNATURE AND SEAL OF THE
REQUESTING AUTHORITY

---------------------------------------------------------------------

Erase all entries

_______________________
* Omit if not applicable.

Print

ATTACHMENT A

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SEMICAPS PTE LTD,

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Plaintiff,

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CASE MANAGEMENT ORDER

v.

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HAMAMATSU CORPORATION, et al.,

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United States District Court
Northern District of California

Case No. 17-cv-03440-DMR

Defendants.

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The court held an initial case management conference on May 1, 2019. A further case

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management conference is set for September 4, 2019 at 1:30 p.m. The parties shall file their joint

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case management statement by August 28, 2019.

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The court adopted the parties’ proposal regarding discovery, as set forth below:

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The parties agree that attorney-client privileged communications and work product created

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after June 14, 2017 do not need to be included on a privilege log.
In addition, the parties agree that communications and drafts exchanged between counsel

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and the experts in this case are not discoverable. Communications between the parties or

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representatives of the parties (other than counsel) with the expert will be discoverable only to the

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extent relied upon by the expert.

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The normal rules regarding inadvertent disclosure of privileged materials found in the
Federal Rules of Civil Procedure, e.g. FRCP 26, and the Federal Rules of Evidence, e.g. FRE 502,
shall apply to this action.
Depositions
Fact Discovery: 70 hours of deposition, inclusive of 30(b)(6) depositions and third-party
depositions, in accordance with the Federal Rules of Civil Procedure. The parties agree that
reasonable accommodations will be made for depositions that require translations, but absent

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agreement between the parties or a compelling reason, such translated depositions will not exceed

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10.5 hours for any witness, and such accommodations will not count against the hour limit. The

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parties may meet and confer regarding further additional depositions or additional time for a

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particular witness, if necessary.

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Expert Discovery: Each side is entitled to one seven-hour deposition of each expert

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disclosed by the other side per each report such expert submits. The parties may meet and confer

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further regarding additional limits on expert discovery. Should either side submit a declaration or

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report from an expert regarding claim construction, the expert shall also be made available for

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deposition limited to issues in the declaration after the submission of such declaration or report

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United States District Court
Northern District of California

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and before the other side’s responsive claim construction brief.
Interrogatories
25 interrogatories for each side.
Requests for Production
No limit.
Requests for Admission
50 requests for admission for each side; requests for admission of the authenticity of a
document or thing do not count against the limit.
The court set the following case schedule:

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Event
Complaint Filed

Date
6/14/17

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Disclosure of Asserted Claims and
Infringement Contentions and
Accompanying Document Production

5/15/2019

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Hamamatsu's Response to Complaint
Disclosure of Invalidity Contentions and
Accompanying Document Production (if
any)

5/24/2019
7/1/2019

Exchange of Proposed Terms for
Construction

7/15/2019

Exchange of Preliminary Claim
Constructions and Extrinsic Evidence

8/5/2019
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3
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Disclosure of Damages Contentions
Joint Claim Construction Statement

8/20/2019
8/30/2019

Disclosure of Responsive Damages
Contentions
Complete Claim Construction Discovery
SEMICAPS Opening Claim Construction
Brief

9/19/2019
9/30/2019
10/14/2019

Hamamatsu’s Responsive Claim
Construction Brief
SEMICAPS Reply Claim Construction Brief
Tutorial
Claim Construction Hearing

10/28/2019
11/4/2019
1/3/2020 at 11:00 am
1/9/2020 at 11:00 am

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The later of June 30, 2020
or 90 days after Claim
Construction Order (CCO)
The later of September 30,
2020 or CCO + 120 days

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Designate Rebuttal Experts and Serve
Reports
Close of Expert Discovery
Dispositive (Summary Judgment) Motions
Hearing on Dispositive Motions
Pretrial Conference
Trial

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Dated: May 2, 2019

S

IT IS SO ORDERED.

RT
U
O

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S DISTRICT
TE
C
TA

ERED
O ORD
______________________________________
IT IS S
R NIA

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Donna M. Ryu
United States Magistrate Judge

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. Ryu

onna M
Judge D

NO

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RT

ER

H

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3

FO

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Thirty days after service of
Opening Expert reports
Thirty days after service of
Rebuttal Expert reports
Forty-five days after close
of Expert Discovery
TBD
TBD
TBD

LI

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A

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Close of Fact Discovery
Designate Opening Experts and Serve
Reports

UNIT
ED

United States District Court
Northern District of California

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N

F
D IS T IC T O
R

C

ATTACHMENT

ATTACHMENT C

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SEMICAPS PTE LTD.,

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Plaintiff,

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Case No. 17-cv-03440-DMR
PROTECTIVE ORDER
***AS MODIFIED IN SECTION 6.3***

v.
HAMAMATSU CORPORATION, et al.,

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Defendants.

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1.

PURPOSES AND LIMITATIONS

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Disclosure and discovery activity in this action are likely to involve production of

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confidential, proprietary, or private information for which special protection from public

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disclosure and from use for any purpose other than prosecuting this litigation may be warranted.

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This Order does not confer blanket protections on all disclosures or responses to discovery and

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the protection it affords from public disclosure and use extends only to the limited information or

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items that are entitled to confidential treatment under the applicable legal principles. As set forth

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in Section 14.4 below, this Protective Order does not entitle the Parties to file confidential

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information under seal; Civil Local Rule 79-5 sets forth the procedures that must be followed and

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the standards that will be applied when a party seeks permission from the court to file material

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under seal.

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2.

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DEFINITIONS
2.1

Challenging Party: a Party or Non-Party that challenges the designation of

information or items under this Order.
2.2

“CONFIDENTIAL” Information or Items: information (regardless of how it is

generated, stored or maintained) or tangible things that qualify for protection under Federal Rule
of Civil Procedure 26(c).
2.3

Counsel (without qualifier): Outside Counsel of Record and House Counsel (as

well as their support staff).

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2.4

Designating Party: a Party or Non-Party that designates information or items that it

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produces in disclosures or in responses to discovery as “CONFIDENTIAL,” “HIGHLY

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE

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CODE.”

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2.5

Disclosure or Discovery Material: all items or information, regardless of the

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medium or manner in which it is generated, stored, or maintained (including, among other things,

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testimony, transcripts, and tangible things), that are produced or generated in disclosures or

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responses to discovery in this matter.

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2.6

Expert: a person with specialized knowledge or experience in a matter pertinent to

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the litigation who (1) has been retained by a Party or its counsel to serve as an expert witness or

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as a consultant in this action, (2) is not a past or current employee of a Party or of a Party's

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competitor, and (3) at the time of retention, is not anticipated to become an employee of a Party

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or of a Party's competitor.

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2.7

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” Information or

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Items: extremely sensitive “Confidential Information or Items,” disclosure of which to another

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Party or Non-Party would create a substantial risk of serious harm that could not be avoided by

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less restrictive means.

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2.8

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items:

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extremely sensitive “Confidential Information or Items” representing computer code and

20

associated comments and revision histories, formulas, engineering specifications, or schematics

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that define or otherwise describe in detail the algorithms or structure of software or hardware

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designs, disclosure of which to another Party or Non-Party would create a substantial risk of

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serious harm that could not be avoided by less restrictive means.

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2.9

House Counsel: attorneys who are employees of a party to this action. House

Counsel does not include Outside Counsel of Record or any other outside counsel.
2.10

Non-Party: any natural person, partnership, corporation, association, or other legal

entity not named as a Party to this action.
2.11

Outside Counsel of Record: attorneys who are not employees of a party to this
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1

action but are retained to represent or advise a party to this action and have appeared in this action

2

on behalf of that party or are affiliated with a law firm which has appeared on behalf of that party.

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2.12

consultants, retained experts, and Outside Counsel of Record (and their support staffs).

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Party: any party to this action, including all of its officers, directors, employees,

2.13

Producing Party: a Party or Non-Party that produces Disclosure or Discovery

Material in this action.

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2.14

Professional Vendors: persons or entities that provide litigation support services

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(e.g., photocopying, videotaping, translating, preparing exhibits or demonstrations, and

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organizing, storing, or retrieving data in any form or medium) and their employees and

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subcontractors.

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2.15

Protected Material: any Disclosure or Discovery Material that is designated as

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“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or

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“HIGHLY CONFIDENTIAL – SOURCE CODE.”

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2.16

Receiving Party: a Party that receives Disclosure or Discovery Material from a

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Producing Party.

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3.

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SCOPE
The protections conferred by this Order cover not only Protected Material (as defined

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above), but also (1) any information copied or extracted from Protected Material; (2) all copies,

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excerpts, summaries, or compilations of Protected Material; and (3) any testimony, conversations,

20

or presentations by Parties or their Counsel that might reveal Protected Material. However, the

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protections conferred by this Order do not cover the following information: (a) any information

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that is in the public domain at the time of disclosure to a Receiving Party or becomes part of the

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public domain after its disclosure to a Receiving Party as a result of publication not involving a

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violation of this Order, including becoming part of the public record through trial or otherwise;

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and (b) any information known to the Receiving Party prior to the disclosure or obtained by the

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Receiving Party after the disclosure from a source who obtained the information lawfully and

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under no obligation of confidentiality to the Designating Party. Any use of Protected Material at

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trial shall be governed by a separate agreement or order.
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4.

Even after final disposition of this litigation, the confidentiality obligations imposed by

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DURATION

this Order shall remain in effect until a Designating Party agrees otherwise in writing or a court
order otherwise directs. Final disposition shall be deemed to be the later of (1) dismissal of all
claims and defenses in this action, with or without prejudice; and (2) final judgment herein after
the completion and exhaustion of all appeals, rehearings, remands, trials, or reviews of this action,
including the time limits for filing any motions or applications for extension of time pursuant to
applicable law.
5.

DESIGNATING PROTECTED MATERIAL
5.1

Exercise of Restraint and Care in Designating Material for Protection. Each Party

or Non-Party that designates information or items for protection under this Order must take care
to limit any such designation to specific material that qualifies under the appropriate standards.
To the extent it is practical to do so, the Designating Party must designate for protection only
those parts of material, documents, items, or oral or written communications that qualify – so that
other portions of the material, documents, items, or communications for which protection is not
warranted are not swept unjustifiably within the ambit of this Order.
Mass, indiscriminate, or routinized designations are prohibited. Designations that are
shown to be clearly unjustified or that have been made for an improper purpose (e.g., to
unnecessarily encumber or retard the case development process or to impose unnecessary
expenses and burdens on other parties) expose the Designating Party to sanctions.
If it comes to a Designating Party’s attention that information or items that it designated
for protection do not qualify for protection at all or do not qualify for the level of protection
initially asserted, that Designating Party must promptly notify all other Parties that it is
withdrawing the mistaken designation.
5.2

Manner and Timing of Designations. Except as otherwise provided in this Order

(see, e.g., second paragraph of section 5.2(a) below), or as otherwise stipulated or ordered,
Disclosure or Discovery Material that qualifies for protection under this Order must be clearly so
designated before the material is disclosed or produced.
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Designation in conformity with this Order requires:

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(a) for information in documentary form (e.g., paper or electronic documents, but

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excluding transcripts of depositions or other pretrial or trial proceedings), that the Producing

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Party affix the legend “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’

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EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE” to each page that contains

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protected material. If only a portion or portions of the material on a page qualifies for protection,

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the Producing Party also must clearly identify the protected portion(s) (e.g., by making

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appropriate markings in the margins) and must specify, for each portion, the level of protection

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being asserted.

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A Party or Non-Party that makes original documents or materials available for inspection

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need not designate them for protection until after the inspecting Party has indicated which

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material it would like copied and produced. During the inspection and before the designation, all

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of the material made available for inspection shall be deemed “HIGHLY CONFIDENTIAL –

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ATTORNEYS’ EYES ONLY.” After the inspecting Party has identified the documents it wants

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copied and produced, the Producing Party must determine which documents, or portions thereof,

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qualify for protection under this Order. Then, before producing the specified documents, the

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Producing Party must affix the appropriate legend (“CONFIDENTIAL,” “HIGHLY

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE

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CODE”) to each page that contains Protected Material. If only a portion or portions of the

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material on a page qualifies for protection, the Producing Party also must clearly identify the

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protected portion(s) (e.g., by making appropriate markings in the margins) and must specify, for

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each portion, the level of protection being asserted.

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(b) for testimony given in deposition or in other pretrial or trial proceedings, that

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the Designating Party identify on the record, before the close of the deposition, hearing, or other

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proceeding, all protected testimony and specify the level of protection being asserted. When it is

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impractical to identify separately each portion of testimony that is entitled to protection and it

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appears that substantial portions of the testimony may qualify for protection, the Designating

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Party may invoke on the record (before the deposition, hearing, or other proceeding is concluded)
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a right to have up to 21 days to identify the specific portions of the testimony as to which

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protection is sought and to specify the level of protection being asserted. Only those portions of

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the testimony that are appropriately designated for protection within the 21 days shall be covered

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by the provisions of this Protective Order. Alternatively, a Designating Party may specify, at the

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deposition or up to 21 days afterwards if that period is properly invoked, that the entire transcript

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shall be treated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

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ONLY.”

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Parties shall give the other parties notice if they reasonably expect a deposition, hearing,

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or other proceeding to include Protected Material so that the other parties can ensure that only

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authorized individuals who have signed the “Acknowledgment and Agreement to Be Bound”

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(Exhibit A) are present at those proceedings. The use of a document as an exhibit at a deposition

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shall not in any way affect its designation as “CONFIDENTIAL” or “HIGHLY

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY.”

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Transcripts containing Protected Material shall have an obvious legend on the title page

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that the transcript contains Protected Material, and the title page shall be followed by a list of all

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pages (including line numbers as appropriate) that have been designated as Protected Material and

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the level of protection being asserted by the Designating Party. The Designating Party shall

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inform the court reporter of these requirements. Any transcript that is prepared before the

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expiration of a 21-day period for designation shall be treated during that period as if it had been

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designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” in its entirety unless

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otherwise agreed. After the expiration of that period, the transcript shall be treated only as

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actually designated.

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(c) for information produced in some form other than documentary and for any other

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tangible items, that the Producing Party affix in a prominent place on the exterior of the container

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or containers in which the information or item is stored the legend “CONFIDENTIAL,”

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“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL

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– SOURCE CODE.” If only a portion or portions of the information or item warrant protection,

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the Producing Party, to the extent practicable, shall identify the protected portion(s) and specify
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the level of protection being asserted.

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5.3

Inadvertent Failures to Designate. If timely corrected, an inadvertent failure to

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designate qualified information or items does not, standing alone, waive the Designating Party’s

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right to secure protection under this Order for such material. Upon timely correction of a

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designation, the Receiving Party must make reasonable efforts to assure that the material is

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treated in accordance with the provisions of this Order.

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6.

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CHALLENGING CONFIDENTIALITY DESIGNATIONS
6.1

Timing of Challenges. Any Party or Non-Party may challenge a designation of

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confidentiality at any time. Unless a prompt challenge to a Designating Party’s confidentiality

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designation is necessary to avoid foreseeable, substantial unfairness, unnecessary economic

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burdens, or a significant disruption or delay of the litigation, a Party does not waive its right to

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challenge a confidentiality designation by electing not to mount a challenge promptly after the

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original designation is disclosed.

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6.2

Meet and Confer. The Challenging Party shall initiate the dispute resolution

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process by providing written notice of each designation it is challenging and describing the basis

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for each challenge. To avoid ambiguity as to whether a challenge has been made, the written

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notice must recite that the challenge to confidentiality is being made in accordance with this

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specific paragraph of the Protective Order. The parties shall attempt to resolve each challenge in

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good faith and must begin the process by conferring directly (in voice to voice dialogue; other

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forms of communication are not sufficient) within 14 days of the date of service of notice. In

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conferring, the Challenging Party must explain the basis for its belief that the confidentiality

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designation was not proper and must give the Designating Party an opportunity to review the

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designated material, to reconsider the circumstances, and, if no change in designation is offered,

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to explain the basis for the chosen designation. A Challenging Party may proceed to the next

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stage of the challenge process only if it has engaged in this meet and confer process first or

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establishes that the Designating Party is unwilling to participate in the meet and confer process in

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a timely manner.

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6.3

Judicial Intervention. If the Parties cannot resolve a challenge without court
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the parties shall present the dispute for resolution in accordance with the court's Standing Order regarding
resolution of discovery disputes (joint letter procedure).

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intervention, the Designating Party shall file and serve a motion to retain confidentiality under

2

Civil Local Rule 7 (and in compliance with Civil Local Rule 79-5, if applicable) within 21 days

3

of the initial notice of challenge or within 14 days of the parties agreeing that the meet and confer

4

process will not resolve their dispute, whichever is earlier. Each such motion must be

5

accompanied by a competent declaration affirming that the movant has complied with the meet

6

and confer requirements imposed in the preceding paragraph. Failure by the Designating Party to

7

make such a motion including the required declaration within 21 days (or 14 days, if applicable)

8

shall automatically waive the confidentiality designation for each challenged designation. In

9

addition, the Challenging Party may file a motion challenging a confidentiality designation at any

10

time if there is good cause for doing so, including a challenge to the designation of a deposition

11

transcript or any portions thereof. Any motion brought pursuant to this provision must be

12

accompanied by a competent declaration affirming that the movant has complied with the meet

13

and confer requirements imposed by the preceding paragraph.

14

The burden of persuasion in any such challenge proceeding shall be on the Designating

15

Party. Frivolous challenges and those made for an improper purpose (e.g., to harass or impose

16

unnecessary expenses and burdens on other parties) may expose the Challenging Party to

17

sanctions. Unless the Designating Party has waived the confidentiality designation by failing to

18

file a motion to retain confidentiality as described above, all parties shall continue to afford the

19

material in question the level of protection to which it is entitled under the Producing Party’s

20

designation until the court rules on the challenge.

21

7.

22

ACCESS TO AND USE OF PROTECTED MATERIAL
7.1

Basic Principles. A Receiving Party may use Protected Material that is disclosed or

23

produced by another Party or by a Non-Party in connection with this case only for prosecuting,

24

defending, or attempting to settle this litigation. Such Protected Material may be disclosed only to

25

the categories of persons and under the conditions described in this Order. When the litigation has

26

been terminated, a Receiving Party must comply with the provisions of section 15 below (FINAL

27

DISPOSITION).

28

Protected Material must be stored and maintained by a Receiving Party at a location and
8

1
2

in a secure manner that ensures that access is limited to the persons authorized under this Order.
7.2

Disclosure of “CONFIDENTIAL” Information or Items. Unless otherwise ordered

3

by the court or permitted in writing by the Designating Party, a Receiving Party may disclose any

4

information or item designated “CONFIDENTIAL” only to:

5

(a) the Receiving Party’s Outside Counsel of Record in this action, as well as

6

employees of said Outside Counsel of Record to whom it is reasonably necessary to disclose the

7

information for this litigation and who have signed the “Acknowledgment and Agreement to Be

8

Bound” that is attached hereto as Exhibit A;

9

(b) the officers, directors, and employees (including House Counsel) of the Receiving

10

Party to whom disclosure is reasonably necessary for this litigation and who have signed the

11

“Acknowledgment and Agreement to Be Bound” (Exhibit A);

12

(c) Experts (as defined in this Order) of the Receiving Party to whom disclosure is

13

reasonably necessary for this litigation and who have signed the “Acknowledgment and

14

Agreement to Be Bound” (Exhibit A);

15

(d) the court and its personnel;

16

(e) court reporters and their staff, professional jury or trial consultants, and

17

Professional Vendors to whom disclosure is reasonably necessary for this litigation and who have

18

signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A);

19

(f) during their depositions, witnesses in the action to whom disclosure is reasonably

20

necessary and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A),

21

unless otherwise agreed by the Designating Party or ordered by the court. Pages of transcribed

22

deposition testimony or exhibits to depositions that reveal Protected Material must be separately

23

bound by the court reporter and may not be disclosed to anyone except as permitted under this

24

Protective Order.

25
26
27
28

(g) the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or knew the information.
7.3

Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” and

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items. Unless otherwise
9

1

ordered by the court or permitted in writing by the Designating Party, a Receiving Party may

2

disclose any information or item designated “HIGHLY CONFIDENTIAL – ATTORNEYS’

3

EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” only to:

4

(a) the Receiving Party’s Outside Counsel of Record in this action, as well as

5

employees of said Outside Counsel of Record to whom it is reasonably necessary to disclose the

6

information for this litigation and who have signed the “Acknowledgment and Agreement to Be

7

Bound” that is attached hereto as Exhibit A;

8

(b) Experts of the Receiving Party (1) to whom disclosure is reasonably necessary for

9

this litigation, (2) who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit

10

A), and (3) as to whom the procedures set forth in paragraph 7.4(a), below, have been followed;

11

(c) the court and its personnel;

12

(d) court reporters and their staff, professional jury or trial consultants, and

13

Professional Vendors to whom disclosure is reasonably necessary for this litigation and who have

14

signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A); and

15
16
17

(e) the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or knew the information.
7.4 Procedures for Approving or Objecting to Disclosure of “HIGHLY CONFIDENTIAL

18

– ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”

19

Information or Items to Experts.

20

(a) Unless otherwise ordered by the court or agreed to in writing by the Designating

21

Party, a Party that seeks to disclose to an Expert (as defined in this Order) any information or item

22

that has been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or

23

“HIGHLY CONFIDENTIAL – SOURCE CODE” pursuant to paragraph 7.3(b) first must make a

24

written request to the Designating Party that (1) identifies the general categories of “HIGHLY

25

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE

26

CODE” information that the Receiving Party seeks permission to disclose to the Expert, (2) sets

27

forth the full name of the Expert and the city and state of his or her primary residence, (3)

28

attaches a copy of the Expert’s current resume, (4) identifies the Expert’s current employer(s), (5)
10

1

identifies each person or entity from whom the Expert has received compensation or funding for

2

work in his or her areas of expertise or to whom the expert has provided professional services,

3

including in connection with a litigation, at any time during the preceding five years, 1 and (6)

4

identifies (by name and number of the case, filing date, and location of court) any litigation in

5

connection with which the Expert has offered expert testimony, including through a declaration,

6

report, or testimony at a deposition or trial, during the preceding five years.

7

(b) A Party that makes a request and provides the information specified in the

8

preceding respective paragraphs may disclose the subject Protected Material to the identified

9

Expert unless, within 14 days of delivering the request, the Party receives a written objection

10

from the Designating Party. Any such objection must set forth in detail the grounds on which it is

11

based.

12

(c) A Party that receives a timely written objection must meet and confer with the

13

Designating Party (through direct voice to voice dialogue) to try to resolve the matter by

14

agreement within seven days of the written objection. If no agreement is reached, the Party

15

seeking to make the disclosure to the Expert may file a motion as provided in Civil Local Rule 7

16

(and in compliance with Civil Local Rule 79-5, if applicable) seeking permission from the court

17

to do so. Any such motion must describe the circumstances with specificity, set forth in detail the

18

reasons why disclosure to the Expert is reasonably necessary, assess the risk of harm that the

19

disclosure would entail, and suggest any additional means that could be used to reduce that risk.

20

In addition, any such motion must be accompanied by a competent declaration describing the

21

parties’ efforts to resolve the matter by agreement (i.e., the extent and the content of the meet and

22

confer discussions) and setting forth the reasons advanced by the Designating Party for its refusal

23

to approve the disclosure.

24

In any such proceeding, the Party opposing disclosure to the Expert shall bear the

25
26
1

27
28

If the Expert believes any of this information is subject to a confidentiality obligation to a third-party, then the
Expert should provide whatever information the Expert believes can be disclosed without violating any
confidentiality agreements, and the Party seeking to disclose to the Expert shall be available to meet and confer with
the Designating Party regarding any such engagement.

11

1

burden of proving that the risk of harm that the disclosure would entail (under the safeguards

2

proposed) outweighs the Receiving Party’s need to disclose the Protected Material to its Expert.

3

8.

PROSECUTION BAR
Absent written consent from the Producing Party, any individual who receives

4
5

access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY

6

CONFIDENTIAL – SOURCE CODE” information shall not be involved in the prosecution of

7

patents or patent applications relating to the subject matter of this action, including without

8

limitation the patents asserted in this action and any patent or application claiming priority to or

9

otherwise related to the patents asserted in this action, before any foreign or domestic agency,

10

including the United States Patent and Trademark Office (“the Patent Office”). For purposes of

11

this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or

12

otherwise affecting the scope or maintenance of patent claims. 2 To avoid any doubt,

13

“prosecution” as used in this paragraph does not include representing a party challenging a patent

14

before a domestic or foreign agency (including, but not limited to, a reissue protest, ex parte

15

reexamination or inter partes reexamination). This Prosecution Bar shall begin when access to

16

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL –

17

SOURCE CODE” information is first received by the affected individual and shall end two (2)

18

years after final termination of this action.

19

9.

SOURCE CODE
(a) To the extent production of source code becomes necessary in this case, a

20
21

Producing Party may designate source code as “HIGHLY CONFIDENTIAL – SOURCE CODE”

22

if it comprises or includes confidential, proprietary or trade secret source code.
(b) Protected Material designated as “HIGHLY CONFIDENTIAL – SOURCE

23
24

CODE” shall be subject to all of the protections afforded to “HIGHLY CONFIDENTIAL –

25

ATTORNEYS’ EYES ONLY” information, including the Prosecution Bar set forth in Paragraph

26

8, and may be disclosed only to the individuals to whom “HIGHLY CONFIDENTIAL –

27
28

2

Prosecution includes, for example, original prosecution, reissue and reexamination proceedings.

12

1

ATTORNEYS’ EYES ONLY” information may be disclosed, as set forth in Paragraphs 7.3 and

2

7.4.

3

(c) Any source code produced in discovery shall be made available for inspection, in a

4

format allowing it to be reasonably reviewed and searched, during normal business hours or at

5

other mutually agreeable times, at an office of the Producing Party’s counsel or another mutually

6

agreed upon location. The source code shall be made available for inspection on a secured

7

computer in a secured room without Internet access or network access to other computers, and the

8

Receiving Party shall not copy, remove, or otherwise transfer any portion of the source code onto

9

any recordable media or recordable device. The Producing Party may visually monitor the

10

activities of the Receiving Party’s representatives during any source code review, but only to

11

ensure that there is no unauthorized recording, copying, or transmission of the source code.

12

(d) The Receiving Party may request paper copies of limited portions of source code

13

that are reasonably necessary for the preparation of court filings, pleadings, expert reports, or

14

other papers, or for deposition or trial, but shall not request paper copies for the purpose of

15

reviewing the source code other than electronically as set forth in paragraph (c) in the first

16

instance. The Producing Party shall provide all such source code in paper form, including bates

17

numbers and the label “HIGHLY CONFIDENTIAL – SOURCE CODE.” The Producing Party

18

may challenge the amount of source code requested in hard copy form pursuant to the dispute

19

resolution procedure and timeframes set forth in Paragraph 6 whereby the Producing Party is the

20

“Challenging Party” and the Receiving Party is the “Designating Party” for purposes of dispute

21

resolution.

22

(e) The Receiving Party shall maintain a record of any individual who has inspected

23

any portion of the source code in electronic or paper form. The Receiving Party shall maintain all

24

paper copies of any printed portions of the source code in a secured, locked area. The Receiving

25

Party shall not create any electronic or other images of the paper copies and shall not convert any

26

of the information contained in the paper copies into any electronic format. The Receiving Party

27

shall only make additional paper copies if such additional copies are (1) necessary to prepare

28

court filings, pleadings, or other papers (including a testifying expert’s expert report), (2)
13

1

necessary for deposition, or (3) otherwise necessary for the preparation of its case. Any paper

2

copies used during a deposition shall be retrieved by the Producing Party at the end of each day

3

and must not be given to or left with a court reporter or any other unauthorized individual.

4

10.

5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN
OTHER LITIGATION
If a Party is served with a subpoena or a court order issued in other litigation that compels

disclosure of any information or items designated in this action as “CONFIDENTIAL,”
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL
– SOURCE CODE,” that Party must:
(a) promptly notify in writing the Designating Party. Such notification shall include a
copy of the subpoena or court order;
(b) promptly notify in writing the party who caused the subpoena or order to issue in
the other litigation that some or all of the material covered by the subpoena or order is subject to
this Protective Order. Such notification shall include a copy of this Protective Order; and
(c) cooperate with respect to all reasonable procedures sought to be pursued by the
Designating Party whose Protected Material may be affected. 3
If the Designating Party timely seeks a protective order, the Party served with the
subpoena or court order shall not produce any information designated in this action as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE” before a determination by the court from
which the subpoena or order issued, unless the Party has obtained the Designating Party’s
permission. The Designating Party shall bear the burden and expense of seeking protection in that
court of its confidential material – and nothing in these provisions should be construed as
authorizing or encouraging a Receiving Party in this action to disobey a lawful directive from
another court.

26
27
28

3

The purpose of imposing these duties is to alert the interested parties to the existence of this Protective Order and to
afford the Designating Party in this case an opportunity to try to protect its confidentiality interests in the court from
which the subpoena or order issued.

14

1

11.

2
3
4
5
6
7

(a) The terms of this Order are applicable to information produced by a Non-Party in
this action and designated as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE.” Such
information produced by Non-Parties in connection with this litigation is protected by the
remedies and relief provided by this Order. Nothing in these provisions should be construed as
prohibiting a Non-Party from seeking additional protections.

8
9
10

(b) In the event that a Party is required, by a valid discovery request, to produce a
Non-Party’s confidential information in its possession, and the Party is subject to an agreement
with the Non-Party not to produce the Non-Party’s confidential information, then the Party shall:

11
12
13

1.

16

Party;
2.

information requested; and
3.

18

20
21
22
23
24

promptly provide the Non-Party with a copy of the Protective Order in this

litigation, the relevant discovery request(s), and a reasonably specific description of the

17

19

promptly notify in writing the Requesting Party and the Non-Party that

some or all of the information requested is subject to a confidentiality agreement with a Non-

14
15

A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE PRODUCED IN
THIS LITIGATION

make the information requested available for inspection by the Non-Party.

(c) If the Non-Party fails to object or seek a protective order from this court within 14
days of receiving the notice and accompanying information, the Receiving Party may produce the
Non-Party’s confidential information responsive to the discovery request. If the Non-Party timely
seeks a protective order, the Receiving Party shall not produce any information in its possession
or control that is subject to the confidentiality agreement with the Non-Party before a
determination by the court.4 Absent a court order to the contrary, the Non-Party shall bear the
burden and expense of seeking protection in this court of its Protected Material.

25
26
27
4

28

The purpose of this provision is to alert the interested parties to the existence of confidentiality rights of a NonParty and to afford the Non-Party an opportunity to protect its confidentiality interests in this court.

15

1

12.

If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed Protected

2
3
4
5
6
7
8
9

UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL

Material to any person or in any circumstance not authorized under this Protective Order, the
Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized
disclosures, (b) use its best efforts to retrieve all unauthorized copies of the Protected Material, (c)
inform the person or persons to whom unauthorized disclosures were made of all the terms of this
Order, and (d) request such person or persons to execute the “Acknowledgment and Agreement to
Be Bound” that is attached hereto as Exhibit A.
13.

10

INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE
PROTECTED MATERIAL
When a Producing Party gives notice to Receiving Parties that certain inadvertently

11

produced material is subject to a claim of privilege or other protection, the obligations of the

12

Receiving Parties are those set forth in Federal Rule of Civil Procedure 26(b)(5)(B). This

13

provision is not intended to modify whatever procedure may be established in an e-discovery

14

order that provides for production without prior privilege review. Pursuant to Federal Rule of

15

Evidence 502(d) and (e), insofar as the parties reach an agreement on the effect of disclosure of a

16

communication or information covered by the attorney-client privilege or work product

17

protection, the parties may incorporate their agreement in a stipulated protective order submitted

18

to the court.

19

14.

20
21
22

MISCELLANEOUS
14.1

Right to Further Relief. Nothing in this Order abridges the right of any person to

seek its modification by the court in the future.
14.2

Right to Assert Other Objections. No Party waives any right it otherwise would

23

have to object to disclosing or producing any information or item on any ground not addressed in

24

this Protective Order. Similarly, no Party waives any right to object on any ground to use in

25

evidence of any of the material covered by this Protective Order.

26

14.3

Export Control. Disclosure of Protected Material shall be subject to all applicable

27

laws and regulations relating to the export of technical data contained in such Protected Material,

28

including the release of such technical data to foreign persons or nationals in the United States or
16

1

elsewhere. The Producing Party shall be responsible for identifying any such controlled technical

2

data, and the Receiving Party shall take measures necessary to ensure compliance.

3

14.4

Filing Protected Material. Without written permission from the Designating Party

4

or a court order secured after appropriate notice to all interested persons, a Party may not file in

5

the public record in this action any Protected Material. A Party that seeks to file under seal any

6

Protected Material must comply with Civil Local Rule 79-5. Protected Material may only be filed

7

under seal pursuant to a court order authorizing the sealing of the specific Protected Material at

8

issue. Pursuant to Civil Local Rule 79-5, a sealing order will issue only upon a request

9

establishing that the Protected Material at issue is privileged, protectable as a trade secret, or

10

otherwise entitled to protection under the law. If a Receiving Party's request to file Protected

11

Material under seal pursuant to Civil Local Rule 79-5(e) is denied by the court, then the

12

Receiving Party may file the Protected Material in the public record pursuant to Civil Local Rule

13

79-5(e)(2) unless otherwise instructed by the court.

14

15.

15

FINAL DISPOSITION
Within 60 days after the final disposition of this action, as defined in paragraph 4, each

16

Receiving Party must return all Protected Material to the Producing Party or destroy such

17

material. As used in this subdivision, “all Protected Material” includes all copies, abstracts,

18

compilations, summaries, and any other format reproducing or capturing any of the Protected

19

Material. Whether the Protected Material is returned or destroyed, the Receiving Party must

20

submit a written certification to the Producing Party (and, if not the same person or entity, to the

21

Designating Party) by the 60 day deadline that (1) identifies (by category, where appropriate) all

22

the Protected Material that was returned or destroyed and (2) affirms that the Receiving Party has

23

not retained any copies, abstracts, compilations, summaries or any other format reproducing or

24

capturing any of the Protected Material. Notwithstanding this provision, Counsel are entitled to

25

retain an archival copy of all pleadings, motion papers, trial, deposition, and hearing transcripts,

26

legal memoranda, correspondence, deposition and trial exhibits, expert reports, attorney work

27

product, and consultant and expert work product, even if such materials contain Protected

28

Material. Any such archival copies that contain or constitute Protected Material remain subject to
17

IT IS SO ORDERED.

R NIA

The Honorable Donna M. Ryu
United States Magistrate Judge

NO

5

D

RDERE

OO
IT IS S

RT

6

onna
Judge D

7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
18

A

H

ER

M. Ryu

FO

4

DATED:

March 26, 2020

LI

3

UNIT
ED

S

2

RT
U
O

1

S DISTRICT
TE
C
this Protective Order as set forth in Section 4 (DURATION).
TA

N

D IS T IC T
R

OF

C

1

EXHIBIT A

2

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND

3

I,

[print or type full name], of

4

[print or type full address], declare under penalty of perjury

5

that I have read in its entirety and understand the Protective Order that was issued by the United

6

States District Court for the Northern District of California on

7

case of Semicaps Pte Ltd. v. Hamamatsu Corporation et al, Case No. 4:17-cv-03440 (N.D. Cal.).

8

I agree to comply with and to be bound by all the terms of this Protective Order, and I understand

9

and acknowledge that failure to so comply could expose me to sanctions and punishment in the

10

nature of contempt. I solemnly promise that I will not disclose in any manner any information or

11

item that is subject to this Protective Order to any person or entity except in strict compliance

12

with the provisions of this Order.

13

[date] in the

I further agree to submit to the jurisdiction of the United States District Court for

14

the Northern District of California for the purpose of enforcing the terms of this Protective Order,

15

even if such enforcement proceedings occur after termination of this action.

16

I hereby appoint [print or type full name] of

17

[print or type full address and telephone number] as my California

18

agent for service of process in connection with this action or any proceedings related to

19

enforcement of this Protective Order.

20
21
22

Date:
City and State where sworn and signed:

23
24

Printed name:
[printed name]

25
26

Signature:
[signature]

27
28
19

ATTACHMENT D

1

ATTACHMENT D

2

DEFINITIONS

3

These topics are subject to and incorporate the following definitions and instructions as

4 used herein:
5

1.

“Plaintiff” and “SEMICAPS” mean Plaintiff SEMICAPS Pte Ltd., including,

6 without limitation, its directors, officers, parents, subsidiaries, affiliated corporations,
7 predecessors, successors, assigns, employees, agents, representatives, attorneys, and all other
8 persons or entities representing it or acting on its behalf.
9

2.

“Defendants” and “Hamamatsu” means Defendants Hamamatsu Corporation,

10 Hamamatsu Photonics K.K., and Photonics Management Corp.
11

3.

“IPFA,” “You,” and “Your” mean the International Symposium on the Physical

12 and Failure Analysis of Integrated Circuits, including, without limitation, all of its corporate
13 locations, and all predecessors, successors, subsidiaries, divisions, parents and/or affiliates thereof,
14 past or present, and all past or present officers, directors, agents, employees, inventors,
15 researchers, scientists, consultants, accountants, attorneys, representatives, partners, joint
16 venturers, and any other person or entity acting on behalf of any of the foregoing.
17

4.

“The ’982 patent” or “Patent-in-Suit” means U.S. Patent No. 7,623,982, which

18 issued on November 24, 2009 and is titled “Method of Testing an Electronic Circuit and
19 Apparatus Thereof.”
20

5.

“Related Patents” means any patent or patent application, anywhere in the world

21 and individually and collectively, that claims or is identified as priority, directly or indirectly, to or
22 from any Patent-in-Suit. “Related Patents” includes, but is not limited to, all continuations,
23 continuations-in-part, provisionals, divisionals, and reissues of any Patent-in-Suit.
24

6.

“Asserted Claims” means the claims 4-8, 17, and 21-25 of the Patent-in-Suit.

25

7.

The term “document(s)” is used in the broadest sense to include everything

26 contemplated by Rule 34(a)(1)(A) of the Federal Rules of Civil Procedure and by Rule 1001 of the
27 Federal Rules of Evidence, including electronically stored information, data, code materials stored
28 in any media, and any other information stored magnetically, optically or electronically. If a draft
Case No. 17-cv-03440-DMR
ATTACHMENT D

1 document has been prepared in several copies that are not identical, or if the original identical
2 copies are no longer identical due to subsequent notation, each non-identical document is a
3 separate document.
4

8.

The term “communication(s)” means, without limitation, any transmission,

5 conveyance or exchange of a word, statement, fact, thing, idea, Document, instruction,
6 information, demand or question by any medium, whether by written, oral or other means,
7 including but not limited to, electronic communications and electronic mail (“e-mail”).
8

9.

The term “thing(s)” means any tangible object, other than a Document.

9

10.

The term “electronically stored information,” abbreviated herein as “ESI,” is

10 defined to be synonymous in meaning and equal in scope to the usage of the term in Rules 26(b)
11 and 34 of the Federal Rules of Civil Procedure.
12

11.

The term “natural person” should be understood to encompass, in addition to the

13 natural person, any agent, employee, representative, attorney, superior, or principal thereof.
14

12.

The term “legal entity” should be understood to encompass, in addition to the

15 entity, any officer, director, employee, partner, corporate parent, subsidiary, affiliate, agent,
16 representative, attorney, or principal thereof.
17

13.

The term “person” includes all natural persons, persons, legal entities, and entities.

18

14.

The terms “identify,” “identifies,” and “identification,” when used with respect to

19 any natural person, mean that the following information shall be provided: the person’s full name;
20 the person’s last known business address and telephone number; the person’s last known title or
21 occupation; and the person’s last known employer.
22

15.

The terms “identify,” “identifies,” and “identification,” when used with respect to

23 any legal entity, such as a corporation, company, or person other than a natural person, mean that
24 the following information shall be provided: the entity’s name; the entity’s place of incorporation
25 or organization; the entity’s principal place of business; and the nature of the entity’s business.
26

16.

The terms “identify,” “identifies,” and “identification,” when used with respect to a

27 document, mean to provide information sufficient to locate that document, including but not
28 limited to the following: the production number range; the date appearing on the document or, if
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1 no date appears thereon, the approximate date on which the document was prepared; the
2 identifying code number, file number, title, and/or label of the document; a general description of
3 the document (e.g., letter, memorandum, drawing); the title or heading; the number of pages of
4 which the document consists; the name of each person who signed or authorized the document; the
5 name of each addressee; the name of each person having possession, custody, or control of the
6 document; if the document existed at one time but does not presently exist, the reason(s) why it no
7 longer exists and the identity of the last person having custody of it; and, if the document is in a
8 foreign language, whether an English translation of the document exists, whether partial or
9 complete.
10

17.

The terms “relate to,” “related to,” and “relating to” are used in their broadest

11 possible sense to include any connection, relation, or relevance.
12

18.

The term “describe,” when used in relation to an act, event, instance, occasion,

13 transaction, conversation, or communication, means: (1) to state the date and place thereof; (2) to
14 identify the individual participants; (3) to summarize separately for each individual what he/she
15 said or did; and (4) to identify each document used or prepared in connection therewith or making
16 any reference thereto.
17

19.

The term “prior art” means all categories of art included within the broadest

18 meaning of 35 U.S.C. §§ 102 and 103, including but not limited to patents, publications,
19 disclosures, products, physical devices, systems, prototypes, things, uses, sales, offers for sale,
20 other acts or occurrences, and any documents or other items evidencing any of the foregoing. The
21 term also includes all art that any person has identified as being relevant to the invalidity or
22 unenforceability of the Patent-in-Suit or any Asserted Claim.
23

20.

The words “and” and “or” are to be construed conjunctively or disjunctively as

24 necessary so as to accord each topic the broadest possible scope.
25

21.

“Any” should be understood to encompass “all” and/or “each” and vice versa, as

26 necessary to bring within the scope of each topic all information that might otherwise be construed
27 to be outside of its scope.
28
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1

22.

The singular form of any term should be understood to encompass the plural,

2 except where circumstances clearly make it inappropriate.
3

23.

The present tense should be understood to encompass the past tense, except where

4 circumstances clearly make it inappropriate.
5
6

DEPOSITION TOPICS
1.

The distribution of optical disks (such as CD-ROMs and DVDs) and portable data

7 storage devices (such as USB flash drives) at the 13th International Symposium on the Physical
8 and Failure Analysis of Integrated Circuits, held on July 3-7, 2006 in Singapore.
9

2.

Your knowledge of the conference proceedings from the 13th International

10 Symposium on the Physical and Failure Analysis of Integrated Circuits, held on July 3-7, 2006 in
11 Singapore.
12

3.

The facts and circumstances of the publication of the article DC-Coupled Laser

13 Induced Detection System for Fault Localization in Microelectronic Failure Analysis by Quah et
14 al. in the proceedings of the 13th International Symposium on the Physical and Failure Analysis of
15 Integrated Circuits, held on July 3-7, 2006 in Singapore.
16

4.

Your communications with SEMICAPS regarding the subject matter of U.S. Patent

17 No. 7,623,982, Hamamatsu, and any litigation (including, without limitation, district court
18 lawsuits and proceedings before the USPTO) between SEMICAPS and Hamamatsu.
19
20
21
22
23
24
25
26
27
28
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ATTACHMENT E

1

ATTACHMENT E

2

DEFINITIONS

3

These requests are subject to and incorporate the following definitions and instructions as

4 used herein:
5

1.

“Plaintiff” and “SEMICAPS” mean Plaintiff SEMICAPS Pte Ltd., including,

6 without limitation, its directors, officers, parents, subsidiaries, affiliated corporations,
7 predecessors, successors, assigns, employees, agents, representatives, attorneys, and all other
8 persons or entities representing it or acting on its behalf.
9

2.

“Defendants” and “Hamamatsu” means Defendants Hamamatsu Corporation,

10 Hamamatsu Photonics K.K., and Photonics Management Corp.
11

3.

“IPFA,” “You,” and “Your” mean the International Symposium on the Physical

12 and Failure Analysis of Integrated Circuits, including, without limitation, all of its corporate
13 locations, and all predecessors, successors, subsidiaries, divisions, parents and/or affiliates thereof,
14 past or present, and all past or present officers, directors, agents, employees, inventors,
15 researchers, scientists, consultants, accountants, attorneys, representatives, partners, joint
16 venturers, and any other person or entity acting on behalf of any of the foregoing.
17

4.

“The ’982 patent” or “Patent-in-Suit” means U.S. Patent No. 7,623,982, which

18 issued on November 24, 2009 and is titled “Method of Testing an Electronic Circuit and
19 Apparatus Thereof.”
20

5.

“Related Patents” means any patent or patent application, anywhere in the world

21 and individually and collectively, that claims or is identified as priority, directly or indirectly, to or
22 from any Patent-in-Suit. “Related Patents” includes, but is not limited to, all continuations,
23 continuations-in-part, provisionals, divisionals, and reissues of any Patent-in-Suit.
24

6.

“Asserted Claims” means the claims 4-8, 17, and 21-25 of the Patent-in-Suit.

25

7.

The term “document(s)” is used in the broadest sense to include everything

26 contemplated by Rule 34(a)(1)(A) of the Federal Rules of Civil Procedure and by Rule 1001 of the
27 Federal Rules of Evidence, including electronically stored information, data, code materials stored
28 in any media, and any other information stored magnetically, optically or electronically. If a draft
Case No. 17-cv-03440-DMR
ATTACHMENT E

1 document has been prepared in several copies that are not identical, or if the original identical
2 copies are no longer identical due to subsequent notation, each non-identical document is a
3 separate document.
4

8.

The term “communication(s)” means, without limitation, any transmission,

5 conveyance or exchange of a word, statement, fact, thing, idea, Document, instruction,
6 information, demand or question by any medium, whether by written, oral or other means,
7 including but not limited to, electronic communications and electronic mail (“e-mail”).
8

9.

The term “thing(s)” means any tangible object, other than a Document.

9

10.

The term “electronically stored information,” abbreviated herein as “ESI,” is

10 defined to be synonymous in meaning and equal in scope to the usage of the term in Rules 26(b)
11 and 34 of the Federal Rules of Civil Procedure.
12

11.

The term “natural person” should be understood to encompass, in addition to the

13 natural person, any agent, employee, representative, attorney, superior, or principal thereof.
14

12.

The term “legal entity” should be understood to encompass, in addition to the

15 entity, any officer, director, employee, partner, corporate parent, subsidiary, affiliate, agent,
16 representative, attorney, or principal thereof.
17

13.

The term “person” includes all natural persons, persons, legal entities, and entities.

18

14.

The terms “identify,” “identifies,” and “identification,” when used with respect to

19 any natural person, mean that the following information shall be provided: the person’s full name;
20 the person’s last known business address and telephone number; the person’s last known title or
21 occupation; and the person’s last known employer.
22

15.

The terms “identify,” “identifies,” and “identification,” when used with respect to

23 any legal entity, such as a corporation, company, or person other than a natural person, mean that
24 the following information shall be provided: the entity’s name; the entity’s place of incorporation
25 or organization; the entity’s principal place of business; and the nature of the entity’s business.
26

16.

The terms “identify,” “identifies,” and “identification,” when used with respect to a

27 document, mean to provide information sufficient to locate that document, including but not
28 limited to the following: the production number range; the date appearing on the document or, if
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Case No. 17-cv-03440-DMR
ATTACHMENT E

1 no date appears thereon, the approximate date on which the document was prepared; the
2 identifying code number, file number, title, and/or label of the document; a general description of
3 the document (e.g., letter, memorandum, drawing); the title or heading; the number of pages of
4 which the document consists; the name of each person who signed or authorized the document; the
5 name of each addressee; the name of each person having possession, custody, or control of the
6 document; if the document existed at one time but does not presently exist, the reason(s) why it no
7 longer exists and the identity of the last person having custody of it; and, if the document is in a
8 foreign language, whether an English translation of the document exists, whether partial or
9 complete.
10

17.

The terms “relate to,” “related to,” and “relating to” are used in their broadest

11 possible sense to include any connection, relation, or relevance.
12

18.

The term “describe,” when used in relation to an act, event, instance, occasion,

13 transaction, conversation, or communication, means: (1) to state the date and place thereof; (2) to
14 identify the individual participants; (3) to summarize separately for each individual what he/she
15 said or did; and (4) to identify each document used or prepared in connection therewith or making
16 any reference thereto.
17

19.

The term “prior art” means all categories of art included within the broadest

18 meaning of 35 U.S.C. §§ 102 and 103, including but not limited to patents, publications,
19 disclosures, products, physical devices, systems, prototypes, things, uses, sales, offers for sale,
20 other acts or occurrences, and any documents or other items evidencing any of the foregoing. The
21 term also includes all art that any person has identified as being relevant to the invalidity or
22 unenforceability of the Patent-in-Suit or any Asserted Claim.
23

20.

The words “and” and “or” are to be construed conjunctively or disjunctively as

24 necessary so as to accord each request the broadest possible scope.
25

21.

“Any” should be understood to encompass “all” and/or “each” and vice versa, as

26 necessary to bring within the scope of each request all information that might otherwise be
27 construed to be outside of its scope.
28
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Case No. 17-cv-03440-DMR
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1

22.

The singular form of any term should be understood to encompass the plural,

2 except where circumstances clearly make it inappropriate.
3

23.

The present tense should be understood to encompass the past tense, except where

4 circumstances clearly make it inappropriate.
5
6

INSTRUCTIONS
1.

The responses to these requests for production shall be in accordance with Rule 34

7 of the Federal Rules of Civil Procedure.
8

2.

These requests call for information (including any information contained in or on

9 any document or thing) that is known or available to You, or in Your possession, custody, or
10 control, including all information known or available to Your attorneys, agents, representatives, or
11 any other Person acting or purporting to act on Your behalf or under the direction or control of
12 You or Your attorneys, agents, representatives, or investigators.
13

3.

Each request is to be answered separately and in full in writing under oath, unless

14 all portions of a request are in good faith objected to, in which event the reasons for Your
15 objection(s) shall be stated in detail. If the objection(s) pertains to only a portion of the request, or
16 to a word, phrase, or clause contained within the request, You shall state Your objection to that
17 portion and otherwise answer the request.
18

4.

If You withhold any information or decline to fully identify any person, document,

19 or communication, or portion thereof, in response to any of the requests set forth below on
20 grounds of privilege or any other claim of immunity from discovery, You shall describe the
21 factual and legal basis for Your claim of privilege or immunity in sufficient detail so as to permit
22 the Court to adjudicate the validity of the claim. In addition, for each identification, document,
23 communication, or portion thereof withheld, You shall state the following: (a) the type of
24 document (e.g., letter, memorandum, contract, etc.); (b) its title; (c) its date; (d) its subject matter;
25 (e) the name, address, and employer at the time of preparation of the individual(s) who authored,
26 drafted, or prepared it; (f) the name, address, and employer at the time of dissemination of the
27 individual(s) to whom it was directed, circulated, or copied, or who had access thereto; and (g) the
28
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Case No. 17-cv-03440-DMR
ATTACHMENT E

1 grounds on which the document is being withheld (e.g., “attorney-client privilege,” “work product
2 immunity,” etc.).
3

5.

Each request shall be construed independently, and no request shall limit the scope

4 of any other request.
5

6.

Unless otherwise indicated, no request is date or time limited.

6

7.

If You find the meaning of any term in any request to be unclear, You should

7 assume a reasonable meaning, state what that assumed meaning is, and respond to the request on
8 the basis of that assumed meaning.
9

8.

For each request, You shall identify all persons who provided information or

10 otherwise assisted in preparing your response.
11

9.

In the event that more than one copy of a document exists, You shall produce the

12 original and each non-identical copy of each document.
13

10.

If a document has been “redlined,” “marked up,” includes changes, or is otherwise

14 edited, You shall produce that document in edited form to show any edits or comments, including
15 by producing information reflecting the authors of such edits or comments and when those edits or
16 comments were made.
17

11.

These requests shall be deemed continuing in nature and create an ongoing

18 obligation in accordance with Fed. R. Civ. P. 26(e). In the event that additional information or
19 material responsive to these requests becomes known to You, You shall serve a supplemental
20 response within a reasonable period of time after the information or material becomes known.
21

12.

These instructions are submitted for the purposes of discovery and are not to be

22 taken as waiving any objections that may be made at trial to the introduction of evidence on
23 subjects covered by these requests or as an admission at the trial of the relevance or materiality of
24 any of the matters covered by these requests.
25
26

DOCUMENTS TO BE PRODUCED
1.

All optical disks (such as CD-ROMs and DVDs) and portable data storage devices

27 (such as USB flash drives) distributed at the 13th International Symposium on the Physical and
28 Failure Analysis of Integrated Circuits, held on July 3-7, 2006 in Singapore.
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Case No. 17-cv-03440-DMR
ATTACHMENT E

1

2.

Copies of the conference proceedings from the 13th International Symposium on

2 the Physical and Failure Analysis of Integrated Circuits, held on July 3-7, 2006 in Singapore.
3

3.

Documents sufficient to show whether, when, and how the article DC-Coupled

4 Laser Induced Detection System for Fault Localization in Microelectronic Failure Analysis by
5 Quah et al. was published in the proceedings of the 13th International Symposium on the Physical
6 and Failure Analysis of Integrated Circuits, held on July 3-7, 2006 in Singapore.
7

4.

All communications with SEMICAPS regarding the subject matter of U.S. Patent

8 No. 7,623,982, Hamamatsu, and any litigation (including, without limitation, district court
9 lawsuits and proceedings before the USPTO) between SEMICAPS and Hamamatsu, and all
10 documents relating to such communications.
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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Case No. 17-cv-03440-DMR
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