Tessera, Inc. v. UTAC (Taiwan) Corporaiton

Filing 103

ORDER on 102 Discovery Letter Brief by Magistrate Judge Howard R. Lloyd. (hrllc1, COURT STAFF) (Filed on 2/8/2013)

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1 *E-FILED: February 8, 2013* 2 3 4 5 NOT FOR CITATION 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 SAN JOSE DIVISION 9 TESSERA, INC., Plaintiff, For the Northern District of California United States District Court 10 No. C10-04435 EJD (HRL) ORDER ON DDJR #1 v. 11 [Dkt. 102] UTAC (TAIWAN) CORPORATION, 12 13 Defendant. ____________________________________/ 14 Plaintiff Tessera, Inc. (“Tessera”) sues Defendant UTAC (Taiwan) Corporation (“UTC”) for 15 alleged failure to pay royalties under a patent license agreement. Tessera alleges breach of contract 16 and breach of implied covenant of good faith and fair dealing, and seeks declaratory relief. The 17 Court bifurcated discovery, and the parties are nearing the end of the first phase, which is limited to 18 issues of contract interpretation. 19 Tessera’s response to some of UTC’s requests for production included redactions and 20 alterations of responsive documents and withholding of attachments within email families 21 containing one or more responsive documents. A discovery dispute has arisen over whether Tessera 22 is entitled to (1) redact non-privileged portions of responsive documents and (2) withhold non- 23 privileged attachments from email families containing one or more responsive documents. Tessera 24 claims that the redacted and withheld information is non-responsive and confidential business 25 information. None of the redactions, alterations or deletions, however, are based on the attorney- 26 client privilege or work product doctrine. Tessera also claims that providing all of the initially 27 redacted and withheld information would require an extensive re-review of documents, as the 28 redacted and withheld material also contain privileged material and third-party confidential material. Sensitive Confidential Information and/or Trade Secrets (“Protective Order”), whose stated purpose 3 is to shield “confidential, proprietary, or private information” from public disclosure or “from use 4 for any purpose other than prosecuting this litigation.” (Dkt. 72). The Protective Order entered in 5 this case is based on the Court-approved model form provided by this District. It contains 6 provisions for designating material as “Confidential,” or “Highly Confidential – Attorneys’ Eyes 7 Only.” Tessera fails to convince the Court that the Protective Order is insufficient to protect 8 sensitive information that belongs to itself or third parties. Tessera’s claim over the burden of 9 conducting a second review of the documents is also unavailing. Tessera made the decision to alter 10 For the Northern District of California The Court has entered a Stipulated Protective Order for Litigation Involving Patents, Highly 2 United States District Court 1 the original documents and it can bear the repercussions of its choice. 1 Further, Tessera’s claim that 11 it would have to re-review “thousands” of pages of its production does not strike the Court as overly 12 burdensome in the context of this particular litigation. For these reasons, the Court orders Tessera to re-produce its responsive documents in a form 13 14 in which they are ordinarily maintained or in a reasonably usable form, without relevance-based 15 redactions or alterations to portions of those documents, and that it produce complete versions of 16 responsive emails with all attachments, no later than February 14, 2013. This deadline should not 17 interfere with the depositions scheduled for February 19-21, 2013, as the redacted and previously 18 withheld information is, at least according to Tessera, irrelevant to this matter. IT IS SO ORDERED. 19 20 Dated: February 8, 2013 21 22 HOWARD R. LLOYD UNITED STATES MAGISTRATE JUDGE 23 24 25 26 27 28 1 Tessera’s decision to withhold attachments to emails and make redactions to documents is at odds with Rule 34(b)(2)(E)(i) of the Federal Rules of Civil Procedure, which instructs a party to “produce documents as they are kept in the usual course of business” or “organize and label them to correspond to the categories in the request.” 2 1 C10-04435 EJD (HRL) Order will be electronically mailed to: 2 Benjamin W. Hattenbach: bhattenbach@irell.com 3 Brian David Ledahl: bledahl@irell.com 4 David H. Herrington: dherrington@cgsh.com 5 Jennifer Renee Bunn: jbunn@irell.com 6 Joseph Mark Lipner: jlipner@irell.com, csilver@irell.com, jgejerman@irell.com 7 Kathleya Chotiros: kchotiros@cgsh.com 8 Laura Elizabeth Evans: levans@irell.com, ybromley@irell.com 9 Lawrence B. Friedman: lfriedman@cgsh.com For the Northern District of California United States District Court 10 Michael F. Heafey: MHeafey@orrick.com, jromero@orrick.com, mawilliams@orrick.com 11 Morgan Chu: mchu@irell.com 12 Nathaniel E. Jedrey: njedrey@cgsh.com 13 Richard William Krebs rkrebs@irell.com, rbrown@tessera.com, Slee@irell.com, sveeraraghavan@tessera.com, tegarcia@tessera.com 14 15 Counsel are responsible for distributing copies of this document to co-counsel who have not registered for e-filing under the court’s CM/ECF program. 16 17 18 19 20 21 22 23 24 25 26 27 28 3

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