Avago Technologies Fiber IP (Singapore) PTE. Ltd. v. IPtronics Inc. et al

Filing 637

REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE UNDER THE HAGUE CONVENTION ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERICAL MATTERS (REDACTED). Signed by Judge Paul S. Grewal on 7/21/2015. (ofr, COURT STAFF) (Filed on 7/21/2015)

Shawn E. McDonald (State Bar No. 237580)
Adrienne Hunacek Miller (State Bar No. 274660)
FOLEY & LARDNER LLP
EMAIL: [e-mail]
EMAIL: [e-mail]
975 Page Mill Road
Palo Alto, CA 94304-1013
Telephone: [phone]
Facsimile: [phone]
Nancy L. Stagg (State Bar No. 157034)
Ary Chang (State Bar No. 244247)
FOLEY & LARDNER LLP
EMAIL: [e-mail]
EMAIL: [e-mail]
3579 Valley Centre Drive, Suite 300
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]
John C. Vetter (Admitted Pro Hac Vice)
FOLEY & LARDNER LLP
EMAIL: [e-mail]
Two South Biscayne Boulevard, Suite 1900
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]

Richard S. Florsheim (Admitted Pro Hac Vice)
FOLEY & LARDNER LLP
EMAIL: [e-mail]
777 E Wisconsin Avenue
Milwaukee, WI 53202-5306
Telephone: [phone]
Facsimile: [phone]

Attorneys for Plaintiffs
AVAGO TECHNOLOGIES U.S. INC.,
AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.,
AVAGO TECHNOLOGIES TRADING LTD., AND
AVAGO TECHNOLOGIES INTERNATIONAL SALES PTE. LTD.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
AVAGO TECHNOLOGIES U.S. INC.,
AVAGO TECHNOLOGIES GENERAL IP
(SINGAPORE) PTE. LTD., AVAGO
TECHNOLOGIES TRADING LTD., AND
AVAGO TECHNOLOGIES
INTERNATIONAL SALES PTE. LTD.,
Plaintiffs,

Case No.: 5:10-CV-02863-EJD (PSG)
REQUEST FOR INTERNATIONAL
JUDICIAL ASSISTANCE UNDER THE
HAGUE CONVENTION ON THE TAKING
OF EVIDENCE ABROAD IN CIVIL OR
COMMERCIAL MATTERS
Honorable Paul S. Grewal

v.
IPTRONICS INC., MELLANOX
TECHNOLOGIES DENMARK APS,
MELLANOX TECHNOLOGIES, LTD.,
AND MELLANOX TECHNOLOGIES, INC,

[REDACTED VERSION OF DOCUMENT
SOUGHT TO BE SEALED]

Defendants.
REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

1.

Sender
The Honorable Paul S. Grewal
United States Magistrate Judge
United States District Court for the Northern District of California
San Jose Division
280 South 1st Street
San Jose, CA 95113
United States of America

2.

Central Authority of the Requested State
Ministère de la Justice
13 Place Vendôme
75042 Paris Cedex 01
FRANCE

3.

Person to Whom the Executed Request Is to Be Returned
The Honorable Paul S. Grewal
United States Magistrate Judge
United States District Court for the Northern District of California
San Jose Division
280 South 1st Street
San Jose, CA 95113
United States of America

4.

Specification of the Date by Which the Requesting Authority Requires Receipt of
the Response to the Letter Request
By August 1, 2015, or as soon as reasonably practicable. Fact discovery is currently
scheduled to end August 21, 2015.

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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

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

a. Requesting Judicial Authority (Art. 3(a))
United States District Court for the Northern District of California
San Jose Division
280 South 1st Street
San Jose, CA 95113
United States of America

b.

To the Competent Authority of (Art. 3(a))
French Ministry of Justice

c.

Name of the Case and Any Identifying Number
Avago Technologies Fiber IP (Singapore) Pte. Ltd. v. IPtronics, Inc. and IPtronics
A/S; Case Number 5:10-CV-02863 EJD (PSG), United States District Court for the
Northern District of California.

6.
a.

Name and Addresses of the Parties and Their Representatives (Art. 3(b))
Plaintiffs
Avago Technologies U.S. Inc.
350 West Trimble Road, Building 90
San Jose CA 95131
USA
Telephone: [phone]
Avago Technologies General IP (Singapore) PTE. LTD.
1 Yishun Avenue 7
Singapore, 768923
Singapore
Telephone: [phone]
Avago Technologies Trading LTD.
4th Floor, IBL House
Caudan
Port Louis
Mauritius
Avago Technologies International Sales PTE. LTD.
1 Yishun Avenue 7
Singapore, 768923
Singapore
Telephone: [phone]
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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

Counsel for the Plaintiff
Shawn E. McDonald
Adrienne Hunacek Miller
Foley & Lardner LLP
975 Page Mill Road
Palo Alto, CA 94304-1013
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
E-mail: [e-mail]
b.

Defendants
IPtronics, Inc
1370 Willow Road
2nd Floor
Menlo Park, California 94025
Telephone: [phone]
Mellanox Technologies Denmark ApS
Ledreborg Allé 130B
DK-4000 Roskilde
Denmark
Telephone: [phone]
Mellanox Technologies, Ltd.
Hakidma 26
Ofer Industrial Park
Yokneam, Israel
Zip code 2069200
Telephone: [phone]
Mellanox Technologies, Inc.
350 Oakmead Parkway, Suite 100
Sunnyvale, California 94085
Tel: [phone]

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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

Counsel for the Defendants
Ryan W. Koppelman
Xavier Brandwajn
Timothy Watson
Alston & Bird LLP
1950 University Avenue, 5th Floor
East Palo Alto, CA 94303
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Frank G. Smith, III
Randall L. Allen
B. Parker Miller
Alston & Bird LLP
1201 W Peachtree St.
Atlanta, GA 30309
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Thomas Davison
Alston & Bird LLP
950 F Street, NW
Washington, DC 20004-1404
Email: [e-mail]
Mike Connor
Alston & Bird LLP
Bank of America Plaza
101 S. Tryon Street, Suite 4000
Charlotte, NC 28280
Email: [e-mail]

7.

a.

Nature of the Proceedings (Art. 3(c))

This is a civil action with claims arising in part under the Patent Laws of the United States,
35 U.S.C. § 1 et seq., and, in particular, 35 U.S.C. § 271; under the Trademark Act of 1946, as
amended, 15 U.S.C. §§ 1051-1141 (the “Lanham Act”), and in particular 15 U.S.C. § 1125 (§ 43(a)
of the Lanham Act); and under the State of California’s Uniform Trade Secrets Act §§3426 et seq.
b.

Summary of the Complaint (Art. 3(c))

On June 29, 2010, Avago Technologies Fiber IP (Singapore) Pte. Ltd. (“Avago Fiber IP”)
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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

filed a Complaint against IPtronics, Inc. and IPtronics A/S (collectively, “IPtronics”).
On September 18, 2012, Avago Fiber IP filed its Second Amended and Supplemental
(“SASC”) complaint to join Avago Technologies U.S. Inc. (“Avago US”), Avago Technologies
General IP (“Avago General IP”), Avago Technologies International Sales Pte. Ltd. (“Avago
Sales”), and Avago Technologies Trading Ltd. (“Avago Trading”) (collectively, “Avago
Licensees”), which have exclusive rights in the patents-in-suit to this action. The SASC included
the original allegations that IPtronics (i) contributorily infringed and actively induced infringement
of one or more claims of United States Patent No. 5,359,447, which Avago Fiber IP owned at the
time, and (ii) directly infringed and actively induced infringement of one or more claims of United
States Patent No. 6,947,456, which Avago Fiber IP owned at the time. The SASC also added
factual allegations and related claims against IPtronics for violations of 15 U.S.C. § 1125 (§ 43(a) of
the Lanham Act), misappropriation of trade secrets under the State of California’s Uniform Trade
Secrets Act §§ 3426 et seq., and unlawful, unfair, or fraudulent business act or practices under
California Business & Professional Code § 17200.
Effective October 29, 2012, Avago Fiber IP transferred ownership of the patents-in-suit to
co-Plaintiff Avago General IP, and Avago Fiber IP ceased to exist.
On July 1, 2013, Mellanox Technologies Ltd. acquired defendant IPtronics A/S, now known
as Mellanox Technologies Denmark ApS, which became a wholly owned subsidiary of Mellanox
Technologies Ltd.
On December 10, 2014, the Court granted Plaintiffs’ Motion for Leave to file a Fourth
Amended and Supplemental Complaint, which added Mellanox Technologies, Ltd. and its United
States subsidiary, Mellanox Technologies, Inc., as Defendants, and reflected the transfer of
ownership of the asserted patents from Avago Fiber IP to Avago General IP.
c.

Summary of Defense (Art. 3(c))

IPtronics has denied Avago’s allegations and asserted counterclaims against Avago,
including declaratory judgments of non-infringement and invalidity of Avago’s patents, breach of
contract, fraudulent misrepresentation, and other business tort claims.
8.

a.

Evidence to Be Obtained (Art. 3(d))
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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

The evidence to be obtained is for use at trial in the action of Avago Technologies Fiber IP
(Singapore) Pte. Ltd. v. IPtronics, Inc. and IPtronics A/S; Case Number 5:10-CV-02863 EJD (PSG),
United States District Court for the Northern District of California, and includes (i) oral testimony
from persons designated by at STMicroelectronics (“ST”) in France (see paragraph 9, infra.), and
(ii) documents from ST, 850 Rue Jean Monnet, 38920 Crolles, France, Telephone: [phone]
00. Schedule A, attached as Exhibit 1 hereto, sets forth a list of topics for examination and the
documents sought. As set forth in paragraph 9, infra, ST is to designate one or more officers,
directors, or managing agents, or designate other persons who consent to testify on its behalf as to
the topics specified in Schedule A. Upon information and belief, ST is the company who
manufactures the IPtronics products that are accused in this action
. As Schedule A reflects, the evidence sought is limited, and relates to the
design and fabrication of these accused products manufactured by ST, as well as communications
between IPtronics and ST about the accused products and any testing, simulation or modeling of the
accused IPtronics products done by ST.

In addition, Schedule A also seeks information on the

quantity of vertical-cavity, surface emitting laser (“VCSEL”) drivers and transimpedance limiting
amplifiers (“TIAs”) made by ST for IPtronics and price paid by IPtronics to ST for these products.
This additional information will be used to help determine the measure of damages to Avago for
IPtronics’ infringement.
b.

Purpose of the Evidence to Be Obtained (Art. 3(d))

In general terms, the ‘456 Patent pertains to laser driver circuits and optical transmitters
containing them, that are used to control arrays of VCSELs for high-speed optical data transmission.
More specifically, they may be used to “drive” VCSELs in a VCSEL array with respective drive
waveforms that represent the incoming data stream. The asserted claims of the ‘456 patent include
“negative peaking” of the electrical signal, which refers to a transient present in the drive waveform
during, and sometimes after, the transition from a “high” or “logic 1” level of the electrical drive
waveform down to the “low” or “logic 0” of the waveform. An electronic model of the electrical
properties of a VCSEL is useful for modeling the behavior of the electrical circuit in which the
VCSEL operates. The evidence sought from ST relating to the design and fabrication of the accused
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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

IPtronics products, including the process design kit used in the fabrication of each accused product,
will be useful for modeling the electrical behavior of these accused products as a part of the proof
that such products infringe the ‘456 Patent.

Similarly, evidence sought from ST relating to

communications with IPtronics about the accused products and simulation or modeling of the
IPtronics accused products by ST will also be useful for modeling the electrical behavior of these
accused products and analyzing the results. A true and correct copy of the ‘456 Patent, which
includes a more detailed description of the invention covered, is attached hereto as Exhibit 2. The
‘447 Patent is directed to optical communications networks having a VCSEL. The VCSEL drivers
made by ST for IPtronics provides current to each VCSEL in the claimed network. The TIAs made
by ST are located in the receivers of the claimed network and enables data sent optically through an
optical medium to be recovered. A true and correct copy of the ‘4447 Patent, which includes a more
detailed description of the invention covered, is attached hereto as Exhibit 3. Avago’s complaint
avers false advertising by IPtronics regarding the power consumption of the products made by ST,
sold to IPtronics, and subsequently sold by IPtronics. Financial information on the quantity of
accused products manufactured by ST and sold to IPtronics is relevant to the determination of
IPtronics profits, which is a measure of damages available to Avago for its false advertising claims.
This financial information is also relevant to Avago’s patent damages claims.
9.

Identity of Persons to be Examined (Art. 3(e))

STMicroelectronics shall designate one or more individuals who consent to testify on its
behalf as to all information known or reasonably available to STMicroelectronics regarding the
topics for examination set forth in Schedule A, attached hereto, including, but not limited to: (1) the
design

and

fabrication

of

the

accused

IPtronics

VCSEL

drivers

manufactured

by

STMicroelectronics; (2) testing, simulation, modeling, evaluation or analysis done by
STMicroelectronics of any accused IPtronics VCSEL driver or component thereof; (3)
communications between IPtronics and STMicroelectronics relating to any accused IPtronics
VCSEL driver or component thereof; (4) information related to any process design kit used by
STMicroelectronics in the fabrication of each and every IPtronics Accused VCSEL Driver; and, (5)
the quantity of all accused IPtronics VCSEL drivers manufactured by STMicroelectronics and the
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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

price paid for each. The individual witness or witnesses designated by STMicroelectronics shall
have direct knowledge of the facts on which testimony is sought, or knowledge obtained through
inquiry of those having direct knowledge and of related documents.
10. Questions to be Put to the Persons to be Examined or Statement of the SubjectMatter About Which They are to be Examined (Art. 3(f))
A list of topics for examination of the witness(es) is set forth on Schedule A, attached hereto.
11. Documents or Other Property to be Inspected (Art. 3(g))
The documents to be inspected are set forth on Schedule A, attached hereto.
The documents are to be produced by:
STMicroelectronics
850 Rue Jean Monnet
38920 Crolles, France
Telephone: [phone].
12. Requirement That the Evidence be Given on Oath or Affirmation (Art. 3(h))
The witnesses should be examined under oath or affirmation.
13. Special Methods or Procedures to be Followed (Art. 3(i) and 9)
This Letter Request includes the following requests:


That the witnesses be examined orally by attorneys for the Plaintiff, and, if the Defendants so
choose, by attorneys for the Defendants;



That attorneys for the Plaintiff, and, if the Defendants so choose, attorneys for the
Defendants be permitted to ask the witnesses additional questions that are related to those
questions on the topics set forth in Schedule A;



That an authorized English language shorthand writer/court reporter be present at the
examination who shall record the oral testimony verbatim and prepare a transcript of the
evidence;



That an authorized French language shorthand writer/court reporter be present at the
examination who shall record the oral testimony verbatim and prepare a transcript of the
evidence;



That an authorized interpreter be present at the examination who shall translate the questions
and oral testimony between French and English;

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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)



That the examination take place at (1) the offices of Herbert Smith Freehills Paris, (2) a
location as may be agreed upon between the witnesses and counsel for the parties, or (3) at a
time and place set by the local court in France.



That the examinations take place at dates and times as may be agreed upon between the
witnesses and counsel for the parties;



That, to the extent that multiple hearing dates are necessary to complete all the topics
identified in Schedule A, the hearings are scheduled on consecutive days or as close to each
other as reasonably practicable;



That responsive documents be produced for inspection at (1) the offices of Herbert Smith
Freehills Paris or (2) a location as may be agreed upon between ST and counsel for the
parties; and



That all evidence be obtained in a manner compliant with the Stipulated Protective Order,
attached as Exhibit 4 and entered by the Honorable Paul S. Grewal on May 2, 2011 in the
action of Avago Technologies Fiber IP (Singapore) Pte. Ltd. v. IPtronics, Inc. and IPtronics
A/S; Case Number 5:10-CV-02863 EJD (PSG), United States District Court for the Northern
District of California.

In the event the evidence cannot be taken in the manner or location requested, it is to be taken in
such a manner or location as provided by local law.
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 (Art. 7)
Please notify the following counsel regarding the time and place for the execution of the
Letter of Request:
Shawn E. McDonald
Adrienne Hunacek Miller
Foley & Lardner LLP
975 Page Mill Road
Palo Alto, CA 94304-1013
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
E-mail: [e-mail]

9

REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

Alexandra Neri
Herbert Smith Freehills Paris LLP
66, avenue Marceau
75008 Paris
France
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
Ryan W. Koppelman
Xavier Brandwajn
Timothy Watson
Alston & Bird LLP
1950 University Avenue, 5th Floor
East Palo Alto, CA 94303
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Frank G. Smith, III
Randall L. Allen
B. Parker Miller
Alston & Bird LLP
1201 W Peachtree St.
Atlanta, GA 30309
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Thomas Davison
Alston & Bird LLP
950 F Street, NW
Washington, DC 20004-1404
Email: [e-mail]
Mike Connor
Alston & Bird LLP
Bank of America Plaza
101 S. Tryon Street, Suite 4000
Charlotte, NC 28280
Email: [e-mail]
15. Request for Attendance of Participation of Judicial Personnel of the Requesting
Authority at the Execution of the Letter Request (Art. 8)
No attendance of judicial personnel is requested.

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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)

16. Specification of Privilege or Duty to Refuse to Give Evidence Under the Law of the
State of Origin (Art. 11(b))
The privilege or duty of the witnesses to refuse to give evidence shall be the same as if they
were testifying under the applicable provisions of the Federal Rules of Civil Procedure, including if
giving such evidence would (1) subject them to a real and appreciable danger of criminal liability in
the United States, or (2) disclose a confidential and privileged communication between them and
their respective attorneys.
17. Counsel, to the Extent Necessary, to Take Evidence as Commissioners (Art. 17)
In Section 13 of this Letter Request, it has been requested, under Articles 3(i) and 9, that the
witnesses be examined orally by attorneys for the Plaintiff, and, if the Defendants so choose, by
attorneys for the Defendants. To the extent this request is deemed incompatible with local law or is
otherwise not granted, it is requested, in the alternative, that attorneys for the Plaintiff, and, if the
Defendants so choose, attorneys for the Defendants be permitted to examine the witnesses as
commissioners under Article 17.
18. Fees and Costs (Art. 14 and 26)
Fees and costs incurred which are reimbursable under the Hague Convention shall be borne
by Foley & Lardner LLP, 975 Page Mill Road, Palo Alto, California 94304.

Date of Request:

July 21, 2015

Signature and Seal of
Requesting Authority

_______________________________
Honorable Paul S. Grewal

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REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE
CASE NO. 5:10-CV-02863-EJD (PSG)