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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*E-FILED: February 8, 2013*

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NOT FOR CITATION

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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TESSERA, INC.,
Plaintiff,

For the Northern District of California

United States District Court

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No. C10-04435 EJD (HRL)
ORDER ON DDJR #1

v.
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[Dkt. 102]
UTAC (TAIWAN) CORPORATION,

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Defendant.
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Plaintiff Tessera, Inc. (“Tessera”) sues Defendant UTAC (Taiwan) Corporation (“UTC”) for

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alleged failure to pay royalties under a patent license agreement. Tessera alleges breach of contract

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and breach of implied covenant of good faith and fair dealing, and seeks declaratory relief. The

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Court bifurcated discovery, and the parties are nearing the end of the first phase, which is limited to

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issues of contract interpretation.

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Tessera’s response to some of UTC’s requests for production included redactions and

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alterations of responsive documents and withholding of attachments within email families

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containing one or more responsive documents. A discovery dispute has arisen over whether Tessera

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is entitled to (1) redact non-privileged portions of responsive documents and (2) withhold non-

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privileged attachments from email families containing one or more responsive documents. Tessera

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claims that the redacted and withheld information is non-responsive and confidential business

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information. None of the redactions, alterations or deletions, however, are based on the attorney-

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client privilege or work product doctrine. Tessera also claims that providing all of the initially

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redacted and withheld information would require an extensive re-review of documents, as the

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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

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is to shield “confidential, proprietary, or private information” from public disclosure or “from use

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for any purpose other than prosecuting this litigation.” (Dkt. 72). The Protective Order entered in

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this case is based on the Court-approved model form provided by this District. It contains

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provisions for designating material as “Confidential,” or “Highly Confidential – Attorneys’ Eyes

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Only.” Tessera fails to convince the Court that the Protective Order is insufficient to protect

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sensitive information that belongs to itself or third parties. Tessera’s claim over the burden of

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conducting a second review of the documents is also unavailing. Tessera made the decision to alter

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For the Northern District of California

The Court has entered a Stipulated Protective Order for Litigation Involving Patents, Highly

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United States District Court

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the original documents and it can bear the repercussions of its choice. 1 Further, Tessera’s claim that

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it would have to re-review “thousands” of pages of its production does not strike the Court as overly

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burdensome in the context of this particular litigation.
For these reasons, the Court orders Tessera to re-produce its responsive documents in a form

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in which they are ordinarily maintained or in a reasonably usable form, without relevance-based

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redactions or alterations to portions of those documents, and that it produce complete versions of

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responsive emails with all attachments, no later than February 14, 2013. This deadline should not

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interfere with the depositions scheduled for February 19-21, 2013, as the redacted and previously

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withheld information is, at least according to Tessera, irrelevant to this matter.
IT IS SO ORDERED.

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Dated: February 8, 2013

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HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE

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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.”
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C10-04435 EJD (HRL) Order will be electronically mailed to:

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Benjamin W. Hattenbach: [e-mail]

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Brian David Ledahl: [e-mail]

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David H. Herrington: [e-mail]

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Jennifer Renee Bunn: [e-mail]

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Joseph Mark Lipner: [e-mail], [e-mail], [e-mail]

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Kathleya Chotiros: [e-mail]

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Laura Elizabeth Evans: [e-mail], [e-mail]

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Lawrence B. Friedman: [e-mail]

For the Northern District of California

United States District Court

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Michael F. Heafey: [e-mail], [e-mail], [e-mail]

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Morgan Chu: [e-mail]

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Nathaniel E. Jedrey: [e-mail]

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Richard William Krebs [e-mail], [e-mail], [e-mail],
[e-mail], [e-mail]

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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.

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